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By J.D. Houvener
Patent Attorney and Founder

Hey everybody, I’m J.D. Houvener, your host of the Bold Today’s Show, where you, the inventor, entrepreneur, business owner, get your daily inspiration so you can make the world a better place. All right, we talked about trademark law before on this show, and so I’m hoping a lot of you have a baseline level of knowledge. This week we’re covering cannabis and the industry that’s taking a lot of us by storm. We’re seeing stores pop up all over the place, and there’s a lot of money changing hands in an industry so new that there’s plenty of opportunity for new players.

So, if you’re in this space where you’ve got a business that might be tangentially related, listen up because this is going to impact you. Trademark law governs how brands work and how customers perceive them. In order to get an exclusive right to have your name or logo, you’ve got to have a distinctive mark. You’ve got to be using it in interstate commerce, and you have to be able to show that it’s one-of-a-kind. Trademark law requires that you be distinctive, right? One-of-a-kind, the only name for that specific industry. You can have the same name for multiple industries like there’s McDonald’s hamburgers and McDonald’s furniture. Those are two totally different industries, but you’ve got to be one-of-a-kind in your class. It’s called classification.

Now, to bring this back to cannabis law, the underlying problem is that at a federal level, cannabis, the marijuana plant, is a controlled substance and it’s illegal. The understanding that each state has its own laws is fine, but the problem comes into demonstrating to the trademark office, a federal body, that you’re in business interstate, right? Between states, that’s when it becomes a problem. As soon as you cross state lines with that controlled substance, there’s a federal law that’s being violated. So, the trademark law office will never issue a registered trademark as the laws are written right now for cannabis law for that classification.

Now, certainly, you can register marks for other industries like shirts or paraphernalia or certain items that are sort of related to the marijuana and cannabis culture. But for the plant itself, you’re not going to be able to get your own trademark in that. Some other alternatives you can do is register at the state level within your state if it’s become legal. Certainly, it’s going to be allowed to seek a state trademark as opposed to the federal trademark. So, a state trademark, of course, only gives you rights in that state, but it certainly is better than nothing.

The third option is to just begin doing business using that name and gain common-law privileges. Common law is going to allow you the geographic domain of where you’re actually serving customers. So, if it’s just in one city, that’s the only ability you’re going to have to exclude anyone else from using that name is where you’ve been operating and where your customers are coming from.

I hope this has been insightful for those interested in trademarks and intellectual property. Encourage you to go to our website at boldIP.com. You can also give us a call.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/