Things are about to get a little easier for marijuana companies looking to protect their brands in California, where obtaining a state trademark for cannabis goods and services has not been possible, to date. Beginning January 1, 2018, however, all of that changes. Customers may register cannabis-related trademarks or service marks with the California Secretary of State’s Office, so long as the following requirements are met:
- The mark is lawfully in use in commerce within California; and
- The specification matches the classification of goods and services adopted by the United States Patent and Trademark Office.
The Secretary of State’s Office has reiterated that they will only accept applications insofar as the goods and/or services in question fit within an existing classification code from the USPTO’s Identification of Goods and Services Manual. Therefore, it will be easy to register for things that fit squarely within the USPTO specifications, like retail services. Cannabis goods could be more problematic, although we have already begun to develop strategies to protect these as well.
The other key to obtaining a California state trademark registration is that you must be making lawful use of the mark in California state commerce at the time of your application. This means that you must be licensed by the state to provide the goods and services for which you are seeking protection, and you must have made your first sale of those goods or services as well. Unlike the USPTO and some states that allow for trademark “reservations,” California does not have an intent-to-use trademark application, and so you must make use of your mark prior to obtaining protection. In that sense, it’s a race.
We have received a lot of inquiries from clients interested in applying for trademarks on January 1st, but few will actually be eligible on day one. On this point, it is important to note that if you file a trademark application before you’ve made use of your mark, that application could be subject to cancellation down the line. It would also be unhelpful in the event you end up in trademark litigation. The flip side here is that “squatters” who plan to register illegitimate marks on January 1st will fail, or will be open to cancellation without any bona fide use.
When combined with federal trademark registrations for ancillary goods and services, this development in California state trademark policy will be key in bolstering brand protection for licensed cannabis businesses. We are glad to see California finally join Oregon, Washington and other cannabis program states that allow entrepreneurs to protect their valuable intellectual property through registered trademarks.