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In the United Sates, stakeholder may apply to register trademarks on the state and federal levels. State applications, particularly in states where some form of cannabis has been legalized tend to be more straightforward than federal applications. Federal applications are highly scrutinized by the examining attorneys at the USPTO. The good or service must be lawful, under a broad interpretation of U.S. Federal law, to be eligible for trademark or service mark protection. Listed here are a number of facts and fables about trademarks that might assist you in thinking about brand and trademark protection strategies.
Can I protect my cannabis mark at the USPTO?
Yes. Federal law does not allow federal trademark protection for activities that are unlawful under federal law but many activities of stakeholders in the cannabis industry are in fact lawful and subject to trademark protection. Protecting a tee shirt does not provide you with much protection but a lawful activity with a nexus to your cannabis business might.
What is the difference between state and federal trademark protection?
Foremost it depends on the state but state trademark application and registration processes are relatively quick and inexpensive compared to the USPTO trademark application and registration proesses. However, federal registration tends to offer more protection. Since the protections offered cannabis businesses are nuanced often pursuing both state and federal protection is the optimal course of action.
What is the supplemental registrar?
The USPTO's principal register is reserved for the most unique, distinctive trademarks. Generally, the supplemental register is used for descriptive marks. Unlike the principal register, a trademark or service mark holder does not have the presumption of federal ownership. In essence this means to assert your rights you have to prove that people actualy associate your trademark or service mnark with your product or service. The holder may still use a trademark registration mark ® and the USPTO may deny applications that are similar to yours.
What is the difference between a trade name and a trademark?
A trade name is the name under which a company or corporation does business. A trade name is also known as a “doing business as” name or DBA and generally must be registered with the state of formation or incorporation's secretary of state. At core, trademark and service marks are words, names, symbols, or devices, or any combination thereof used to identify and distinguish goods, and services from those manufactured or sold by others and to indicate the source of the goods or services. If a trade name meets these criteria it may also be eligible for trademark or service mark protection. Virtually anything can become a trademark or service mark as long as it is inherently distinctive or has acquired distinctiveness (i.e., has secondary meaning).
My mark is not listed in the USPTO’s database. Should I go ahead and apply?
No. The USPTO’s Trademark Electronic Search System or TESS is one of many steps to conduct a “knock out” search only. A “clearance search” involves searching many databases to evaluate if another legal person may have superior trademark rights or similar rights that give rise to risks to you.
You state that you do not apply to register for marks for unlawful goods and services. What if I think it is lawful?
If I agree, I will zealously advocate for the registration of your mark. My opinion of what is lawful is not always the same as the Trademark Office’s opinion.