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Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 21, Issue 4

Federal Cannabis Reform: What can your brand do to prepare?

By  Kristyn C. Webb

United States Senate Majority Leader, Chuck Schumer, recently proposed the Cannabis Administration and Opportunity Act to decriminalize cannabis at the federal level. Many states have already passed laws that permit some medicinal and/or recreational cannabis use, and recent public opinion polls show that Americans overwhelmingly support legalization of the drug. What could federal drug reform mean for brand owners operating in the cannabis industry?

Currently, only limited trademark protection is available for brands of cannabis products.  This is because federal trademark law does not permit the registration of trademarks for federally illegal substances. As a result, some brand owners have sought trademark registration protection at the state level in states where cannabis is legal.

Some brand owners have obtained federal trademark registrations for cannabis-adjacent products that are not illegal under federal law, such as generic smoking paraphernalia (e.g., pipes and rolling papers). These federal registrations may ease the path for those brand owners to obtain federal registration for cannabis-specific products if/when there is federal cannabis reform.

In the meantime, Federal trademark law allows applicants to file for registration prior to the actual use of their marks in the form of “intent-to-use” applications — but, the United States Patent and Trademark Office (“USPTO”) does not allow applicants to file applications on an intent-to-use-once-cannabis-is-federally-legalized basis.  This policy is currently being challenged at the USPTO’s Trademark Trial and Appeal Board.

We will provide readers with updates on the law and USPTO policy related to cannabis reform as these matters develop.

For insights on how to protect your cannabis brand as we await possible changes to federal cannabis law, read our white paper: State-Legal Cannabis Trademark Protection Guide.

In the next FishBits mini article, we will spotlight the famous red-bottom trademark of Christian Louboutin, and how the brand’s shoes “walked the walk” to receive trademark registration for a single color.