Beat the Weeds: File Your Cannabis Trademarks in Canada
On On October 17, 2018, Canada’s Cannabis Act was enacted, legalizing recreational marijuana consumption for Canadians aged 18 and above. The new law has led to an upsurge in innovation in marketing and branding by Canadian cannabis companies. However, developing effective and protectable branding for cannabis requires more than mere superficiality. This is a crucial aspect of the industry that companies worldwide should take note of.
Cannabis Trademarks in Canada
Prior to the legalization of cannabis in Canada, it was generally considered impractical to register a trademark associated with medical marijuana or devices such as bongs and pipes. The Trademarks Act only allowed registrations for marks already being used associated with a product or for which use had been proposed. However, unlike in the US, there was no express prohibition on trademarks related to medical marijuana or devices. With the introduction of the Cannabis Act, companies can now protect their intellectual property in the cannabis industry, especially those seeking brand protection for recreational products and services. The new law has opened doors for companies to register trademarks, including strain names of cannabis, and has allowed them to safeguard their brands.
In 2019, the Canadian Intellectual Property Office (CIPO) identified the increasing demand for cannabis-related trademarks and updated its Goods and Services Manual accordingly. This update is aimed at meeting the evolving needs of the industry and facilitating the trademark registration process for cannabis-related businesses. The manual now includes 11 new terms associated with cannabis, specifically covering goods and services related to the industry, including:
Cannabis grinders
Dried cannabis
Cannabis oil for cosmetic purposes
Cannabis oil for electronic cigarettes
Chocolate bars infused with cannabis
Cannabis oil for the treatment of cancer
Live cannabis plants
CIPO has over 5,000 trademark applications related to cannabis pending approval. However, the ambiguity surrounding Canadian trademark protection for cannabis companies persists as legal regulations continue to evolve. Generally, trademark applications for cannabis-related products that contain a name that is self-explanatory and descriptive of the product or service are likely to be rejected. Still, names that are suggestive or evocative may be approved. The line between descriptive and suggestive remains blurred for the cannabis industry, with several trademark applications featuring variations of “canna-,” “weed-,” “herb,” “grass,” and “buds” still pending. Conversely, an applicant may overcome objections based on descriptiveness by proving that their brand has acquired distinctiveness. Essentially, the brand owner should prove that the mark has become so well-known in the market before filing the trademark application that consumers associate it with the company’s products and services. The mark’s registration may be granted despite its descriptive nature if the brand owner has a strong trademark application and follows a strategic prosecution.
Cannabis Trademarks in the United States
Despite the legalization of cannabis in certain states in the United States, acquiring trademark registration for cannabis products remains a complex and challenging task. The federal illegality of cannabis is a major obstacle, making it difficult to obtain protection for trademarks associated with cannabis. However, there are alternative legal strategies that cannabis brands can explore to establish and protect their brand identity.
Despite the legalization of medical marijuana in 21 states and recreational and medical marijuana in 10 states, the United States Patent and Trademark Office (USPTO) has not yet allowed trademark applications, including the terms “cannabis” or “marijuana” as associated goods and services. This is because cannabis is still considered a federally prohibited substance under the Controlled Substances Act, and the USPTO, being a federal agency, follows federal laws. Thus, even though some states have legalized marijuana, individual state legalization is not taken into account by the USPTO. As per current US laws, trademark applications cannot explicitly list cannabis or marijuana nor use related terms that are intended to refer to the federally prohibited substance. For instance, the USPTO Trial and Appeal Board has held that trademark applications that list “retail store services featuring herbs” as an associated service may be refused if the “he “bs” i” question is marijuana.
Commentary
For cannabis companies operating in the US, filing their cannabis-related trademarks in Canada may be advantageous to safeguard their brand. Although a Canadian registration only confers rights in Canada, it could help a US entity contest a brand imitator if it can demonstrate that American customers are familiar with the mark in nearby Canada. Furthermore, since June 2019, trademark applicants are no longer obligated to demonstrate the use of their mark. This implies that applicants can file for a trademark in Canada even if they haven’t yet entered the Canadian market.
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**The information provided herein is a general background of contractual, technology and intellectual property law concepts. It does not constitute legal advice, and should not be relied upon as legal advice. Athena Innovation & Legal, nor the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information.**
