Creative Solutions For Cannabis Industry IP

While registering trademarks for cannabis products at the USPTO is currently impossible, brands are applying creative solutions to the problem. Leon Steinberg, Managing Director at Dennemeyer, United States, elaborates.

The cannabis industry is growing exponentially in the US, but it is doing so without traditional federal trademark protection. Although marijuana-related brands are flourishing and fortunes are being made, marijuana is still illegal under the federal Controlled Substances Act (CSA).

Accordingly, the current US Patent and Trademark Office (USPTO) policy is to refuse all cannabis-related trademark applications other than hemp-derived products that contain less than 0.3% THC. This policy has forced the cannabis industry to use creative alternatives to protect their brands. In 2019, the cannabis industry has become a multibillion-dollar industry, and 33 states, including the District of Columbia, have some form of legalized cannabis, whether medical, recreational or both. More than 35 million US citizens use marijuana every month, which is more than the number of Americans who smoke cigarettes. Research indicates that the number of cannabis users is growing at over 15% a year.

This rapidly expanding consumer base has spawned an industry that includes growers, distributors, retailers, equipment suppliers, manufacturers of cannabis-infused edible products, magazines, websites, media outlets, clothing lines and paraphernalia manufacturers, including vaporizer companies. New brands are being created and are growing in recognition, but, unlike in other booming industries, it is difficult to protect these brands because the USPTO will not recognize cannabis-related trademarks. With fortunes at stake, the industry has found alternatives to protect brands and prevent consumer confusion.

Non-cannabis mark

The most common technique is to apply for USPTO registration without suggesting that the trademark applies to anything cannabis-related. One example is 'Cannabliss,' which covers retail stores featuring tobacco products and smoking accessories. Another example is 'Pax 2' which includes smokeless vaporizer pipes for tobacco and other herbal matter. Along with the benefit of protecting brands for ancillary services and products, there is another potential benefit: if the USPTO were to start approving trademarks for cannabis products, companies with cannabis-related marks could be first in line.

The trick here is that the trademark...