Trademarking & Naming in Cannabis

What is a trademark anyway?

A trademark is a unique name and or symbol that is defensible in a court of law from use by anyone else.  This is the first of a two part series.

There are three things the US Patent and Trademark office doesn’t like, and I have distilled that info for you here.

1. Generic terms for the industry/category. For cannabis this means no green, canna, flower, leaf, seed, CBD, THC, hemp or any other common or generic term directly related.

2. Locations. Humboldt, Cali, Oregon, Denver or any of those will not be federally defensible once there is a Cannabis Trademark Category.

3. No proper names. Sorry, but John Smith Dispensary just won’t hold up. If you have the most unique name in the world, the USPTO might give it to you, but it’s a gamble, you would probably have to do a lot of work to hide that it’s your name… In this case hire a trademark attorney no matter what!

I know some of you are jumping up and down upset and defensive about your name and you don’t want to change or admit that you have a bad name.

There are exceptions. When you combine one of these with something specific, it can work. I did it with Barney Design Co. Mostly because I happened to be first. I got lucky AND I knew what I was doing. Also, I am small, chances are your ambition with your cannabis business are much bigger on a customer scale than me.

But rather than flirt with danger, I would like to share with you what you should be trying to do when naming.

Go for the abstract. Maybe you love Persian rugs so you call your company Ornate Concentrates. Maybe you like the concept of going deep in life and you grow two strains and two strains only, better than anyone so you call it Mariana’s Garden (get it?) Then there's Shady Oak, Icarus Feather, Steel and Denim. You get the idea. The less obvious and directly connected the better. The crux to this is there does need to be a connection for you, no matter how abstract it may be. There needs to be a story. It can’t be random and made up, unless you are Steven King, then you can create an alternate fantasy reality and people will buy into it.

This is the first step to brainstorming a list of names. Did you screw up and name your business California Cannabis or Holistic Wellness Center? There is no better time to change than now. If you need help, I am always here and any brand designer worth a damn knows this stuff so ask them! You live in the age of the internet where you can know as much as the professional, at least enough to ask the right questions to see if they know.

If you have a great name and you want to trademark it, I would advise hiring a trademark and copyright attorney to make sure. David Branfman at Branfman Mayfield Bustarde Reichenthal LLP is a fantastic and affordable attorney who has done a lot in Cannabis and has worked in trademarking and copywriting for a long time. He will work hard to help you create a defensible name that you can protect.

Conversely, if you are super savvy, need to save money and have time, you can register your name yourself. The USPTO is a bit cumbersome and some of the forms and rules don’t make a lot of sense to those of us who don’t speak legalese but I have several friends who have registered their own trademark so it is possible, although I will say they all just about pulled their hair out.

Anyways, more info in the next post,

Jesse Barney

December 18, 2019