“The state trademark registration is the best way since the federal option isn’t available.”
At the state level, though, there’s also the process of establishing a trademark classification code for a product that isn’t yet legal to sell, according to Aaron Pelley, a partner in the Seattle office of Harris Sliwoski.
When the sale of recreational cannabis becomes legal in Minnesota next year, retailers such as dispensaries will likely be working to get licenses for their stores, as a comprehensive licensing system will still be under development.
They aren’t the only ones who might be scrambling. Cannabis manufacturers have a variety of issues related to trademarks and patents that they’ll have to consider as the new year draws near.
One involves the very nature of cannabis laws. The federal Controlled Substances Act and similar laws put a strict limit on getting federal trademark protection for cannabis, according to Tim Sitzmann, a shareholder with Winthrop & Weinstine in Minneapolis.
“The interplay between state and federal law is one of the biggest concerns when it comes to trademarks,” said Sitzmann. “A federal trademark registration is usually the best way to have protection for your trademark, but cannabis is still illegal under federal law. You can’t get a federal registration for a product that’s unlawful. There are also federal laws covering products that might not be illegal but are still derived from hemp.
“The state trademark registration is the best way since the federal option isn’t available.”
At the state level, though, there’s also the process of establishing a trademark classification code for a product that isn’t yet legal to sell, according to Aaron Pelley, a partner in the Seattle office of Harris Sliwoski.
“Legalization happens, but the secretary of state hasn’t quite caught up with the issue when it comes to state trademarks,” said Pelley, who was in St. Paul recently to present on the topic at the Cannacon convention.
Since the United States Patent and Trademark Office doesn’t allow manufacturers to protect their brand with a federal trademark, Pelley agrees that manufacturers should apply for trademark protection at the state level before anything else. For one thing, a Minnesota application is likely to be processed by the state within 60 days, as opposed to at least six months with the USPTO.
“There’s really no other protection to get,” he said. “It’s a simpler process — $70 application fee in Minnesota, and a one-page application. It’s simple and straightforward compared to going through the USPTO, which is much more expensive and time-consuming. And you at least have the presumption of ownership of your state trademark.”
Minnesota uses the same trademark classification numbers for goods and services (1 through 45) as the USPTO does.
Read more https://wislawjournal.com/2024/08/26/cannabis-trademarks-elusive-until-legal-issues-are-sorted-out/
