Stephen L. Baker

Stephen L. Baker
Baker and Rannells Intellectual Property Attorneys, Somerville, NJ

Answer: It depends (sounds like a lawyer doesn’t it?). Selling foods, beverages, vaping oils, or cannabis that can be smoked or otherwise consumed is illegal under Federal law. Accordingly, an application filed in the United States Patent and Trademark Office (“USPTO”) for the mark WEEDEX, for example, for any of the foregoing will encounter a rejection as follows:

“Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.” This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.”

Does that mean there is no protection? No, there are options available. If you are a cannabis outlet, for example, you could register WEEDEX for apparel, newsletters in the area of cannabis uses, smoker’s pipes, etc.

Also, how one describes one’s edibles is another work-around. Someone was smart enough to file for “ALICE B. TOKLAS” for candy, namely, toffee and fudge. It doesn’t take a genius to figure out a primary ingredient, but the USPTO either is not versed on the literary reference or never asked.

Moreover, because certain countries do not require use to register a mark, we have filed applications in Switzerland for example, for beverages, vaping oils, edibles, and the like and then extended the rights/protection to the U.S., Canada, etc. While this particular route requires a few more steps in the legal process, the end result can mean obtaining the rights needed to protect your business.

Additionally, an applicant should be aware of trigger words that may prompt further investigation by the USPTO. For example, CANNADREX was recently published for essential oils for personal use. The USPTO inquired into whether cannabis was an ingredient in the goods. The applicant responded, “Applicant’s claimed goods do not contain marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance,” and the USPTO accepted the explanation and approved the application. The lesson is that if “Canna” is a component of the mark, the USPTO will likely inquire. Note that any response must be truthful to avoid a claim of fraud.

Further, the USPTO recently allowed an application for CANNABIS REVOLUTION for providing financial information in the field of access to the legal cannabis markets via virtual currency. Activity such as this is not illegal and is likely protected by free speech. Lesson: If it is legal, your application will be allowed unless it conflicts with an earlier filed application or existing registration. What does that mean? Consult with a trademark professional before you choose a name and design a logo.

Keep in mind that you can be sued for trademark infringement should you choose a name that already exists for your goods or related goods. For example, alcohol and tobacco companies are considering getting into the cannabis market. Molson Coors is entering a joint venture with The Hydropothecary Corporation, a Canadian marijuana producer, to make non-alcoholic cannabis-infused beverages. Naming your cannabis outlet “Coors” would attract a swarm of lawyers. How to avoid? Having a qualified professional conduct a search is a very inexpensive first step that may avoid the time and expense of litigation.

Do not let anyone tell you that trademarks and trademark protection is unimportant or unavailable in the legal marijuana business. You need to find a name, have it cleared and prosecuted by a qualified professional and do the same due diligence you would for any startup. The process is not costly and may save expense and heartache. In the meantime, the smoking lamp is about to be lit in New Jersey and elsewhere. Use this time to obtain the protection you need going forward.

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Reprinted with permission from NJBIZ. Copyright © 2019. All rights reserved.