Originally published in the April/May 2018 edition of mg Magazine.
Before you name a strain, you need to know the strain name and the brand name are not the same. A brand name or trademark does not communicate “what” the product is, but rather “who” is providing it, meaning, a trademark doesn’t tell you about a product, but instead communicates the source or origin.
When selecting a trademark, always aim to choose a term or phrase that is both distinctive and exclusive, staying away from names that are descriptive, deceptively misdescriptive, or confusingly similar to state or federally registered marks, an applied-for mark, and common-law (unregistered) marks that are used for related goods or services, as well as famous trademarks, which enjoy an even broader scope of protection.
If you select a trademark that is also the name of a strain used in your products, the selected mark would be considered merely descriptive of the product and not protectable for such cannabis products. For example, if an edible product named “Blue Dream” incorporates the Blue Dream strain, the manufacturer would not be able to protect the product name because it is merely descriptive of a product feature.
Alternatively, if your cannabis product shares a name with a strain but the product does not contain that strain, the selected mark may be found deceptively misdescriptive if consumers would assume (albeit incorrectly) your product contains the particular strain. Marks comprising strain names such as OG Kush, Hardcore OG, and Charlotte’s Web are examples of popular strains the United States Patent and Trademark Office has found potentially descriptive or deceptively misdescriptive.
Unique to branding cannabis products, you also will want to stay away from choosing a brand name or advertising your product contains a strain with a name that may be considered attractive to children. Many state laws, including those in California, Maryland, Minnesota, and Oregon, specifically prohibit cannabis products and product packaging from appealing to children. As the brand name typically is displayed most prominently on product packaging, these regulations necessarily prohibit names, images, and other language that may be child-friendly.
A trademark is only one element of the branding process. Other elements, such as a distinctive logo on the plant pot and/or a hangtag or stake with additional information about the brand, also can create consumer brand recognition. Advertising impressions are important, and when there are dozens of choices for the consumer, a stand-out brand allows a consumer to easily distinguish one product from another.
With the improvement of strain genetics intended to deliver enhanced plant attributes such as high potency, high yield, and pest resistance, it can make sense to differentiate the product in the marketplace through branding. Positive brand recognition often makes the difference between a purchase and a failed sale. A successful sale can lead to consumer trust, and ultimately loyalty, resulting in repeat sales.
But when it comes to branding strain names, there is no need to “recreate the wheel.” Agricultural and horticultural companies have used trademarks to identify the source of plant varieties and cultivars for decades. It is important to remember varietal or cultivar names are the designations given to cultivated varieties or subspecies of live plants or agricultural seeds and are the generic names for the specific type of agricultural product. Conversely, a brand name is a mechanism for communicating a company is the source of a particular product.
One of the best practices to distinguish a “name” as brand name, not merely the identity of the cultivar or varietal, is to present the trademark as an adjective modifying a generic noun. For example, Floribunda (Latin for “many-flowering”) is a garden rose developed by crossing hybrid teas with polyantha roses to create roses that bloom with both the polyantha profusion and hybrid tea floral beauty and color range. When Jackson & Perkins, a company known for its cultivation of roses, went to market with Floribunda roses, a category of garden roses they developed, J&P branded their garden roses using distinctive and exclusive trademarks, such as Bolero™ Floribunda, Icecap™ Floribunda, Easy Going™ Floribunda, etc. The trademark tells you “who” the product comes from, whereas the noun identifies the common name of the product.
In addition to coupling a mark with the generic name, it can be useful to distinguish a brand name from a varietal or cultivar name by visually differentiating the “name” in ALL CAPS, italics, bold, or a different font, and pairing the mark with the appropriate notice symbol: ® for a federally registered mark and ™ for an unregistered mark.
As with other varietal and cultivar names, a cannabis strain name does not signify a source, but rather generically identifies the specific type of cannabis. According to the Leafly® directory, the strain Blue Dream is a “sativa-dominant hybrid originating in California, [that] has achieved legendary status among West Coast strains.” But with hundreds of growers bringing Blue Dream flower to the market, who is known for growing the best Blue Dream? How do you distinguish your Blue Dream flower from a competitor’s?
Though there are tricky nuances to branding a cannabis strain, it is far from impossible. For example, the Canadian cannabis company Tweed offers the strain CBD Kush under the brand name Devon™ CBD Kush. In this circumstance, the strain name, CBD Kush, is the generic cultivar name, and Devon is the unique, protectable brand name. As discussed, visually placing the brand name next to the cultivar name is proper trademark usage that can help solidify the source-identifying function of the brand in the minds of consumers.
Understanding the difference between a strain name and a brand name at the outset is critical, as is using such names accordingly. Equally important is ensuring third-party strain directories such as Leafly, as well as dispensary retail menus, correctly identify and distinguish the brand versus strain names.
In sum, branding a new (or old) strain in a way that associates your company as the source and makes it your own, requires at least the following:
- For a newly developed strain, select a varietal name for the new strain and consistently use it as the “what,” e.g., Blue Dream.
- For a newly developed or established strain, choose a distinctive and exclusive brand name as the source identifier and consistently use it with the strain name, the “who,” e.g., Marigold™ Tahoe OG.
- Once you have selected a strain and a brand name, work with an experienced cannabis trademark attorney to assess whether the proposed names (brand and/or strain) are confusingly similar to an already registered mark, an applied-for mark, a common-law mark, or a famous mark.
- Use and notice your trademark properly with the appropriate TM symbol for unregistered marks or the ® designation for registered marks, e.g., “Luminosity™ Blue Dream.”