Welcome to 2018, the year everyone and their uncle wants to know how they can cash in on California’s new marijuana laws. In the past few months, I have received many more inquiries from potential clients seeking legal advice in this area than I anticipated. And, while the recent news from the Attorney General’s office rescinding the Obama era hands-off approach has caused a stir, there are other federal laws that may have more impact in the short term.
One issue many new pot businesses will have to confront is what to name their new business and, “can I get trademark protection for my marijuana business?” These are typically easy questions in any other business, but not so for marijuana, where federal law prohibits registration of trademarks relating to goods that are not legal under federal law.
To make matters worse, California has so far decided to follow the federal example and refuse to register state (also known as “common law”) trademarks for marijuana businesses. But there are things you can and should do. After all, a business trademark is one of the most valuable assets a business can have. Without an effective trademark, consumers have no way of finding your products and becoming repeat customers. So branding your weed business is essential. What to do?
While there are no perfect solutions to this dilemma (other than passing legislation that allows for it) there are a few work-arounds.
Registering marks in “non-threatening” classes
Assuming that your business conducts advertising, business management and similar functions, you can register your trademark for such uses. Additionally, services (not goods) involving medical services as well as beauty care services can be registered. Care must be taken to avoid possession or implication of possession of marijuana and related goods.
Registering marks for ancillary and/or complimentary products
You can register a trademark for legal products that compliment your marijuana products or help market them. For example pipes and smoking paraphernalia or tee shirts and hats that display your mark. For the time being, you can register for “smoking pipes” without describing what would be smoked. But be careful to avoid only putting the mark on the front of a shirt as this would constitute a decorative non-trademark use. Rather, place the mark on labels and hangtags in addition to the front of the shirt.
Use Copyrights and trade secrets
There are no similar restriction in copyright law which protects creative expressions of ideas such as illustrations, advertising copy and website content. This means that your creative content relating to your marijuana business can be protected through copyright laws. Additionally, any trade secrets relating to the manufacturing process or production of goods may be protectable under the Uniform Trade Secrets Act.
These are just a few examples of how you can still protect your business interests in this new and developing area. Each business must be careful in selecting an intellectual property strategy that is tailored to its long term plans, and unfortunately there is no “one size fits all” program. Of course, there are many other legal issues that new business owners must be aware of before launching into this budding new world. The Niknia Law Firm can help guide you in the right directions. Feel free to give us a call for a consultation.