Cannabis businesses often tell us that registered trade names or domain names afford adequate brand protection. They will say things like, “I registered my trade name with the state, so no one else can use it, right?” This post will will explain what domain names and trade names can do for your busines and delineate between these and registered trademarks. Because there is a big difference.
Registered trademarks provide the utmost level of legal protection for your brand. A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others. The owner of a valid trademark has the right and the ability to prevent others from selling similar goods or services bearing the trademark or one that is confusingly similar. For unique issues surrounding registration of marijuana-related trademarks, see the following:
- Marijuana Trademarks
- Cannabis Advertising Lawsuits: Coming Soon To A Court Near You
- Pot Parody: Not so Funny After All
- Protect Your Cannabis Brand With A Trademark
A domain name is a series of characters used to describe a specific location online – it is a web address. Domain name registration is typically administered by a non-governmental organization. As an extension of your brand, a domain name functions like a trademark in that it can convey goodwill and recognition in the market place. However, domain names differ from trademarks in that they do NOT provide you with any legal protections, nor do they provide you with the exclusive right to use the name. In fact, using a domain name that is the same as or confusingly similar to a registered trademark constitutes trademark infringement, and can open the trademark violator to costly litigation. The fact that domain names are registered on a first-come, first-served basis has fueled the domain name infringement problem, in that so-called “cyber-squatters” have sought to beat out rightful trademark holders in the domain name registration process so as to be able to “hold domain names hostage and demand compensation from the trademark holder.” To repeat, holding a domain name does not afford legal protection or rights akin to those of a registered trademark.
The second common branding misconception we encounter is that registered trade names afford a registrant the exclusive right to use a name. This confusion likely stems from the fact that, like a trademark, a trade name is registered with a government agency. However, the sole function of registering a trade name with the state is to declare the official name under which your cannabis company does business. It is more commonly known as a “doing business as,” or “dba” name, assumed name, or fictitious name. Like a domain name, a registered trade name DOES NOT provide you with legal protection or with the exclusive right to use that name. Additionally, a simple search of your state’s trade name database is not sufficient to clear your name for trademark use. To avoid infringing on someone else’s trademark , it is important to consult with an attorney who can obtain a comprehensive, nationwide search report for your name, and who can issue an opinion that your mark is not the same as or confusingly similar to an already registered mark. Because the flip side to adequately protecting your brand is ensuring that you are not infringing on someone else’s.
The takeaway here is that you cannot rely on domain names or registered trade names for brand protection. The only way to guarantee exclusive, nationwide use of your name, and to provide government protection from infringement, is to obtain federal trademark registration.