What is the best way to apply for trademark protection on cannabis products or services? This presentation reviews the current state of the law, discusses the particularities of state and federal applications, walks through the methods trademark attorneys and trademark owners are using to apply for protection, and reviews the ethical issues to be aware of in the process. This presentation was first offered by James Creedon, Creedon PLLC (www.creedonpllc.com) at the 2018 Intellectual Property Law Seminar and Midyear Meeting of the Intellectual Property Law Section of the Oklahoma Bar Association.

1. JAMES CREEDON — CREEDON PLLC

2. “CANNABIS
IS THE NEXT
GOLD RUSH” “The largest group of [legal] cannabis buyers will be in North
America, going from $9.2 billion in 2017 to $47.3 billion a decade
later.” Thomas Pellechia, Forbes.com (March 1, 2018)

3. ANNUAL
GROWTH
PREDICTIONS
ARE OVER
20%
Image and data from Arcview Market
Research in Executive Summary:
The State of Legal Marijuana
Markets (5th edition)
REVISED PREDICTIONS
INCREASE
Current estimates of 2016 to 2017
growth rate average from 25% to
33%, with revised estimates of
2017 spending at $9.7 billion
LEGALIZATION MATTERS
As more states move to approve
cannabis products, spending shifts
into this sector and increases
overall market revenue

4. GALLUP POLL:
U.S. SUPPORT
FOR LEGAL
MARIJUANA
Gallup Poll results as reported by
Arcview Market Research in
Executive Summary: The State of
Legal Marijuana Markets (5th edition)
SUPPORT DOUBLES SINCE
2000
Pew Research Center Polls from
2000 to 2018 show adult support
nearly doubling from 31% to 61%.
(Last cited Pew Research Center
Poll conducted Oct. 25-30, 2017)
MILLENNIAL SUPPORT HIGHER
For those born 1981-97, support
crested 70%. Gen X (1965-80)
support is at 66%, and Boomers
(1946-64) reached 56%. (Pew
Research Center Poll, Oct. 2017)

5. LEGALIZATION
ACROSS THE
UNITED
STATES
Image and state status reporting
provided by the National Cannabis
Industry Association, with data
reported and compiled by
CannaRegs, Ltd., Arcview Market
Research, and BDS Analytics
ADULT USE BROAD MEDICAL
LIMITED MEDICAL PROHIBITED

6. WHAT DOES
CANNABIS
MEAN?
Understanding the basic terminology at the
beginning will help to frame out our
discussion of trademark issues in this field

7. MARIJUANA / MARIHUANA
Generally differentiated from other forms of Cannabis
by its higher THC content (greater than 0.3%)
CANNABIDIOL (CBD)
Non-intoxicant found in Cannabis (generally not under
DEA/CSA enforcement as of May 22, 2018)
THC = TETRAHYDROCANNABINOL
Intoxicant in Cannabis regulated by the Controlled
Substances Act and Drug Enforcement Administration
HEMP
Generally differentiated from other forms of Cannabis
by its low THC content (0.3% or less by 2014 Farm Bill)
CANNABIS
TERMS

8. LEGAL
REGIME
TODAY
With federal and state
changes day-by-day,
practitioners must pay
attention to the current
environment when
considering trademark
matters
MARIJUANA IS PROHIBITED
The Controlled Substances Act still applies, and AG
Sessions rescinded the 2013 Cole Memo in January
2018 to lift soft restrictions on enforcement
JUNe
2
2018
THC IS PROHIBITED
The 2014 Farm Bill set the industrial hemp permissible
level of THC at 0.3%, and content above that is
prohibited overall
CBD GENERALLY NOT PROHIBITED BY THE DEA/CSA
On May 22, 2018, DEA clarified that products outside
of CSA marijuana definition (i.e. seed oil and mature
stalk extract) are not prohibited
FDA EXERTS REGULATORY CONTROL OVER CBD
FDA considers CBD to be a drug under substantial
clinical investigation which was not marketed prior as
a dietary supplement or conventional food

