With the New Year, the California Secretary of State announced that it is now accepting applications for cannabis-related trademarks. This is welcome news for California cannabis businesses, which have struggled to obtain protection for their growing brands.
As previously discussed, to date it has been difficult, if not impossible, for cannabis-related businesses to successfully register trademarks for their products or services at either the federal or state levels. At the federal level, this is because using or distributing cannabis is still illegal, and the United States Patent and Trademark Office (USPTO) will not register marks for illegal activities.
In the past, California has generally declined to register marks for cannabis-related goods or services—even once those goods and services became legal in California—because its policy was to provide protection consistent with the USPTO. Thus, the Secretary of State’s new policy to allow such applications is a marked shift that will help cannabis-related businesses protect their increasingly valuable brands.
The new California Secretary of State does come with two conditions:
- The mark must be lawfully in use in commerce within California; and
- The goods and services classification must match the USPTO classifications.
To satisfy the first condition, cannabis businesses can turn to the California Cannabis Portal as a useful resource regarding how to comply with California’s three cannabis licensing authorities.
While the second condition seems straightforward, as the California Secretary of State’s website notes: “Not all cannabis-related products can be registered under current law due to the inability to meet federal classifications.” Accordingly, applicants would be wise to confer with trademark counsel prior to filing an application.
It remains to be seen how cannabis owners will satisfy these conditions, and many issues will likely be hashed out during the trademark registration process. By accepting applications for cannabis-related trademarks, however, California shows its commitment to helping these businesses protect one of their most valuable assets: their brands.