Trademark and Protect Your Brand, or Risk Someone Infringing On or Stealing It Travis Copenhaver, Senior Associate Attorney at Cannabis Legal Group

1. Protecting Your Brand:
The Importance of Trademark Development
Travis Copenhaver
Senior Associate Attorney

2. Trademark Basics
 Trademarks are synonymous with your brand and the products or services you
provide
 A “mark” is a commercial identification that indicates the source of a good or
service
 A trademark technically refers to a product or good while a service mark
refers to a service. Most people will use “trademark” to refer to any type of
mark
 Trademark protection is created by associating the use of a mark in
connection to a product or service.
 Establishing the ownership of a trademark allows the owner to bar others
from using a similar mark in connection with similar products or services
 Similar marks can coexist if they are used in connection to unrelated products
or services

3. Three Types of Trademark Protection
 Common Law
 State Registration
 Federal Registration

4. Common Law Trademarks
 In most industries establishing basic trademark protection is a straightforward
process:
1. Identify the product or service you’re providing
2. Identify the “mark” you wish to associate with that product or service
3. Establish actual use that mark as you provide the product or service to
consumers

5. Common Law Trademarks
 While establishing a common law trademark is easy, the rights created are
very limited and difficult to rely upon when in a dispute with another party.
 Common law trademarks only protect brands associated with the lawful use of
goods or services and are limited to the actual geographic area of use.
 You can only use these rights if the trademark owner can demonstrate actual
use and first use of the mark.(Evidence matters)
 Defending your right to use your brand in a dispute with a competitor requires
the owner to present evidence sufficient to establish this claim.

6. State Registrations
 Qualifying trademarks can obtain a significantly more useful level of
protection through registration with the State of Michigan.
 A trademark registered with the State of Michigan provides protection for
your mark within the borders of the state.
 The biggest benefit provided is that your trademark will be listed in
Michigan’s trademark database: a public record that can be cited to prove
first use.
 Registration places everyone else in Michigan on notice that you are the
owner of, and have claimed protection for your mark. This can be a major
deterrent against others using your mark, and creates additional legal
protections for disputes within the State of Michigan.

7. Limitations
 In order to qualify, the products or services provided under your mark must be
in lawful use at the time you submit an application.
 Protection does not extend to trademark claims outside the state

8. Federal Registrations
 Traditionally, the highest level of trademark protection is a federally
registered trademark
 Registration is issued by the United States Patent and Trademark Office
(“USPTO”)
 If a trademark owner provides a good or service in interstate commerce,
registration allows that owner to specify the goods and services provided, and
protect the right to use that mark throughout the United States and its
territories.
 You can file an “Intent to Use” application for a mark not currently used in
commerce to test the waters – see if your mark qualifies for registration
before committing to actual use in commerce

9. Benefits
 Legal presumption that you are the owner of the mark (in any state);
 Legal presumption that you have the right to use the mark (in any state);
 Public notice that you are the owner of the mark;
 Your mark is listed in the USPTO database, to prevent future infringement;
 Registration can be recorded with U.S. Customs and Border Protection to
block counterfeiting from entering the country;
 The right to bring legal action concerning your mark in federal court;
 The opportunity to seek registration of foreign trademark filings; and
 The ability to use the federal registration symbol: ®

10. Enforcing a Trademark Protection
 Likelihood of Confusion
 Are the goods and services related in the minds of a consumer?
 Are everyday consumers paying an average amount of attention likely to believe
there is a similarity in the two brand names?
 How similar are the marks?
 Words?
 Appearance?
 Sound?
 Similar Meaning?
 Commercial Impression?
 Likely to Deceive consumers?

11. Trademark Rights are Territorial
 Common Law Rights required actual geographical use
 State registered marks create state wide protection
 Federally registered marks create country wide protection

12. Enforcement Methods
 Short of litigation, trademarks can be enforced by sending the infringer a
cease and desist” letter
 If infringement is clear, or the infringer does not have a strong claim to the
use at issue, this can typically resolve the issue
 However, the infringer may disagree and either ignore the cease and desist
letter or respond with evidence of its own
 Trademark registration creates a legal presumption
 A registration can be overcome via evidence establishing that the accused infringer
is actually the appropriate owner of the mark
 Do not assume a trademark registration is full proof!
 Actual use is the underlying legal protection for trademark rights

13. Enforcement Methods
 Trademark registration significantly impacts the viability of trademark
enforcement
 Common Law – evidence-based evaluation
 Parties enter as equals
 State or Federal Registration: presumptions of ownership and exclusive use
 Put the burden of proof on the non-registered party
 Federal registration has priority over a state trademark registration if the
federal registration was obtained prior to the state registrant’s application
date. So federally registering a mark gives you protection from your filing
date in all U.S. States and Territories

