By, Kohel Haver
A couple goes into a bar. She orders a Stoli Martini, he orders an Old Fashioned with Bulleit. The bartender pours Russian vodka and bourbon from Kentucky. Not a remarkable transaction for adults. US Trademark law assures the couple that they are getting the products they ask for, the quality and taste they have come to demand and expect. The FDA ensures the product is free from contaminates. Consumer protection is an unwritten promise included with a federal trademark.
Except for the fact you probably won’t be able to consume the purchase on the premises, under the current Oregon law the same couple could not step into a Cannabis Cafe (true in Washington and Colorado as well) and order product by brand name with that federal guaranty because the FDA and trademark office can’t get involved. You might wonder why consumer protections go out the window when we are talking about marijuana, which we have identified as medicine.
A few facts; cannabis (marijuana) is a genus of flowering plants that includes three different species, Cannabis sativa (best source of THC), Cannabis indica and Cannabis ruderalis.
In 1970 under 21 U.S. Code § 812 – a schedule of controlled substances was adopted and which identifies marihuana. As a Schedule I controlled substance, which includes substances, such as heroin, marijuana is identified with the following qualities; (A) the drug or other substance has a high potential for abuse, (B) the drug or other substance has no currently accepted medical use in treatment in the United States, (C) there is a lack of accepted safety for use of the drug or other substance under medical supervision.
In the almost 45 year since this law was put in place there have been changes in science, in public opinion and in the law. Almost half the states have found and passed laws based on scientific and medically sound research, in direct conflict with the qualifications that are associated with Schedule I substances. Today there are many accepted medial uses. The last qualifying statement is in part as a result of the failure of the federal government to help define accepted standard for the safe production and use of the substance. The effect of being identified on the list as controlled substances prohibits the use of federal funds for the creation of the scientific study to prove it otherwise. As Doc Daneeka said to Yossarian – “Catch 22”.
There is medical veracity for the use of marihuana; nineteen of the states have approved its use as medicine. As of this writing four states and DC have approved adult “recreational” use to be regulated similarly to alcohol. But there is still a prohibition to federal involvement in this soon to be commonly available consumer product. Federally insured banks, the Food and Drug Administration and the Patent and Trademark Office are among many agencies on which we rely for the penumbra of federal protection that cannot get involved with marijuana.
What does this mean to the consumer? Not only does this make it difficult for a purveyor of these new products for human consumption with the challenge of developing their brand without the support that a federal protection can provide it also denied the consumer of the value of those same agencies that we as Americans had assumed are there for products we put in our bodies. The FDA (food and drug administration) can not set federal standards and requirements for the active chemical properties in cannabis products. There are no standards for what is organic, what if any pesticides or fertilizers were used in the growth of the cannabis, or quality controls to deal with common molds and fungi, if any. What is the source plant strain and species of the cannabis plant? Who grew it and where was it grown? Is it a clone (cutting) from a mother plant or was it grown on a hillside in the open air in Talent, Oregon? All of these considerations the grower, the farm, the species and strain are commonly mediated by trademark. Branding is good for business and good for the consumer. Trademarks help the consumer make informed decision about the good the consumer buys.
Branding (use of trademarks) is good for the consumer and good for the manufacturer and seller. A branded trademark of a product assures the consumer of the known quality of goods from a particular purveyor and in the case of medicine it also offers the consumer assurance of the expected quality and taste and in the further case of cannabis and cannabinoid, the medicinal effect. If I have a headache in Kansas, Canada or Kuwait a tablet of 325 mg of pure aspirin should have the same effect. If it’s an Excedrin Aspirin I can be assured of the quality of the product, that it is coated, will go down easy, and will ease the pain. Shouldn’t the consumer be entitled to have the same expectation of 10 grams of 100% organic mountain raised Cherry Kush?
The fact that the federal law has not kept up with the state laws has made this a very complex issue. Technically the sale, possession and use of a controlled substance violates federal law. It is not enforced because the US Attorney General’s office wrote what is known as the “Cole Memo” stating that the federal laws would not be enforced – but they could be. Further complicating the issues is that different states have different regulations regarding the use and possession of marijuana. So what is a reasonable strategy when navigating this “goat rodeo” (aka MCF)?
As a trademark and branding law firm we advise our clients to always keep they eye on the brand; that the brand, while associated with the product in the consumer’s mind, can be separated from the physical product. It’s a lofty concept but additional value of a brand is that unlike the product itself a “brand” can cross state lines and international borders. A brand that is associated with the essential qualities of the products of that brand. Would a refreshing Canada Dry Ginger Ale taste good around now?
What’s in that name? The words, image, logo – the brand is what we associate with the
A few additional thoughts about trademark that one should keep in mind. In additional to relying on the common law rule that using a brand name gives rights to owning the name, there are things a producer of these products can do. There is value in a state registration.
Under the US law trademark rights arise from using the mark in commerce. While it’s not entirely clear how common law rights (rights arising solely from use in commerce) will be enforceable when the underlying product is prohibited by federal law, establishing this common law right is a good first step.
Federal registration is currently prohibited for cannabis identified products but that is not the case for state law where the states have approved the sale of marijuana based products. States have accepted registrations for trademarks to be used on products that are legal to be sold within the state borders.
If a name is used as a trademark for goods that are not cannabis related, t-shirts, cookies, candies, juices, elixirs, salves, etc. It is, and has been, legal to register a trademark in those goods so long as the basic requirements for registration have been made. If sales of the trademarked items are made interstate, there should be zero connection or associate of any type with cannabis.
If a Cannabis business does manage to register its trademarks, it must be vigilant enforcing their trademark rights or they risk losing them. This means tracking down infringers and possibly taking legal action against them. A company will only be able to enforce the trademark for legal uses.
So in light of the above we advise the following. Take you brand seriously, it matters now more than ever because your product and reputation can reach far beyond your sales staff. Other businesses and individuals will want more consumer protection than the old school
“its great stuff” from your “connection”. As in all trademarks, use a name unique to your business, growers, product developers, retail establishments and dispensaries.
- Do a thorough search and avoid the obvious common names and the words cannabis, marijuana, weed, etc.
- All of the common rules of business branding apply.
- Register at the state level. Some registration is better than relying on common law first-use protection.
- If you are trying to get USPTO protection employ a professional so you do not lose time with basic mistakes.
- The federal trademark office is employing better tools to seek out that connection to social media. If you are posting photos of your awesome buds online they are likely to find them.