At a recent Rocky Mountain Intellectual Property & Technology Institute, a session discussed updates on the commercialization of marijuana and potential availability of marijuana trademarks. Most trademark practitioners already knew that applications for federal registration of marijuana dispensaries or THC-containing products themselves will be rejected, but that protection is available on a state level, or on a federal level for peripheral products (T-shirts, oils or whatnot including the dispensary’s logo). I learned that day that the COLORADO RETAIL MARIJUANA CODE actually addresses trademarks, too! In an attempt to prevent consumers from being confused about whether they are consuming products that contain marijuana or not, Colorado Rev. Stat. Section 12-43.4-404 (e) provides that:
A retail marijuana products manufacturer shall not: (I) Add any marijuana to a food product where the manufacturer of the food product holds a trademark to the food product’s name; except that a manufacturer may use a trademarked food product if the manufacturer uses the product as a component or as part of a recipe and where the marijuana product manufacturer does not state or advertise to the consumer that the final retail marijuana product contains a trademarked food product; (II) Intentionally or knowingly label or package a retail marijuana product in a manner that would cause a reasonable consumer confusion as to whether the retail marijuana product was a trademarked food product; or (III) Label or package a product in a manner that violates any federal trademark law or regulation. C.R.S. 12-43.4-404
Given the current environment supporting decriminalization of cannabis, I believe it may now be possible to obtain marijuana trademarks to protect the names of cannabis companies and their unique brands. Biden has mentioned the possibility of marijuana law reform. Together with the As a trademark attorney, one of the common hurdles I help clients navigate is geographic descriptiveness. It’s an area that often surprises many business owners who are enthusiastic about incorporating their location into their brand name. Using a company name that indicates your location and services will certainly help with search engine optimization (SEO) results, which may initially help more clients find you. Unfortunately, terms that describe geographic locations can be problematic when it comes to securing trademark protection.
What is Geographic Descriptiveness?
Geographic descriptiveness occurs when a term or phrase in a trademark directly references a geographic location, such as a city, state, or region. A geographic trademark, tor example, would be “Boulder Animal Clinic.” The USPTO would see this trademark as geographically descriptive because it includes “Boulder,” which identifies a specific location, as well as descriptive of the veterinary services (“Animal Clinic”). If a trademark is deemed geographically descriptive, it’s often difficult, if not impossible, to obtain a federal registration for it, especially if the term is not unique or distinctive enough. Without a Federal registration, you may encounter challenges when enforcing your trademark against competitors who adopt very similar names or domains. It will also be difficult to list your company name as a business asset if a variation is used by one or more competitors in your local area.
Why Does the U.S. Patent and Trademark Office (USPTO) Reject Geographic Trademarks?
The USPTO’s primary goal is to prevent businesses from “taking out of circulation” common terms that are already widely used. If your trademark is geographically descriptive, it may be considered a term that others should be able to use to describe their own services or goods related to that geographic area. Granting trademark protection to such geographic trademarks would create monopolies over common geographic names, which goes against public policy.
Can You Still Register Geographical Trademarks?
In some cases, businesses can overcome the geographic descriptiveness hurdle, but it’s challenging. The USPTO might allow registration of a geographic trademarks if you can demonstrate that your brand name has acquired “secondary meaning,” meaning that consumers associate the term with your specific business rather than just the geographic location. For example, we have helped secure trademark protection for “Meridian Dental” and “Lookout Recreation,” which refer to smaller cities in Colorado. However, these are exceptions rather than the rule.
How to Protect Your Brand
If your business name or brand includes a geographic term, it’s crucial to understand the potential limitations. If you’re using a city or state name as part of your brand, I always encourage clients to consider adding a unique or distinctive term to their name. For instance, instead of “Boulder Animal Clinic,” consider incorporating another term that makes the name stand out from others in the market. This could be a made-up word, a brand name, or a creative twist that adds distinctiveness.
Additionally, a geographically descriptive name might be enforceable in some cases, but the chances of enforcing your rights against competitors in the future are slim. For broader protection, a more unique name will give you stronger rights and a more enforceable trademark.
Need Help with Your Trademark?
If you’re uncertain about the availability or enforceability of your proposed brand name, our firm would be happy to help you determine whether it’s eligible for federal registration. I’ve helped many clients through this process and have guided them toward names that are both legally protectable and marketable.
Shifting to a more distinctive name not only boosts your chances of registering a trademark but also strengthens your brand in the long run. If you need guidance, we can conduct a thorough trademark search to ensure your name is free of conflicts, providing you with peace of mind as you build your business.
Your brand is one of your most valuable assets—let’s make sure it’s both protected and positioned for success.8-9 month wait new trademark applications typically undergo before examination, this may be the very best time to apply for protection of marijuana related trademarks!
Photo by Matthew Brodeur on Unsplash