14. What are “Marijuana
Trademarks”?

15. Cannabis Trademarks and Federal
Registration
 Unfortunately for the cannabis industry, direct federal trademark registration is not available
to cannabis products and services
 The USPTO will not register marks that describe goods or services that violate the Controlled
Substances Act.
 This includes any product or service that involves manufacturing, distributing, dispensing, or
possessing marihuana or marihuana-based preparations.
 Further, the USPTO will not register any mark that involves “drug paraphernalia” or any
equipment, product, or material of any kind which is primarily intended or designed for use
in manufacturing, compounding, converting, concealing, producing, processing, preparing,
injecting, ingesting, inhaling, or otherwise introducing marihuana into the human body.
 Not only are actual marihuana products prohibited, any ancillary tools, equipment, or
services directly involving marihuana will not qualify for registration.
 Effectively, most of the products or services provided by cannabis businesses do not qualify
for federal protection.

16. Cannabis Trademarks and State Registration
 State trademarks are valuable tools for cannabis businesses.
 Conduct authorized under state law will qualify as legal use and therefore
allows for registration.
 However, such protection does not extend to trademark claims outside the
state.
 Further, in order to qualify, the products or services provided under your mark
must be in use at the time you submit an application.

17. Can Cannabis Brands Obtain
Federal Trademark protection?

18. US Reg. No. 4,684,302
US Reg. No. 5,612,033
US Reg. No. 5,627,561
US Reg. No. 4,683,783
US Reg. No. 5,658,228
US Reg. No. 5,764,246

19. Circle the Wagons: Indirect Cannabis
Registration Strategies
 Federal trademark protection for a cannabis business will always be an
indirect protection.
 Until cannabis laws change at the federal level, you will not be able to use
federal law to enforce trademark rights that involve a controlled substance.
 You must think of your brand as more than just cannabis. Look to how other
companies advertise their products.

20. Example
 Coca-Cola® most known for soft drinks.
 However, the Coca-Cola Company also sells apparel, stickers, poster, coolers, Christmas
ornaments, backpacks, china, board games, bottle openers, and a whole host of other
products and services. Some of these products, such as coolers and bottle openers, have a
clear association with Coca-Cola’s main product. The closer that association is, the more
powerful Coca-Cola’s trademark influence will be over potential competitors.
 For example, if another company tried to sell “Coke” branded coolers, the Coca-Cola
Company would have a strong claim against this company for infringement. Coca-Cola
customers are very likely to think there is some sort of association between a Coke-branded
product and the Coca-Cola Company. Although the primary product associated with the Coca-
Cola brand is a soft drink, a cooler product is related in the mind of a consumer. Koozies are
soft drink accessories.
 So even though Coca-Cola has not established federal trademark protection directly for this
product, it can still use its trademark rights to prevent this use because of “Likelihood of
Confusion” arguments. The products are clearly related in the minds of Coca-Cola’s potential
consumers

21. How can Cannabis Businesses use this
approach?
 Cannabis businesses need to approach trademarks the same way. What types
of legal products or services can your company provide that are federally
legal, but still associated with your cannabis related activities?
 T-shirts and hats, for example, are often used to celebrate or promote a
company, or in some cases, a specific product. The same can be said of
stickers and posters. What about smoker’s articles like lighters, ashtrays, or
rolling paper?
 Maybe your company would like to provide an educational website on the
topic of medical marihuana, or a blog providing updates on marihuana related
news?

22. Be Adaptable

23. No registration: Common Law
(Class 025: Apparel)

24. Reg. No. 5,612,033
Class 041: Online journals,
namely blogs

25. Reg. No. 4,684,302
Class 041: Educational services, namely blogs

26. Reg. No. 5,372,667
Class 034: Smokers’ Articles,
Namely rolling papers

27. Note: The Michigan Trademark database is only searchable through
10/06/2017. Consider the number of new cannabis companies
established in Michigan since that time.

28. How can Cannabis Businesses use this
approach?
 Remember, trademarks always entail three equally important elements: the
product/service provided, the mark, and use.
 Establishing a trademark and associating it with a use that is federally legal is
a perfect means of developing a protectable trademark right.
 Establish federal trademark protection for the products and services your
cannabis company can legally (federally) provide opens up federal
registration.

29. State Registration
 Direct cannabis products and services can be registered as a Michigan
trademark.
 But remember, you need to have your products or services legal available for
sale in Michigan. So until your facility is licensed and operating, you cannot
register your mark and expect to have protection.

