It is no secret that the United States Patent and Trademark Office (USPTO) has taken a hardline stance when it comes to cannabis-related trademarks, specifically when it comes to marks used in connection with the sale of cannabis products and drug paraphernalia. To register a trademark with the USPTO, an applicant must adhere to specific legal requirements contained in the federal Lanham Act, including lawful use of the applied-for mark in interstate commerce. Given that the possession, distribution, and manufacture of cannabis remains illegal under federal law via the Controlled Substances Act (CSA), the lawful use in commerce requirement poses unique challenges to the cannabis industry. As a result, cannabis attorneys have pursued federal trademark protections on behalf of cannabis clients through a variety of legal strategies, including securing federal trademark registrations for ancillaries (non-plant-touching) products like hats, t-shirts, and smoker’s articles under the same brand name used to market the applicant’s cannabis products. Another strategy involves the filing of an Intent to Use application, which requires the applicant to demonstrate the use of the applied-for mark in commerce through the filing of a future addendum, which would theoretically require the applicant to delay registration until the end of federal prohibition, but could cause problems if a non-cannabis-related company applies for the same mark prior to a change in federal l aw, provided that company is making lawful use of the applied-for mark in interstate commerce.

Sean Hocking, Cannabis Law Report, 07/10/2021 09:48:00

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