9. HOW DOES THIS ALL PLAY OUT?
Every change in the federal approach
to Cannabis generally will have a
specific effect on the USPTO’s
examination of trademark applications
THE POINT:
TRADEMARK
S
®

10. BRIEF REVIEW ON
FEDERAL
TRADEMARKS
INTENT TO USE
Most states don’t permit, but
exceptions include
Washington, Wyoming, and
Puerto Rico
STATUTORY BARS
Most states mirror the Lanham
Act, but Colorado is a notable
exception
LAWFUL USE
Most states use their own
statutes to determine
lawfulness
REGISTRATION SYMBOLS
No use of federal registration
markers such as ®
“USE IN COMMERCE” TRADEMARK APPLICATIONS
• Applicant is currently using the mark is
commerce to identify source of good or service
• Claimed good or service is lawful under federal
law and mark is used in commerce able to be
regulated by Congress
“INTENT TO USE” TRADEMARK APPLICATIONS
• Applicant has a bona fide intent to use the
mark in commerce to identify the source of a
good or service
• The intended good or service is lawful under
federal law and mark will be used in commerce
currently able to be regulated by Congress
BRIEF REVIEW ON
STATE TRADEMARKS

11. DOES THE APPLICANT ADVERTISE CANNABIS?
Examiners are routinely reviewing websites and other
public materials to cite in office actions
DOES THE APPLICATION HAVE CANNABIS HINTS?
Includes goods like devices for use, herbal products,
hard candies – even entity names or domain names
IS THE USE SUBJECT TO OTHER REGULATION?
Recent refusals based on FDA guidance demonstrate
the landscape continues to shift
IS THE USE LAWFUL?
Examiners look to internal guidance for updates, and
sometimes seem to hold applications intentionally
DOES THE APPLICATION HAVE CANNABIS
WORDS?
Consider less obvious examples such as MMJ, KUSH,
HUMBOLDT, and variants like CANNA
CANNABIS EXAMINATION

12. APPLICATION:
KUSHIECAKES
Imaginary Client KUSHIECAKES plans to bake and sell a four-layer
brownie cake in Colorado, which contains CBD Oil for “psycho-
soothing happiness.” Client intends to later open a bakery selling
both cannabis and non-cannabis products, and also wants to start a
website featuring non-cannabis cooking recipes.

13. THREE
APPROACHE
S

14. DIRECT
ANY ISSUES HERE?
IC 30: Baked goods and
desserts containing CBD
IC 35: Retail bakery shops selling cannabis-
containing items
IC 43: Providing a website featuring
information in the field of recipes and cooking

15. DOES THE APPLICANT ADVERTISE CANNABIS?
Examiners are routinely reviewing websites and other
public materials to cite in office actions
DOES THE APPLICATION HAVE CANNABIS HINTS?
Includes goods like devices for use, herbal products,
hard candies – even entity names or domain names
IS THE USE SUBJECT TO OTHER REGULATION?
Recent refusals based on FDA guidance demonstrate
the landscape continues to shift
IS THE USE LAWFUL?
Examiners look to internal guidance for updates, and
sometimes seem to hold applications intentionally
DOES THE APPLICATION HAVE CANNABIS
WORDS?
Consider less obvious examples such as MMJ, KUSH,
HUMBOLDT, and variants like CANNA
CANNABIS EXAMINATION

16. DIRECT
ANY ISSUES HERE?
IC 30 will be refused at least under FDA
regulatory authority (or not?)
IC 35 will be refused under CSA
IC 30: Baked goods and
desserts containing CBD
IC 35: Retail bakery shops selling cannabis-
containing items
IC 43: Providing a website featuring
information in the field of recipes and cooking

17. INFORMATIONAL
ANY ISSUES HERE?
IC 16: Recipe books
IC 35: Business consulting in the field of
cannabis and CBD
IC 43: Providing a website featuring
information in the field of recipes and cooking
with cannabis

