Obtaining a federal trademark in the Cannabis Industry is tricky. The United States Patent and Trademark Office (USPTO) has made it clear that you cannot obtain federal trademark registration for goods or services that are not lawful pursuant to federal law.

One on hand there is countless states or municipalities that are moving to drastically reduce the number of dispensaries or collectives that are legally allowed to operate; whereas, on the other hand, a sea of competition can make a reputable operator all but invisible. Many states are beginning to require brand names and chemical testing, in an effort to track various dispensary strains and hold growers and consumers more accountable.

The Cannabis Legal Group handles all aspects of trademark registration, trademark infringement, and trademark litigation in order to help our clients ensure state and nationwide protection on their trademark and brand assets. We have the skills to overcome the most difficult trademark issues, and we have the judgment to guide clients in selecting more defensible marks when appropriate. Trademark Services that The Cannabis Legal Group can provide for you include:

 

Trademark Registration:

 
Federal Registration
Depending on the goods and services that a given cannabis company will offer, there are a number of different strategies and approaches that the attorneys at The Cannabis Legal Group will offer to obtain our clients a federal trademark registration.

However, if obtaining federal protection is not feasible at the time due to the current federal position of cannabis as a schedule I drug, we offer alternative methods to protecting your company’s assets through state trademark protection.
 
State Registration
Should your cannabis business apply for a state trademark? In short, the answer is YES!

In January 2018, the California Secretary of State’s office announced that cannabis businesses could begin applying for state trademark registrations. This has been great news for cannabis companies because it has legitimized the industry and the businesses within it.

While state trademarks do not offer the same broad protection that federal trademarks do, when it comes to cannabis companies, this may be the only and best option for some. It is less difficult and cheaper to register for a state trademark, regardless of your industry, than it is to register for a federal trademark. However, the protections offered by a state trademark are much more limited.

A state trademark, however, will protect your brand as long as your business operates within the state that it is registered with and as long as federal registration doesn’t trump your state registration. Until federal trademark protection is available to all businesses within the cannabis industry, state registration may be the only option for your cannabis business, so use it to your advantage as part of your long-term brand-building and intellectual property strategy!

 

Contact us today to see what your best strategy for intangible asset protection is!

 

Trademark Searching:

Considering a new trademark? Our trademark registrability searches provide clients with the confidence of knowing whether a proposed mark is available. Depending on the trademark search service that you need, most search results typically are available within 24 hours.
 
Basic U.S. Trademark Search:
Often the first step in acquiring trademark protection is a trademark search. Includes all fees for the search and a legal memorandum by a trademark attorney. In a basic search, we spend about an hour searching for similar trademarks to avoid any likelihood of confusion issues and then report the results to you in a two-page memo.
 
Comprehensive U.S. Trademark Search:
This trademark search service includes our professional fees for review of the comprehensive search report and a 5-page Opinion Letter which summarizes the search results and suggests next steps. This is the search performed by Fortune 500 companies and is the most effective means of clearing trademark rights. It is often referred to as doing your “due diligence”.

 

Trademark Office Actions:

Have you received an “office action” email or other communication from the USPTO? If the USPTO has questioned your application or refused to register your mark, we can review your situation and provide a strategy to move forward.

Not all Office Actions are the same. Some represent a denial of your application while others are just a request for clarification or additional information. That being said, an Office Action must be responded to within six months of the date the US Government issues it. Moreover, the US Government will not remind you that the deadline is approaching to file an Office Action response. If you do not respond, your application will simply be abandoned and all of your rights (and filing fee) will be lost.

We can help you respond to any Office Action. Whether it is responding to an administrative request, fixing a technical requirement with the application or appealing a denial of your application, we can help.

 

Trademark Infringement:

With the pervasiveness of the internet, it has become easier than ever to counterfeit items and infringes trademarks over the internet. If you believe your business has been subject to trademark infringement or you have been contacted that you are infringing on someone else’s trademark, contact us today for a complimentary initial consultation!

 

Trademark Litigation:

We prosecute trademark infringement on behalf of clients and also defend clients from trademark infringement lawsuits. If you are in a position where someone is infringing on your trademark rights or has claimed you are infringing on their trademark, please contact us for a complimentary initial consultation.

 

Trademark Enforcement Service Types:

The Cannabis Legal Group offers enforcement services that meet individual client needs.
 
Cease and Desist Letters:
An effective cease and desist letter puts the infringing party on notice of the infringement and lays our the factual and legal basis for the claims. An experienced trademark attorney will do this while keeping in mind the specific and unique facts of each client.

Sometimes that might be a strong, forceful letter meant to make a statement to the infringer. Other times it may be a friendly and understanding notice to a fellow small business owner. The Cannabis Legal Group strives to find the balance that is right for each client.

 
Settlement Negotiations
A cease and desist letter is just the state of the enforcement process. In trademark law, the number one goal is to stop the infringement from occurring, and that might often be on terms that are negotiated by both sides.

For example, it could be as simple as the other side agreeing to stop using a trademark in exchange for your promise not to sue them for past infringement. It could involve a short phase-out period for the potential infringer to sell-off old stock. Having an experienced attorney negotiate settlement terms can effectively provide long term protection for your trademark.

 
Take Down Notices
Online marketplaces account for a large portion of the trademark infringement and counterfeiting that occur in the marketplace today. Many online marketplaces have trademark enforcement protocols for trademark owners to report infringing products. However, in many cases, the online marketplaces are dealing with thousands of these notices a day and an experienced attorney can help you avoid common pitfalls that cause delays and cause lost sales to infringers.

We can help you create a customized enforcement plan for your budget.

 
Trademark Investigation
Sometimes the only way to know more about a potential infringement is to conduct an investigation before taking any action. Our attorneys conduct extensive research using cutting edge technology to learn more about potential infringement and our staff conducts trademark investigations to help make informed decisions regarding trademark enforcement.

 

  • Trademark Trial and Appeal Board Cases: Professional fees to research the issues and prepare and file a Notice of Opposition, Petition to Cancel, or an Answer.
  • Initiating IP Litigation in Federal or State Court:Depending on the status of the matter, the issues, and the anticipated defenses, our IP litigation team will develop the best strategy possible to achieve your desired results.
  • U.S. or International Trademark Applications:Professional fees to prepare and file the Trademark application and basic follow up through registration, including basic communication with the US. Patent and Trademark Office if necessary after filing, status updates, and forwarding of the registration certificate if received.