Brand Strategy 101: Developing, Clearing and Protecting Cannabis Trademarks

Picture a laundry detergent.

Let me guess… Tide^®?

You have just demonstrated the power of branding.

As the cannabis marketplace becomes increasingly crowded, brand recognition can become your single most valuable asset. With so much at stake, it is important to have a formal brand strategy in place before you ever open your doors for business or release a product on the market.

So, where should you begin? Trademarks.

A trademark is a form of intellectual property and legally protectable aspect of your brand. Thus, proper trademark development is a crucial component of strategic branding. (State-based trademark protection is available in U.S. states that have legalized cannabis, and the U.S. Patent and Trademark Office will review applications for legal products and brands—like a line of CBD tinctures or a hemp cultivation business.) With the process and tools outlined below, you will be well on your way to developing a strong, protectable brand.

All Trademarks Are Not Created Equal

Brand development begins with selecting a strong, enforceable trademark. Legally speaking, a trademark is defined as a word, name, phrase, symbol or design that distinguishes the goods or services of a particular source from the goods or services of others. It may consist of your company’s name, the name of your products, unique logos or designs, taglines and so on. Naturally, you may gravitate toward a trademark that informs consumers about the goods or services you are selling. However, this category of trademarks is generally deemed “descriptive” and therefore the weakest and hardest to protect.

Under trademark law, the strongest and most protectable marks are “fanciful” or “arbitrary.” A fanciful mark is comprised of a made-up term or terms—think Google^®—with no independent meaning or significance beyond its trademark function. In contrast, an arbitrary mark has independent meaning, but that meaning is insignificant as applied to the goods or services offered under the mark. For example, Apple^® is an arbitrary mark because the term “apple” has no significance when applied to computers and electronics.

Get the “All Clear”

After selecting a potential trademark, you should formally “clear” the mark with a reputable trademark lawyer to confirm it is available for use and registration (more on registration later).

This important step in the brand development process will help ensure that another party has not already acquired trademark rights that may interfere with your use of the mark. If you skip this step, you run the risk of adopting a protected trademark, which may subject your company to costly consequences, such as monetary damages and forced rebranding.

Bulletproofing Your Brand

Once cleared, you should strongly consider securing registrations for your trademarks, if available. Trademark rights are triggered through use of your trademark in connection with the goods and services you offer; however, securing registrations will provide additional rights and remedies, including expanding the geographic scope of your protectable and enforceable trademark rights.

Also, if your company has an online presence, you should consider securing pertinent domain names and social media handles before you launch your brand. Attempting to reclaim these postlaunch can prove difficult.

Finally, once you establish trademark rights, you must protect and enforce them. If you allow unrelated and unauthorized use of the same or similar trademark by third parties, especially competitors, you run the risk of losing your valuable trademark assets.

About the Authors: Lindsey Williams and Erin Grolle are intellectual property attorneys specializing in strategic brand management at Brownstein Hyatt Farber Schreck in Las Vegas, Nevada.