You have been dreaming, researching, and ideating plans for your cannabis business. Now that you are ready to begin naming, branding, and launching your business, don’t get ahead of yourself. As we have advised previously on the blog, and it bears repeating, it is always prudent to conduct a trademark clearance search before launching your business or product into the world.
Launching a new brand – and possibly having to re-launch later under a different brand because you abandoned this step - could be costly and adversely impact the future of your business. After all, you are starting your business and creating your product because you have something unique to offer the marketplace; a trademark clearance search will help assure your name and brand are unique, too. With new businesses and products launching daily, overlap and confusing similarity risks are high.
First and foremost, hire an attorney to conduct the trademark search, analyze the results, and provide an opinion. Not only is it wise to retain an experienced practitioner, but an opinion of counsel can also help insulate you and your business from additional monetary damages for intentional infringement of another party’s mark.
If you are an attorney reading this, or if you want to conduct your own preliminary trademark search before hiring an attorney, consider these tips when conducting a cannabis trademark clearance search:
1. Do not restrict your search to one International Class.
With the many applications and possibilities that cannabis, CBD, THC, and hemp offer, it is essential not to restrict your search to just one Class of goods or services. Without a defined cannabis Class, there is potential for your product or service to qualify under many of the 45 International Classifications of goods and services. For example, lighters, rolling papers, and “smokers’ accessories” fall in International Class 34, while most edibles (such as chocolates, cookies, brownies, and candy) are classified in Class 30. “Medicated candy,” however, falls in International Class 5. . You want your search to span as many trademark Classes as possible in order to ensure the availability of your trademark with as little risk of challenge from third parties as possible.
2. Search your merch.
Your search should not only include products containing cannabis, but also the merchandise you will want to offer in connection with your products, particularly since you cannot obtain a U.S. federal registration for products containing cannabis with more than 0.3% THC. Your safest bet will be to register your new brand for promotional items. Articles of clothing – T-shirts, sweatshirts, caps, etc. – fall in International Class 25. Tote bags, backpacks, and shopping bags come under International Class 18. Key chains fall in Class 14, fridge magnets fall in Class 9, stickers come in Class 16, and guitar picks (yes, one of the best-selling types of merch) fall in Class 15. There’s a lot to cover!
3. Consider geography.
Confining your search to just the state you are operating in could have significant ramifications down the line, restricting your ability to scale and expand your brick-and-mortar or e-commerce business. It's critical to expand your search to both state and federal databases, to cover all your bases.
The key takeaway is to stay broad with your search.
Contact one of our intellectual property attorneys to discuss your situation and needs if you have questions and need help conducting a comprehensive trademark clearance search.