Stacks of documents in U.S. Patent Office, Washington, D.C. / Photo: Library of Congress
Bruce Kennedy ~ WeedWorthy ~
 
While the legal cannabis sector still faces federal obstacles, it nonetheless has to deal with the same challenges that other commercial sectors face; including patent and trademark issues.
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As the legal marijuana sector evolves and grows, parts of the industry are struggling to differentiate their brands and products.
 
One of the first things people with potential marijuana products should know, says Dawn Newton, is that “you can patent as much material that relates to cannabis as you want; you just can’t trademark it yet.”
 
Newton is a partner at Donahue Fitzgerald, a Bay Area law firm that specializes in intellectual property issues.  And she says a lot of would-be inventors get confused by the difference between trademarks and patents.  The big difference, she says, is that trademarks in the United States require use.
 
“So you have to be able to allege that you have actually used the trademark for the goods and services,” she notes.  “Since use of cannabis is illegal at the federal level, the U.S. Patent and Trademark Office (USPTO) simply will not allow you to get that trademark. “
 
But a patent, she says is different. 
 
“A patent is just an invention. They don’t require you to have actually used it, or even to have built the thing that you have invented. You just have to describe how it works. So the patent side of the Patent and Trademark Office is more than happy to grant all the patents you want, and the Trademark Office has absolutely slammed the door. “
 
There are a lot of ancillary businesses in the legal marijuana industry, and Newton says those businesses need to look at the federal trademark register, to ensure their product names aren’t already being used by someone else.
 
If and when national legalization of cannabis takes place, Newton predicts that change is going to create a lot of people “running head-on into each other,” as their previously isolated markets begin to overlap.
 
But she notes this isn’t the first time something like this has happened. The rise of the internet, she remembers, also brought about people scrambling to secure their brands.
 
“Suddenly a business, a restaurant in Florida, was competing head-to-head with a restaurant in California for the same domain name,” she says.  “We had the same, sudden crash of businesses into one another, who had never been competitive with one another before that. “
 
Newton recommends new cannabis businesses do their research before they begin branding and marketing their products.  Along with clearing their trademark on a national level, to make sure no one else is using it, she recommends staying way from names, terms and phrases that are common across the industry.
 
“Don’t use ‘420,’ don’t use ‘Mary Jane,’ don’t use ‘Canna’ and then just a generic for what your business is if you can avoid it,” she adds. “Some people are probably going to do exactly that and they will still be wildly successful, because they have an absolutely gangbusters product. But not everybody is so lucky, and someone might come to the market late, not have a gangbusters product and really suffer when they could otherwise have distinguished themselves.”
 
The good thing is, these hassles over patents and trademarks aren’t a new challenge.
 
“It’s just new for this industry,” Newton continues, “and certainly something that, having seen it before, (we) want to be able to tell our clients, ‘here are some best practices… to prepare yourself for this when it happens.’”
 
 
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