30. State Registration
 Note, the state of Michigan does note vet the viability of a state trademark
registration like a USPTO filing.
 You can likely register your mark even if your products are not legally
available. However, your registration is unlikely to hold up in court if the
infringing party can establish you prematurely registered the mark. You will
default to common law protections.

31. Here's the secret to developing a strong
cannabis trademark:
 Combine the protections available through your state’s registration process
with the additional protections you can develop by associating non-cannabis,
but related products and services to the mark.
 Protect these products and services with federal trademark registrations.
 While these protections are not as strong as a federal trademark directly
associated to your product or service, remember, none of your competitors
can utilize direct federal trademark protection either.
 Despite federal law’s limitations, significant trademark protection is available
to cannabis businesses.

32. What if I have some federally legal
goods/services and some that aren’t?
 Register what you can
 You do not have to claim all of your goods and services. Don’t list services the
violation federal law
 Be prepared to register those products/services in the future, when you can.

33. Why Register Anything?
 You are never required to register a trademark, and you can seek registration at
any time.
 Some protection is better than no protection
 Visibility
 Registration allows your mark to appear in USPTO searches. Notify other businesses that
you are making claims to the mark’s use
 Increase your availability to enforce
 Reach into other states on your related products and services
 You may not be able to prevent direct cannabis activity outside your state, but you can
make a brand less appealing
 Limit promotion, related products, etc.
 Limit your state from a multi-state operator
 Conceptualize your IP asset for licensing deals and transfers

34. Cannabis Laws are a shifting landscape
 State a claim now so you are not sorry later
 What happens to my cannabis brand when cannabis becomes federally legal?
 We can look to Industrial Hemp and CBD as an example

35. 2018 Farm Bill
 The 2018 Farm Bill was signed into law on December 20, 2018.
 With its passage, “hemp” was removed from the CSA’s definition of
marijuana, allowing for the lawful production, processing, and marketing of
hemp and hemp derived products, including federally lawful Cannabidiol
(CBD) products and services.
 On December 20th, CBD Products became eligible for direct federal
registration

36. USPTO Examination Guide 1-19
 On May 2, 2019, the United States Patent and Trademark Office announced
Examination Guide 1-19, the USPTO’s new policy for reviewing products and
services derived from industrial hemp.
 This Examination Guide clarified the procedures used by the USPTO to
examine marks used in connection with cannabis and cannabis-derived goods
and services, and distinguished such marks from products and services
involving industrial hemp under the 2018 Farm Bill.
 For any hemp or CBD trademark applications filed on or after December 20,
2018, the USPTO will not cite the Controlled Substances Act as a ground for
refusal of registration.
 However, an application’s eligibility for registration is only available if the
goods at issue are derived from hemp.

37. USPTO Examination Guide 1-19
 If an applicant cannot demonstrate that the source of origin for the goods at issue
are from federally legal sources, Cannabis or CBD marks will still be refused
registration based on the Controlled Substances Act.
 Any pending applications filed before December 20, 2018 will also be refused
registration, as until the 2018 Farm Bill was enacted, applicants could not have a
bona fide intent to use the mark in lawful commerce.
 However, if an application was filed prior to December 20th, the USPTO allows the
applicant to amend the filing date of the application to December 20, 2018.
 Any products or services seeking federal registration must still comply will all
federal laws.
 While this is an exciting development for the hemp industry, future applicants
should be advised that not all hemp, CBD, or related products and services are
lawful under the 2018 Farm Bill.

38. What Can we Learn from this?

39. Immediately upon legalizing CBD and hemp,
direct trademark registration became
available
 USPTO Search: Goods or services listing CBD, hemp, cannabis or marijuana
 2008 filing date: 126
 2010 filing date: 305
 2015 filing date: 910
 2017 filing date: 1,717
 2018 filing date: 2,534
 2019 filing date (as of September 25, 2019): 4,677
 Search Code:
(2019$[fd] and cbd[gs]) or (2019$[fd] and hemp[gs]) or (2019$[fd] and cannabis[gs]) or
(2019$[fd] and marijuana[gs])

40. 0
500
1000
1500
2000
2500
3000
3500
4000
4500
5000
2008 2010 2015 2017 2018 2019
(as of 9/25/19)
Hemp and Cannabis Trademark Applications Filed
Hemp and Cannabis Trademark Applications Filed

41. CBD and Hemp trademarks were immediately
treated like any other trademark application
 Filing date is important for establishing claims
 Race to registration!

42. Questions?