When Canna, China and IP overlap
As regulars on this blog know, cannabis companies face unique challenges in protecting their brands, especially in the context of federal trademark registrations.The federal government continues to ban cannabis with THC levels exceeding 0.3% and various CBD products, which means that the signs that identify these products cannot be United States Patent and Trademark Office.
One of the strategies adopted by many participants in the cannabis industry is to register trademarks for products deemed not illegal by federal law. This usually means commodities such as T-shirts, hats, lighters, coffee cups and many other products. It is also possible to register trademarks for cannabis products that meet the legality parameters stipulated by federal law, such as cannabis cigarettes.
Of course, cannabis companies are eagerly awaiting the day when they will be able to register all of their products in the federal state, including most of them that constitute their core products. But as I have often pointed out, brand protection is not a black and white issue. Registering a particular trademark (or several of them) does not protect a brand by itself, just as signing a contract can protect them from breach of contract. Similarly, the lack of federal registration of key products is not fatal to brand protection efforts.
Registering trademarks only for certain core products or auxiliary products (such as commodities) is a deployment strategy. Another strategy (usually used in conjunction with the strategy just described) is to register a national trademark. One of the more interesting by-products of the rapid growth of the cannabis industry in recent years is its promotion of state trademark registrations. Not long ago, national trademarks were handled roughly in any discussion of trademark law, similar to the blue sky law in the context of securities. “Yes, they may be important, but what you really need to know is the federal trademark law.” To be fair, in most cases, it makes sense for trademark owners to seek state protection provided by federal rights. However, national trademarks have become a key part of the cannabis brand toolkit.
I am increasingly finding inspiration for non-marijuana intellectual property work in our cannabis intellectual property work, especially in China. Given the large number of trademark applications filed in China by well-intentioned and malicious actors, companies applying for trademarks in China are likely to find that one or more trademarks they want have been registered (or applied for) by others.
In some cases, brands can respond directly, such as raising objections or requesting cancellations based on non-use. Buying a trademark may also be an option. In some cases, companies need to completely open up a new path, such as by modifying the logo or renaming, so that the trademark they actually own takes center stage. They can also learn from the practices of cannabis brands.
Just as the federal ban on cannabis is only part of the field of trademark registration, the previous registration in China does not mean that the registration of similar trademarks is completely prohibited. Companies may consider registering in categories that cover non-core products. If these happen to be the products that the company plans to go public, then at least it will be partially protected. Even if they don’t plan to sell these products, companies can reduce the space for previous registrants to build their own brands—especially if the previous registration was done in bad faith, for example, by counterfeiters or dishonest suppliers.
Ideally, it won’t take long for cannabis brands to enjoy full trademark rights in the United States—and before China closes loopholes that allow malicious actors to use the trademark system for gaming. But now, be creative!