IP Branding Rights for the Cannabis Businesses Industry

The United States is a Federation, which means that our States have a certain degree of independent authority. Many states have legalized cannabis for medicinal or recreational use, but the U.S. Government’s continues to view marijuana as an illegal substance. This creates distinct and challenging problems for the cannabis industry.

          One area of concern is branding rights for cannabis businesses. Brands play a crucial role in commerce: brands act as a source identifier and evoke a perception of quality or reliability; they stimulate consumers’ imagination to create an association between the product image, the product and the consumer; and, at their highest level, they can imbue the branded product with a kind of caché which elevates the branded product against available substitutes. Brand rights are the key to the competitive advantage enjoyed by many successful products.

          The traditional legal protection for brands is trademarks and the best way to protect a trademark is to use it in commerce and obtain a U.S. Trademark Registration. However, U.S. registration is not available to those who violate the U.S. Controlled Substance Act by growing, processing, distributing, selling, or transporting marijuana. It is also a violation to transport or sell “drug paraphernalia” which is any equipment, product, or material which is primarily intended for the manufacture, concealing, producing, processing, preparing, injecting, ingesting or inhaling any controlled substance. At first blush, then, cannabis businesses are cut-off from the most effective means of trademark protection. But there are other options:

  • It has been suggested that cannabis businesses may deal in and register for trademark protection for closely related products that do not violate the CSA. For example, a company may not be able to obtain a registration for oils infused with marijuana essence, but infusions for other herbal essences, such as thyme or mint, are registrable. If a competing cannabis company infringes the mark in the marijuana field, there should be a good argument that the infringing use is “related” and likely to cause confusion in the marketplace. Of course, most cannabis companies want to focus on cannabis, not other products.
  • Another traditional “work around” is to obtain a state registration for the mark for cannabis-related products. If cannabis is legal under state law, then the registration authority in that state should accept the application for registration. State registrations do not endow the same rights as U.S. registrations, but they are better than nothing.
  • It is worth considering a registration with the U.S. Copyright Office for the logo as a visual artwork. To qualify for registration, the logo must meet the minimum creativity test. But if the logo is more than letter characters and standard shapes, it should meet the minimum creativity test and qualify for copyright registration. Although copyrights are not necessarily designed to protect uses in commerce that are likely to confused by the consuming public, they do protect against copying and can provide the registrant with a very effective and cost-effective hammer in the right kind of case.

Applying its expertise in business law, distribution law, regulatory law, and intellectual property law, Kennyhertz Perry has developed sophisticated approaches to advising cannabis businesses through the complexities of our dual federal/state legal system so that you can run your business effectively, creatively and legally while maximizing opportunity.

About Kennyhertz Perry’s Intellectual Property Practice Group

Kennyhertz Perry works with a wide range of creative clients to assure that they have the freedom to create while protecting their hard-earned creative property in a modern and fast-moving world. We help our clients understand how the law aligns with their creative process and provide practical advice as to how they can accelerate and leverage their creative output.

Arthur Chaykin is head of Kennyhertz Perry’s Intellectual Property practice. He was formerly a Vice-President of Law at the Sprint Corporation where he served as, in succession, their chief litigator, the head of the business law department, and Vice President of the first legal department at Sprint supporting marketing and sales in all areas of Sprint’s business: international, wireless, wireline, local and long-distance services. At Sprint, he also served as the head lawyer for Sprint Ethics and Compliance program. He has since served as General Counsel to a major manufacturer and distributor of automotive lifting equipment and automotive accessories and has represented numerous clients on trademark matters, copyright cases, trade secrets disputes, food safety regulatory issues, and consumer product safety issues. has over 35 years of legal experience handling trademark, patent, copyright, and trade secret litigation and arbitration.

About Kennyhertz Perry’s Medical Marijuana Practice Group

Kennyhertz Perry advises clients on a wide range of medical marijuana business formation, compliance, and regulatory matters.  Kennyhertz Perry has broad experience assisting clients with business formation and compliance in highly-regulated industries. Kennyhertz Perry partner Braden Perry spent time as a Senior Trial Attorney with the Commodity Futures Trading Commission, and is well equipped to assist with the banking and other financial issues related to the medical marijuana industry. 

Kennyhertz Perry partner John Kennyhertz is former in-house counsel at a private equity firm, and has structured transactions for very small and very large clients alike. He has substantial experience in highly-regulated industries such as online lending, and industries with rapidly-evolving regulations, such as cryptocurrency. He provides medical marijuana operational and compliance counseling, and offers advice on appropriate modifications of transaction structure and documentation.

Kennyhertz Perry attorney Jon Dedon previously worked in the complex litigation division of an AmLaw 100 law firm. Currently, he advises clients on medical marijuana regulatory and corporate structural matters. His contacts with executives in marijuana businesses in Washington and California prove valuable when advising clients regarding medical marijuana in Missouri. 

Clients also benefit from Kennyhertz Perry’s experience in related areas of law, such as litigation, banking, securities, insurance, and its regular practice before the Missouri administrative agencies and courts. Medical marijuana clients choose Kennyhertz Perry because the firm’s lawyers tailor their advice to the unique issues presented by each matter they handle.

To learn more about Kennyhertz Perry, LLC, please visit kennyhertzperry.com.

*The choice of a lawyer is an important decision and should not be based solely upon advertisements.