The Process of and Strategies for Obtaining Trademark Protection for Marijuana Retailers

Nov 11, 2013

With the decriminalization of marijuana in the states of Colorado and Washington, the retail sale of marijuana will become a legal business venture in 2014. The United States Patent and Trademark Office (USPTO), however, does not recognize trademarks for the sale of cannabis. Despite this discrepancy, a potential cannabis retailer has two courses of action ensure his or her mark is protected.

Obtain a Trademark from the USPTO

The USPTO will not recognize “marijuana” or “cannabis” as appropriate descriptions of goods. This can be overcome by following two steps.

First, you’ll need to broaden your description of goods. Marijuana may be the most specific and accurate description of the goods that you intend to sell, but these goods can also fit into a broader category which is recognized by the USPTO. For example, the USPTO recognizes the category “herbs for smoking,” a category which a court would be likely to find includes marijuana.

Second, you’ll need to broaden your line of products to include additional objects in your broader description. For example, you would need to sell at least one kind of herb for smoking, in addition to marijuana, if the description of goods were expanded to read “herbs for smoking.” When the USPTO issues a Notice of Allowance (a kind of preliminary approval for your mark), you will need to show the USPTO that you are using your intended mark for the goods described. With the USPTO’s refusal to accept marijuana as a description of goods, it would be unwise to offer proof of marijuana being sold as valid proof of the mark’s use. However, demonstrating use of the mark for the sale of another herb for smoking will satisfy the USPTO and allow you to obtain registration of your mark.

A registered trademark will allow you to bring a trademark infringement suit against infringers in any state. In regard to cannabis specifically, infringers can only sell legally in Colorado and Washington, and it has yet to be seen if courts in those states will enforce a federal trademark against cannabis retailers. However, as discussed below, those states are each granting state trademarks for cannabis retailers, so it is likely that Courts in these states will enforce such marks.

Obtain a State Trademark from the State in Which you are Selling

Alternatively, you may be able to obtain a trademark for the sale of marijuana in the state in which you are selling marijuana, but this entails a lengthier process.

The State of Washington offers trademark protection explicitly for marijuana retailers. However, it will not offer such protection for the intent to use a mark in commerce, only for when the mark is actually in use. Therefore, a marijuana retail license must be obtained from the Washington State Liquor Control Board (WSLCB). Once you begin selling, you will then be able to obtain protection for your mark against sellers in the state of Washington only.

The State of Colorado also offers state trademarks, and will likely issue trademarks for marijuana retailers once they begin using the mark in commerce. Like in Washington, a license must first be obtained. In Colorado, said license is available from the Department of Revenue’s Marijuana Enforcement Division (MED), which would allow the legal sale of marijuana for recreational use. Once you begin sales, you can apply for a state trademark for marijuana, and will likely be able to receive protection against other sellers in the state of Colorado.

If you have any questions regarding: protecting your brand for leisure products, consumer goods and services, medications, or any other trademark services, please contact Garcia-Zamor Intellectual Property Law, LLC