It was initially announced that licensed California cannabis companies may file service mark applications to register marks for licensed cannabis-related services beginning January 1, 2018. But, in an unexpected shift in position, this changed on January 12.
As of January 12, 2018, the California Secretary of State’s Office now accepts trademark applications for cannabis products (in addition to service mark applications). A state registration has a valuable defensive effect as they are public and can be found by others conducting a nationwide search for state registrations.
In order to obtain protection for cannabis goods and services, an applicant must (1) be offering the goods or services in California commerce; (2) classify the goods and services in accordance with the same classification system used by the USPTO (the Nice Classification System); (3) have been issued a temporary license or have a trademark license with a license holder; and, for goods; and (4) be fully compliant with MAUCRSA and the emergency regulations, including packaging and labeling requirements.
Additionally, while manufacturing, cultivating, or distributing your own branded products is not a protectable service, distributing someone else’s branded products does not preclude you from also distributing your own branded products and manufacturing someone else’s branded products does not preclude you from also manufacturing your own branded products. Similarly, cultivating flower under your own brand and then selling the flower to a retailer who sells it to the consumer under a different brand name would constitute a protectable service.
As priority is an issue in any trademark dispute, filing applications sooner rather than later is important for marks for cannabis goods and services that are currently provided to California patients and/or consumers.
Evoke Law provides counseling on packaging and labeling compliance in addition to trademark services. Please contact us if you are interested in submitting trademark applications for your cannabis products.