Trademarking Your New York Cannabis Industry Business and Brand | Vicente Sederberg LLP

Looking to start a cannabis business in New York? To help you prepare, VS’s New York team created an eight-part series of VS Insights to assist in navigating the path to applying for a New York cannabis business license. The series will cover essential topics for New York cannabis entrepreneurs, such as forming your business, preparing for the license applications, finding appropriate real estate, fundraising and investment, qualifying as a social equity applicant, communicating with municipal officials, and environmental requirements.

Part four of the series focuses on one of the more exciting yet essential tasks: creating your business brand name and logo—and then protecting that brand with a trademark.

Brand names and logos are critical to the growth and success of businesses in the cannabis industry; consumers cannot shop for, share, or celebrate products or services without a brand attached. Effective brands must be developed, built, supported, and protected. As discussed below, cannabis brands can generally build and protect their brands and trademarks, just like any other business.

The foundation for building and protecting a legally strong brand is choosing a creative name. The more distinctive, the better. A name that is generic or made up of common industry terms will most likely be much harder to protect—and runs a higher risk of dispute with another brand in the industry. As a result, it is recommended to work with an attorney to conduct a review and clearance search before adopting a new brand name.

Once a name is chosen, trademark registration can be extremely valuable as a cannabis brand asset and to ward off infringers. While there are a few hurdles to obtaining a federal trademark registration for cannabis brands—particularly because of the federal laws—there are still options available.

Trademarks can generally be registered at both the federal and state level. Federal trademark registrations convey the strongest level of protection by providing the owner with numerous rights, including:

  • Being able to use the ® registration symbol

  • Proof of ownership of the mark

  • Notifying the public of existing trademark rights

  • Ability to sue in federal court

  • Providing a basis to file for a trademark in other countries

  • Stopping the import of infringing goods (by registering the mark with US Customs and Border Protection)

Federal trademarks are applied for at the US Patent and Trademark Office and, once granted, provide nationwide rights. While federally registered marks provide widespread protection, state trademark registrations only offer protection within the state that it was applied for.

While it is not currently possible to receive federal trademark protection for cannabis-touching products or services, all hope is not lost. Currently, the best way to obtain federal protection for a cannabis brand is to apply for goods and services that do not invoke the CSA. Some examples include cannabis-related websites and merchandise (such as clothing and apparel).

We have worked with dozens of cannabis businesses to obtain strong rights in their brands amid the current legal landscape. In addition, federal registration is generally available for hemp or CBD products that comply with current guidelines under the 2018 Farm Bill and, if applicable, FDA regulations.

For example, below is a list of some registered marks that VS has helped clients protect:

for a website with on-line business directories and listings featuring information for commercial or advertising purposes in the field of product recommendations, consumer ratings, and reviews for legally licensed cannabis products and services

BLUEPEAK BOTANICS for online retail store services featuring hemp and hemp-derived CBD products, all in the nature of non-medicated and non-consumable health products and beauty products; all of the foregoing having a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis

for a website featuring articles in the field of cannabis and CBD

for providing medical information regarding cannabis and CBD

BWELL for a website with consumer information and news regarding cannabis

SLUMBER CBN for providing a website with medical and health information in the field of the risks and benefits of using cannabis and CBN

In states where cannabis use is legalized, cannabis brands may also be able to register their trademarks with the state.

For more on trademarks, including common pitfalls, strategies to differentiate your mark, and how to avoid infringing on registered marks, watch this discussion with VS intellectual property attorneys Sahar Ayinehsazian, Erik Pelton and Jeffrey Welsh.

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