18. DOES THE APPLICANT ADVERTISE CANNABIS?
Examiners are routinely reviewing websites and other
public materials to cite in office actions
DOES THE APPLICATION HAVE CANNABIS HINTS?
Includes goods like devices for use, herbal products,
hard candies – even entity names or domain names
IS THE USE SUBJECT TO OTHER REGULATION?
Recent refusals based on FDA guidance demonstrate
the landscape continues to shift
IS THE USE LAWFUL?
Examiners look to internal guidance for updates, and
sometimes seem to hold applications intentionally
DOES THE APPLICATION HAVE CANNABIS
WORDS?
Consider less obvious examples such as MMJ, KUSH,
HUMBOLDT, and variants like CANNA
CANNABIS EXAMINATION

19. INFORMATIONAL
ANY ISSUES HERE?
”Informational” goods and services are
routinely granted, although common office
actions include request to affirm there is a
gap between the good or service offered and
any potential lawfulness issue
IC 16: Recipe books
IC 35: Business consulting in the field of
cannabis and CBD
IC 43: Providing a website featuring
information in the field of recipes and cooking
with cannabis

20. GENERAL
ANY ISSUES HERE?
IC 30: Baked goods and desserts
IC 35: Retail bakery shops
IC 43: Providing a website featuring
information in the field of recipes and cooking

21. DOES THE APPLICANT ADVERTISE CANNABIS?
Examiners are routinely reviewing websites and other
public materials to cite in office actions
DOES THE APPLICATION HAVE CANNABIS HINTS?
Includes goods like devices for use, herbal products,
hard candies – even entity names or domain names
IS THE USE SUBJECT TO OTHER REGULATION?
Recent refusals based on FDA guidance demonstrate
the landscape continues to shift
IS THE USE LAWFUL?
Examiners look to internal guidance for updates, and
sometimes seem to hold applications intentionally
DOES THE APPLICATION HAVE CANNABIS
WORDS?
Consider less obvious examples such as MMJ, KUSH,
HUMBOLDT, and variants like CANNA
CANNABIS EXAMINATION

22. GENERAL
ANY ISSUES HERE?
Applicant may still face an office action to
confirm lawfulness
IC 30: Baked goods and desserts
IC 35: Retail bakery shops
IC 43: Providing a website featuring
information in the field of recipes and cooking

23. MAYBE FOUR
APPROACHE
S

24. STATE FILING
THIS IS BECOMING MORE COMMON IN
STATES PERMITTING CANNABIS MARKS,
SUCH AS CALIFORNIA, COLORADO, OREGON,
AND WASHINGTON
Likely cannot file until actual use in the state
Still need to conduct trademark clearance
Not a substitute for federal registration

25. CLIENT
GUIDANCE:
ETHICAL
ISSUESA BRIEF REVIEW

26. ADVISE
CLIENTS
HOLISTICALLY
Cannabis trademarks are
fraught with potential
ethical issues requiring
proactive engagement
PRE-APPLICATION
Advise as to meaning of bona
fide intent, and as to the
proper role of trademark
registration in the market
APPLICATION
Consider office action
responses carefully and
conduct the due diligence to
be certain of accuracy
LATER FILINGS
Carefully review specimens
and potential edits to 1(b)
applications – especially
regarding lawful use
REGISTRATION MARKING
Especially for the “General”
approach, be certain that
marking aligns properly with
lawful use

27. FINAL
ADVICE ON
CANNABIS CLIENTS
BE COMPREHENSIVE
• STATE REGULATORY
COMPLIANCE
• FINANCE AND TAXATION
• BUSINESS OPERATIONS

28. CANNABIS
RESOURCE
S
WHERE TO LOOK
National Cannabis Bar Association
https://www.canbar.org
Daily Update: Word on the Tree Newsletter
https://wordonthetree.com
Marijuana Moment
https://www.marijuanamoment.net
National Cannabis Industry Association
https://thecannabisindustry.org
DEA/CSA Updates
https://www.deadiversion.usdoj.gov/schedules/marijuana/index.html
FDA Updates
https://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm

29. VISIT
CREEDON
PLLCWWW.CREEDONPLLC.COM
2595 Dallas Parkway, Suite 420
Frisco, Texas 75034
972.850.6864
contact@creedonpllc.com

30. JAMES CREEDON — CREEDON PLLC