Every business’s primary goal is to develop a brand that creates an association between their company and quality. Dispensary owners are no different from more traditional businesses in wanting to protect their brand; however, it is much harder to adequately protect their intellectual property (IP) due to the federal ban on cannabis and the interplay of federal and state laws.
When people refer to “intellectual property,” they are usually using that phrase as a blanket term. However, it actually encompasses three separate and distinct areas of laws. Each has different goals of what is being protected, requirements that must be met to achieve protection, and the regulations that govern.
A trademark protects brand names, phrases, logos/symbols and identifiers of the source of goods or services. Federal trademark registration with the United States Patent and Trademark Office (USPTO) is the primary way that businesses protect their brand and identifying marks that are on products and materials that they produce, because it establishes that trademark on a national level.
Federal trademark applications are not currently being approved for cannabis and cannabis-related items. Trademark examiners have rejected the mark for a variety of reasons.Usually the rejection is related to the violation of the Controlled Substances Act and the use being “unlawful.” There have been minor success stories though of applications approved for items that have a brand name or logo that relate to the business but not cannabis.
State trademark registration is a viable option that would grant strong protection to the mark, put others on notice to not infringe, and create the basis for other enforcement mechanisms within the state of registration.
Copyright protects original works of authorship and is traditionally used by those who create various types of art or images.
While it may not be the primary method for most businesses to protect their intellectual property assets, it may offer an alternative outside-the-box remedy for dispensary owners. The Copyright Act has no language or requirements about lawful/unlawful activity. All that is required for copyright protection is that the original work of authorship be in a fixed tangible medium of expression. Copyright registration could be applied to protect the artwork or text that relates to the brand, so long as it is an original work that the store created.
Patents protect new inventions.
While patents are also filed with the USPTO like trademarks, the regulations and requirements are different when it concerns patent approvals. Patent applications don’t question the legality of the use but have five complex requirements: patentable subject matter, novel, unobvious, useful and has an adequate description. Some in the cannabis industry, and even the U.S. government, have sought to receive patents on plants, strains and related devices with some success.
Due to the complex framework of laws that are at play when trying to protect intellectual property of anything cannabis-related, attorneys have been forced to get creative in their approach to achieving protection for their clients. It is best to discuss protection with a local intellectual property law attorney who also has a strong working knowledge of your state’s cannabis laws and can properly assess what aspects of your business you are trying to protect and the best approach in doing so.
United States Patent and Trademark Office: http://www.uspto.gov
United States Copyright Office: http://www.copyright.gov
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