The difficult development of cannabis brands in the United States
In recent years, there has been a growing trend among States to legalize cannabis for medical and recreational use. Today, only Uruguay and Canada allow the sale and use of recreational marijuana at the national level. But many countries are considering following this path. In the United States, for example, there are about ten states that allow private use. However, the use, possession, sale, cultivation and transportation of cannabis are still illegal in the United States under federal law. This duality is particularly problematic with regard to the definition of cannabis.king of brands.
The USPTO and the blocking of recreational cannabis brands
In recent years, many start-ups have entered the burgeoning cannabis industry. These start-ups (dispensaries, growers, vendors) have grown rapidly, including several companies listed on the stock exchange. And like any other company, they have sought protection for their intellectual property, in particular through the registration of trademarks protecting their activity.
However, since cannabis is still banned at the federal level, the trademark applications to the USPTO (the U.S. Intellectual Property Office) are systematically refused. In most cases, the Office justifies its refusal by stating: "since the goods and/or services identified consist of articles or activities prohibited by the law regulating drugs and other substances, the applicant cannot have a bona fide intention to lawfully use the mark applied for in trade in connection with the goods and/or services in question. »
As a result, companies in the sector have been trying to obtain protection through secondary routes.
Attempts to circumvent the federal ban
Several companies have thus chosen to register local trademarks in states where recreational cannabis is legal. Indeed, in addition to the USPTO's federal register, each U.S. state maintains its own trademark register. The main disadvantage is the limitation of the protection obtained. Indeed, it is not possible to enforce a California trademark against a competitor located in Nevada. A local filing only allows one to fight against competitors operating in the same state.
Another technique is to obtain a federal trademark for goods and services other than cannabis. For example, companies register their trademarks with the USPTO for derivative products (T-shirts, bags, hats) or services accessible via the Internet (marijuana information sites, online directory of clinics, etc.).
The risk is that the trade mark is not sufficiently used for those secondary goods and services, and that it is revoked. To avoid this, it is preferable to register and use one's trademark for related products. Thus, the applicant could legally register his trademark to sell tobacco or vapor products. Similarly, a company that sells cannabis cookies or candies could develop a range of THC-free products to benefit from protection for these products.
Towards an evolution of American legislation?
Many companies are trying to obtain a relaxation of the federal legislation in order to be able to benefit from brands that truly cover products and services related to recreational cannabis. In the meantime, companies are using patent law to protect the products themselves. For example, since 2008, there has been a sharp increase in the number of patents on marijuana varieties in the United States.
MedMen, a Californian company that pioneered recreational cannabis and has a presence in several states, has gone as far as file an application for the trade mark "CANNABIS" for T-shirts. After obtaining registration of its logo, a stylized marijuana leaf, the company is trying to keep up the momentum. Experts are predicting a USPTO denial. But MedMen wants above all to get the American Office to react. This trademark does not target illegal products, and the USPTO will have to find new arguments to reject it.