A company’s trademarks are the most important aspect of the business. Trademarks encompass the brand, name, logo, slogan, and packaging. Without strong trademark protection, customers will not be able to distinguish the product’s quality from the competitor’s products on the shelves.
Without good branding or a trademark, cannabis becomes a commodity, no different from types of apples. Do you know which farm grew the last apple you ate?
Distinctiveness
Choose a brand that is distinctive. The brand should stick out in the mind of the public. A brand possessing a strong public image will not disappear among a shelf of similar offerings. In addition, a stronger brand is more protectable against infringers. A weak brand is quickly forgotten.
When it comes to registering a brand as a trademark, there are five categories of strength. From weakest (not distinctive and garnering no protection) to strongest (inherently distinctive), they are: 1) generic, 2) merely descriptive, 3) suggestive, 4) arbitrary, and 5) fanciful. One should always aim for a brand in one of the three strongest categories.
Generic
A generic mark can never be registered and is never granted any legal protection against infringers. A generic brand in this industry might be “recreational marijuana” or “legal weed.” There is nothing distinctive about generic marks.
Descriptive
Descriptive marks are those that simply describe the product. They lack inherent distinctiveness and are not protectable against infringement until consumers associate the brand with the product. This often takes years and considerable marketing expense. Examples of descriptive marks are “American Weed,” “Green Buds,” or “Carl’s Chronic.”
In order to avoid creating generic or descriptive marks, avoid the most common terms used in the cannabis industry and culture. Some terms to avoid: kush, weed, canna-, mari-, sativa, indica, THC, green, 420, etc. Not only will these words and prefixes not strengthen a mark, but also there are many brands currently utilizing the terms. Try to avoid using a pot leaf in any trademark—it lacks originality. A company should distinguish their brand from those of competitors. Why confuse customers when they are searching for your product?
Suggestive
A suggestive mark evokes some attribute or quality of the product in the mind of consumers. It requires an imaginative jump to understand what the mark is referring to. “Greyhound” is one example—a fast-running dog represents the (alleged) speed of the passenger busses. “High Flyer” could be a suggestive mark for a cannabis company. The term suggests a particular attribute of the product, but no one would know what attribute unless they’re familiar with the product.
Arbitrary
An arbitrary mark has no relation to the products bearing the brand. For instance, an apple is a piece of fruit and bears no connection to the products of the computer company Apple®. Sasquatch is also an arbitrary name for a glass company.
Fanciful
A fanciful name is one that is “coined” (made up) and has no inherent meaning. Fanciful marks are afforded the highest level of protection. In addition, a fanciful mark garners excellent search engine optimization attributes. “Kodak” is a made-up word and therefore a perfect fanciful trademark. “Zoot,” a brand of edibles in Washington State, is also a fanciful trademark. Zoot is not a word and has no meeting, apart from a zoot suit.
Uniqueness
Do not use a name that could be confused with that of a competitor. Do not ride upon another’s reputation. You may be sued for infringement. In addition, because your mark is similar to that of a competitor, you receive less legal protection.
It is also a good goal to avoid copying or parodying another brand, even if it originates in a completely different market. It may seem cute to name your peanut-butter-and-chocolate edible “Reefers Peanut Butter Cup,” but I assure you, Hershey will not be amused. In fact, Hershey has filed numerous lawsuits defending their trademarks against infringers in the MMJ industry. Develop your own brand and products that easily will be identified by your customers.
The future
Think about expansion. Keep an eye on what product lines you may produce in the future. What regions might your brand be used in if you successfully build your empire? Forgetting to think ahead can be an expensive mistake to mitigate. You may have to choose a new brand and incur the expense of marketing that new brand. “Seattle’s Best Bud” may not fare well against local competitors when you expand into Atlanta, Georgia, ten years from now.
Consistency
Aim for uniformity in your message. Use this on all products, in all advertising, and at all times. Do not dilute your message. Do not confuse consumers. Get a domain name that is directly associated with the brand. Remember, all of your competitors are putting out a strong message. The goal is to provide a quality product that earns customer loyalty and increases demand.
Trademarks can be protected in three ways: 1) common law rights, 2) state trademark registration, and 3) federal trademark registration. Common law rights accrue the moment the mark is used in commerce. You can add a TM immediately to put others on notice that you are holding out the words and/or logo as a trademark. State trademark registration provides minimal rights, but is inexpensive. Some states allow cannabis trademarks, and some do not. A federal trademark with the United States Patent and Trademark Office (USPTO) is the ultimate protection. A mark must be used in interstate commerce and must be associated with federally legal goods or services. When it comes to cannabis trademarks, the USPTO takes the view that, because cannabis is a Schedule I narcotic as classified by the Controlled Substances Act (CSA), the product is immoral and/or scandalous and is therefore not registerable. While this is the case, there are a few methods to gain some protection and strategically position a brand for greater protection in the future. A federal registration will take at least eight months to complete. Upon successful registration, an ® should be attached to the trademark. Even without a federal registration, the Lanham Act—the federal statutes that allow enforcement of trademark rights—can be used for common law rights. Whether a federal judge will hear such a case remains to be seen.
With so many companies working in the marijuana industry, the competition is cunning and fierce. The best way to compete is by developing a quality product, brand loyalty, and increased consumer demand for the product.
A strong trademark will become one’s biggest asset in this industry. Invest in your future. Invest is a solid brand.
Neil Juneja is the founder of Gleam Law, a full-service cannabis law firm on the West Coast. Neil is a registered patent attorney and focuses on trademark and patent protection in the cannabis industry. He represents clients throughout the world.
