Following Maureen Dowd’s experience with edibles in Colorado, we’ve seen greater national
interest in the Colorado marijuana market.
A larger audience brings greater scrutiny – resulting in July’s
last-minute changes to the LCB’s rules regarding edibles, and bringing greater
attention to the importance of the trademark in building a strong brand. The first trademark infringement cases
involving marijuana businesses surfaced this past spring in Colorado, including
the Hershey’s suit, and the MED-a-Mint conflict. These cases emphasize two
different points: first, the
infringement of existing registered trademarks, and second, the role of a
properly registered trademark in protecting a business’ interests in a
contractual agreement.
Businesses in an emerging industry are in a position to
experience even greater profit from time spent developing solid branding. A good brand not only helps drive a product’s
sales, but builds a platform for long-term growth. Registering a trademark gives a business the
means to protect its exclusive use of a brand, and protect its product’s market
share from confusion with similar products.
A trademark can consist of words, names, symbols, devices, colors used
in a distinguishing way, brands, logos, even audible signs, fragrances, or
three-dimensional signs.
If a trademark is being improperly used, a business may file
a lawsuit to accuse another business of infringing upon their exclusive right
to its use. TinctureBelle, the defendant
in the Hershey case, surely knew that their Ganja Joy and other chocolate bars
were a bit close to the mark, but chose to produce these products as novelty
items. This only became an issue when
the products became more visible through media coverage of Colorado’s emerging
recreational market. TinctureBelle
changed their packaging, but a little too late to avoid Hershey’s suit. We expect to see similar cases as other
novelty items become more widely (and publicly) available through retail stores
in Washington.
The MED-a-mint case illustrates a similar use of the
trademark to protect a brand. When the
contracted manufacturer changed the labeling and packaging of the MED-a-mint
product, the business owner determined that the brand was being misrepresented. Citing their registered trademark, the company
filed a suit claiming a violation of contract that was causing damage to the
company’s brand.
When preparing to market a new product or brand, a business
will likely want to pursue a trademark. We strongly recommend seeking an
attorney’s input during this process, and the KB Law Group provides this service for our clients.
The trademark search is among the first steps, to ensure
that no similar trademark is currently pending or registered in the federal or
state databases, or in established common law use. Once a mark’s uniqueness is established, a
business can either reserve the right to register it, or begin the process of
filing for registration. In most cases,
a business must be actively using a mark prior to filing for its registration: it must be printed on signs, marketing
materials, packaging, or business correspondence.
Because of marijuana’s status as a federally controlled
substance, federal trademark protections are not available through the United States Patent & Trademark Office (USPTO). However, ancillary
businesses that provide merchandising or produce non-marijuana products may be
able to obtain federal trademarks.
In order to protect a proprietary name or image, marijuana businesses
may only acquire trademarks on a state-by-state basis, through the Secretary of
State’s office. Businesses wanting to
secure a trademark over a larger geographical area will want to consider
applying for trademarks in multiple states – which means vetting the desired name
and image in all target states before developing the brand or submitting the
first application. As Alaska and Oregon
prepare to vote on recreational marijuana this November, securing a regional
(i.e. multiple state) trademark could be even more important.
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