As the cannabis industry continues to expand, companies face an increasing challenge in establishing and protecting their brands, particularly since federal registrations are not available for plant-touching products and services. One of the most common pitfalls is brand collision — when two businesses use similar or identical names, logos or other brand identifiers, leading to legal disputes and market confusion.
Given the unique regulatory landscape of cannabis, avoiding brand collision requires strategic planning from the outset and selecting a brand that is both distinctive and exclusive.
Choosing a distinctive brand
The trademark spectrum of distinctiveness classifies marks into five categories: generic, descriptive, suggestive, arbitrary and fanciful. Understanding this spectrum is crucial for cannabis companies aiming to establish a strong and legally defensible brand identity.
- Generic marks: These are common words for products or services (such as “Cannabis Dispensary”). Generic terms cannot be protected by trademark registration.
- Descriptive marks: These describe a function, feature, purpose or characteristic of the product or service (such as “Green Herb” for cannabis flower). Descriptive marks are only eligible for trademark protection if they have “acquired distinctiveness,” which is typically established by more than five years of exclusive use in commerce, extensive sales and advertising, and other factors.
- Suggestive marks: These imply a characteristic of the product without directly describing it (such as “High Elevation” for a cannabis dispensary). These marks are considered inherently distinctive and more likely to be protected.
- Arbitrary marks: These are existing words with no inherent connection to the product (such as “Volcano” for a cannabis vaporizer). They are strong trademarks.
- Fanciful marks: These are completely made-up words that have no meaning other than what has been created by the trademark owner. Fanciful marks offer the highest level of protection. An example outside of the cannabis industry is Starbucks.
Cannabis businesses should aim for suggestive, arbitrary or fanciful marks to ensure distinctiveness, protectability and enforceability. Not only do these categories provide stronger legal protection, but they also reduce the risk of running into existing brands in the industry.
Ensuring exclusivity: Conducting a comprehensive clearance search
Before investing in branding, companies must conduct a trademark clearance search to verify that their chosen name is not already in use by another business, either in the cannabis industry or another market, and therefore, is exclusive to their proposed use. This involves:
- Searching the USPTO database: Checking for existing trademarks in the U.S. Patent and Trademark Office database ensures that the name is not federally registered or pending registration by another company.
- State trademark searches: Many cannabis businesses operate at the state level due to federal restrictions, making state-level trademark searches essential. Where available, state trademark searches can be conducted through the state Secretary of State’s office or through a trademark attorney’s dedicated state search tool.
- Cannabis license database searches: Searching available state cannabis license databases for company names similar to the prosed mark can also be helpful. While not all businesses use the company name as their brand, if there is a company with a similar name licensed to conduct cannabis activities it is worth investigating further to see if they are using a similar trademark.
- Common law searches: Some businesses operate without formal trademark registrations, so investigating unregistered uses found through internet searches, as well as domain names, social media handles and trade directories (such as WeedMaps) helps identify unregistered but potentially conflicting brands.
- International searches: If expansion is a goal, conducting clearance in the targeted countries of interest is recommended to avoid conflicts in international markets.
Additionally, another consideration is avoiding the selection of a mark that is in a “crowded field.” A crowded field describes a situation where a certain term has been incorporated into numerous trademarks for particular goods or services. For example, there are many cannabis marks containing the word “green,” and while the addition of green in a cannabis mark does not necessarily make the mark generic or descriptive, it is nevertheless weak because of the saturated market use.
In this context, the crowded term would be considered weak, and it would be difficult for any one of the users to claim exclusive rights in the term. Selecting a mark with a crowded term presents marketing obstacles; for example, an owner may face an uphill battle with search engine optimization trying to gain traction and attention to their products among the many users.
Failing to conduct a proper search can lead to costly rebranding efforts or legal disputes, potentially derailing a business’ momentum.
Navigating the risk of non-cannabis brand conflicts
One often overlooked risk is conflicts with non-cannabis brands. Many companies outside the cannabis industry actively enforce their trademark rights against cannabis companies, even if the products themselves are different. This is particularly common with food, beverage and wellness brands that fear consumer confusion or reputational harm.
For example, a cannabis-infused candy brand adopting a name similar to a popular non-cannabis candy brand may face legal challenges. Likewise, a cannabis skin care brand using a name similar to a well-known cosmetics company could be targeted for infringement.
To mitigate this risk, cannabis businesses should:
- Ensure that their chosen brand is not similar to an existing trademark in any industry, especially consumer goods.
- Avoid names that might suggest an association with established or famous brands.
- Avoid names that appear to parody an established or famous brand.
- Consult with a trademark attorney to analyze potential conflicts before launching.
Conclusion
Brand protection in the cannabis industry requires proactive measures. By selecting a distinctive and exclusive name, conducting thorough clearance searches, and being mindful of both industry-specific and broader trademark conflicts, cannabis companies can avoid brand collision and establish a strong market presence. Businesses that take early steps to secure their trademarks and are mindful of the total market landscape prior to use will enjoy long-term stability and growth.
Nicole A. Katsin is a partner at Crown, LLP, a boutique intellectual property law firm in San Francisco. Her practice focuses on intellectual property, technology and cannabis matters, including trademark and copyright prosecution, enforcement and developing global portfolio strategies. She also represents clients before the Trademark Trial and Appeal Board and Uniform Domain Name Dispute Resolution Policy panels. She can be reached at nicole@crownllp.com.