One of the most frustrating aspects of operating in the legal cannabis space is that some business aspects that are relatively straightforward in any other industry are made much more complicated by the federal illegality of cannabis. Trademarking is one such area.
Can you trademark a cannabis product? The answer is nuanced and filled with workarounds of varying risks.
Further complicating things is the potential rescheduling of cannabis from a Schedule I drug classification (a distinction it currently shares with LSD and heroin) to Schedule III (like codeine coated Tylenol and other lower-risk substances). In theory, this move by the federal government could make it easier for cannabis brands to apply for trademarks. However, rescheduling is not the same as legalization, and many of the same challenges would remain in the industry. Additionally, as of writing, the rescheduling issue continues to be pushed down the road, and it’s unclear how this DEA vote would go.
This post further examines trademark strategies for cannabis companies and outlines the risk of each one.
Also read: Preventing Cannabis Dispensary Theft: Considerations for Physical and Digital Security
Trademarking cannabis
The benefits of trademarks are clear: When available, trademarking protects cannabis brands, simplifies name dispute resolution, builds loyalty, creates a licensable asset, and enables lawsuits against infringers for greater damages.
Federally
Obtaining a federal trademark for a cannabis product intended for recreational or medical purposes is generally impossible. There are notable exceptions, which we will discuss in more detail below. As long as THC cannabis products remain illegal at the federal level, the United States Patent and Trademark Office (USPTO) will likely continue to deny trademarks.
Some cannabis brands have tried to get around this issue by being intentionally vague in their trademark applications. Other brands register for an ancillary trademark and use the same mark on federally illegal products. Either is a risky move, as the USPTO often sees through these ploys and denies trademarks.
The Farm Bill carveouts
The 2018 Farm Bill made CBD products, that is, hemp-based cannabis with less than 0.3% THC, federally legal.
Can federally legal CBD products be trademarked? Yes, but it is complicated. Dietary products or ingestible products need FDA approval. To date, the FDA has only approved one such product, and the testing cycle took 18 months and cost the manufacturer, Jazz Pharmaceuticals, over $2 million in clinical testing fees.
However, topical and non-ingestible CBD products like lotion do not require FDA approval and are much more likely to be approved for a trademark.
Delta-8 sits at an interesting loophole. Delta-8 is a compound that technically does not have THC Delta-9 in it, but it is still intoxicating (much less so than traditional Delta-9 products). Therefore, under the 2018 Farm Bill, Delta-8 products are federally legal. Many cannabis brands have capitalized on this loophole and successfully landed some federal trademarks. However, the USPTO has also denied some trademarks that explicitly mention Delta-8.
Some states have caught on and have amended state statutes to include Delta-8, Kratom, and other THC derivatives in their definition of “marijuana”. Eight states have banned Delta-8 outright. Delta-8 and cannabis derivative regulations are evolving areas of law with active litigation.
Ancillary products
Ancillary products can get trademarks if they do not “touch the plant”. Things like apparel or educational products can receive a federal trademark. Additionally, products for the consumption of cannabis, such as pipes or rolling papers, can also receive a federal trademark as long as they can arguably be used for tobacco as well.
State trademarks
States with legal medical and/or recreational cannabis markets can offer state-level trademarks. State trademarks do not provide the same level of protection as federal trademarks, but they are a viable option for many single- and multi-state operators. However, MSOs must apply for trademarks in each state they operate in, or risk getting into regional trademark disputes.
Common law
Common law refers to a brand’s ability to show that they were the first to use a trademarked image or logo in commerce. Cannabis brands can (and should) establish common law protection, but they may need to go to extra lengths to prove they were the first to use the mark.
Intent to Use
Filing for “Intent to Use” (ITU) a trademark at the federal level is another strategy a national cannabis brand might use to “stake a claim” on a trademark. However, this is a somewhat risky strategy. ITU means the brand does not have to use a trademark within 6 months (extendable up to 3 years).
The logic is that if the federal government reschedules cannabis, filing for a trademark with an ITU on the books will presumably be much easier. However, should a brand time out of the three-year timeline, and cannabis remain federally illegal, they will have to start again with their application, wasting time and resources.
To learn more about potential changes in cannabis regulations, read our blog: Surviving the Cannabis Industry: Challenges for Dispensaries in 2025 and Beyond
Other types of protection
Beyond federal and state trademark protection, a variety of other intellectual property safeguards are available for hemp and cannabis businesses:
- Patent Protection: Patents can protect a range of innovations, from new cannabis plant strains to methods for cannabis hydration and lighting.
- Trade Secrets: Certain business assets—such as formulas, processes, or methods that are not widely known and provide a competitive advantage—can be protected as trade secrets. However, businesses must actively take steps to safeguard these secrets, or they risk losing their protection. Also, trade secrets are generally enforced at the state level, not federally.
- Copyrights: Copyrights can secure a company’s creative output, including logos (artwork), written content, photographs, and software. Copyright is technically active when you create new content, but registering with the copyright office adds further protection.
Navigating the future of cannabis trademarks
Navigating the landscape of cannabis trademarks is fraught with challenges due to cannabis’s federal illegality and the nuanced legal framework that surrounds it. While there are strategies available for cannabis brands to protect their intellectual property—from federal trademarks for ancillary products to state trademarks and common law protections—each option comes with its own risks.
As the industry evolves, particularly with the potential for rescheduling cannabis, the opportunities for trademarking may expand, yet uncertainty remains. Cannabis businesses must remain vigilant and adaptable, continually monitoring legal developments to protect their brands effectively while optimizing their trademark strategies.
Securing proper insurance coverage is just as crucial as other protections. The McGowan Wholesale team offers a comprehensive approach to assisting licensed cultivators, growers, extractors, processors, wholesalers, dispensaries, and retailers (for both CBD and ancillary products) across all states.
Get in touch to learn more about customizing coverage for your cannabis business.
Disclaimer: This blog post is not intended as a substitute for legal advice. It is recommended that you speak with a trademark attorney before deciding on business strategies.
