Trademark Clearance in the Legal Cannabis Industry: Frequently Asked Questions for IP Professionals

In many countries, the legal cannabis market is growing significantly as laws and attitudes to the plant change. Trademark data reflects this marketization, with international trademark activity increasing overall by 1,478% over the last five years. This increase has been most pronounced in maturing markets such as the U.S. and Canada. Respectively, the USTPO and the CIPO received 431% and 848% more applications for cannabis-related goods and services in 2020 than in 2015.

While all trademark candidates face similar challenges at the development and registration stage, there are some unique issues when developing new brands in the legal cannabis industry in the United States and Canada for trademark professionals.

With these challenges in mind, I moderated a virtual panel of experts earlier this month to discuss the effective management of trademarks in the cannabis industry with Nicole Katsin of Evoke Law, PC, Eric Maiers of Greenberg Traurig, in the U.S., and Gabriel St-Laurent of ROBIC in Canada. My colleague Anna Arakelyan also added her thoughts to the discussion. Anna is Manager of Research Operations in the U.S. and a Cannabis Clearance Product expert.

The panel kindly took questions from attendees, the responses to which are summarized below. If you have any questions that you would like answered please share them by email to [email protected]

FAQ — Challenges of Trademark Clearance in the Legal Cannabis Industry

1. With a significant number of states legalizing cannabis, it can be speculated the U.S. will follow Canada in legalizing cannabis on a federal level in the next few years. How do you think federal registration will affect cannabis clearance and applications in the USPTO in general?

Some of the panel believe that although federal legalization may make trademark registration a little easier, it is too early to be sure. For more surety, there needs to be clarity on how the USPTO would treat cannabis products (whether separate from other Nice Class products or not), where it would be sold, and other practical matters.

One crucial point raised was how far U.S. legalization might affect state trademark registrations when filing for a federal registration. The feeling was that federal changes would require much research into prior rights on a state-by-state level.

2. Do companies or individuals attempt to register trademarks with names of cannabis strains or are strains considered generic terms and are therefore unable to be trademarked?

The panel felt that this question would likely be resolved by national differences in legislation and trademark regimes. For more mature legal cannabis markets where companies are producing entirely new strains, it was suggested that future trademarking strain names may be possible as part of a broader IP strategy. If companies were able to achieve a patent on an entirely new product, this may support the registration of accompanying trademarks.

It was suggested that one route could be to follow a strategy from the pharmaceutical industry and consider the possibility of creating two strain names, one branded and one generic.

3. Will Corsearch eventually provide users with a dispensary database for the U.S. and/or Canada, that we could use for preliminary screenings?

Corsearch believes in the continuous improvement of our products. When a relevant dispensary database becomes available, we will work to add it to the collection of resources we include in our Cannabis Industry Search. If such a database were to become available for use online, we will also examine the possibility of licensing and bringing that database to our Screening platform.

4. When clearing a mark that will include THC, would you recommend just one search for all relevant classes of goods, such as edibles, creams, tinctures, etc.?

Corsearch’s Anna Arakelyan answered, “We don’t restrict by Class when searching for cannabis, as much as possible. We look at cannabis products, listing cannabis goods outside of any Class regardless of what product you have requested, just to make sure that we are not missing an exact or very similar variation of the requested mark. We do not restrict by Class even if a client requests a Class or their Search order includes specific Classes — we do look at a much broader landscape when providing our Search report results. Even if the product is an “edible”, we look beyond those Classes to include, Class 41 marks, as there are a significant number of trademarks out there for informational services too.”

5. When placing the search, would the search then just be for cannabis?

Again, Anna Arakelyan said, “When placing a Search request, you would want to indicate what product and/or market you are going to be applying for. So, if it is cannabis–infused confectionery or topicals, we would want to know that. No, the search would not just be cannabis, it would be for whatever product the cannabis is used for, cannabis, and then a blanket overview of products even outside of the cannabis market.”

6. Is a separate Class of goods for cannabis likely?

The panel reported that there has been industry discussion of this issue, but that wholesale changes may raise a problem for the harmonization of marks. As a new cannabis-specific Class would require harmonization across multiple jurisdictions, this might prove to be problematic. It was suggested though that INTA has committees looking into this question, but that a resolution may not be immediate.

7. Will Weedmaps data be included in Corsearch’s offering?

Anna Arakelyan said, “We do search Weedmaps, but making that data available for Screening would be a different step as it would involve licensing the information from the provider. But, if you do order a Cannabis Industry Search, that is something that would be covered in the search as well. We have a team of Analysts working in this area, so, if they find a new source or term when they are doing their searches, we amend our search aspects accordingly. We ask customers to notify us if they have any special requests or special databases they would like included.

The Corsearch Cannabis Industry Search

The regulations regarding the production, distribution, and consumption of cannabis currently vary between each state in the U.S. This can lead to challenges when it comes to trademark clearance needs. Trademark attorneys and brands must optimize their clearance strategies to deliver comprehensive results quickly and affordably, all while considering local state registrations and common law.

That is why Corsearch developed its U.S. and Canadian Cannabis Industry Search solutions, which are conducted by our in-house expert cannabis Search Analysts. The scope of each Cannabis Industry Search has the following features:

• A broad scope of goods and services associated with cannabidiol, cannabis, CBD, and hemp products.
• Searches can include, but are not limited to, smoking articles (vape/e-cigarettes*), topicals, and edibles.
• Identification of possible conflicts with strains and dispensaries.
• Checks on existing medical and recreational brands using leading cannabis-industry sources.
• Searches can include trademarks registered at the state level where cannabis is deemed by the state to be legal for medical and/or for recreational use.

*new feature

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