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[WINTER LLP WARNING] Breaking News: SOS now accepting trademark applications for cannabis products

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Hello all,

As you may have seen announced, California is now (allegedly) accepting trademark applications for cannabis products.

PLEASE BE ADVISED, we have been in constant contact with the CA Secretary of State and it is painfully clear that they have no idea what they are doing. None whatsoever. So, although it may seem tempting to apply for these state based trademarks, we are not recommending clients proceed with the California based trademarks at this time. Rather, we are advising on a wait and see approach. It’s going to be very messy…

However, if you want to proceed, please see the following:

State CA Trademarks:

Through our internal office discussion, we still believe that federal trademarks offer the strongest brand protection for your cannabis-related goods/services. That is because only with federal registration you are allowed to use ® (only can use ™ for State registration), and federal registration preclude later filed state registrations.

If you are still reading, and still want to proceed, we spoke with the Secretary of State’s Office earlier today and they indicated that cannabis-related marks may be registered with the CA Secretary of State so long as (1) the mark is lawfully in use in commerce within California; and (2) matches the classification of goods and services adopted by the United States Patent and Trademark Office. Additionally, only cannabis products that are allowed in CA regulations will be trademarked.

Currently prohibited items include but are not limited to:

  • Products that contain alcohol, nicotine, or added caffeine
  • Products that must be held below 41 degrees Fahrenheit
  • Vacuum packed products
  • Canned cannabis products
  • Cannabis-infused juice
  • Products that are easily confused with non-infused products
  • Edibles in the shape of human, animal, insect, or fruit
  • Most dairy and meat products
  • Cannabis related products that are attractive to children
  • Products that resemble traditionally available food packages
  • Products that exceed the maximum of 10 mg of THC per serving and 100 mg of TCH per package.

PLEASE BE ADVISED, there is NO classification of goods and services for cannabis in the USPTO system!! The State Office said we would have to use the “most appropriate USPTO class” for the cannabis product/service. Our most commonly used trademark classes have historically been in Class 003 (essential oils); Class 005 (herbal supplements) and Class 34 (smoking articles, cartridges, oils), and other food or candy related classes in applying with the USPTO. So our likely strategy with applying with the State will be to add THC/CBD to the description of goods in the aforementioned classes, i.e. “essential oils containing THC; herbal supplements containing THC; cartridges infused with THC/CBD, etc.”

Please contact our office if you are still interested in proceeding, and we will help you as best we can. But please note, we will probably try to convince you to file directly with the USPTO instead.

Thank you. Todd Winter, WINTER LLP.

URGENT – California Cannabis-Related Trademarks (Cannabizfile Online Cannabis Business Portal)

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Dear All,

Many of you have contacted us regarding California Cannabis-Related Trademarks. As you know, California Secretary of State’s Office released a press statement this month containing information about registering a cannabis-related trademark or service mark with the Secretary of State’s Office.

The State Trademark Unit has confirmed with us that the CA State Legislature will be voting on the State Classification Code for cannabis-related trademarks as early as January 2, 2018. Once the cannabis Classification Code is released, we will be able to assist you with applications for registration of a cannabis-related trademark with the State.

The basic requirements to file a Trademark or Service Mark in CA are as follows:

  • The mark must be available on the USPTO trademark database and in California (for all similar or related goods and services). This means YOU CANNOT INFRINGE ON AN EXISTING FEDERAL OR STATE (COMMON LAW OR REGISTERED) TRADEMARK.
  • You must be using the mark in commerce in California. Please note that for State Trademarks/Service Marks, you cannot file based on “Intent-to-Use” (Future Use).
  • If the mark is merely descriptive (i.e. the mark describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services), it may not be registrable.
  • You must have a drawing of your mark on an 8 ½” x 11” sheet of paper.
  • If any part of your mark is not in English, you must submit a certified translation in English.
  • You must submit Three (3) Identical (three of the same) Specimens that show the mark in use in commerce. If the Application is signed by an individual on behalf of the Owner (Registrant), you must include a copy of the agreement signed by the Owner (Registrant) authorizing the individual to sign the Application on behalf of the Owner (Registrant).

PLEASE BE ADVISED, FEDERAL TRADEMARKS (REGISTRATIONS) ARE SUPERIOR TO STATE REGISTRATIONS. If a federally registered trademark was in use before a State registered trademark, the federal registrant can stop the State trademark owner from using the mark. Moreover, State trademark registration does not give you the right to use the symbol ®. You may use either TM for a State trademark or SM for a State service mark.

The benefit of the CA State trademark or service marks, however, is that it will protect your cannabis-related trademarks in California. Therefore although State registration is not required, we would recommend federal registrants (and non-registrants) to apply for a State trademark/service mark for cannabis-related goods and services.

Our Flat Fees for filing are as follows:

  • $250.00 for Trademark Clearance Search and Report.
  • $500.00 Legal Fees for preparation and filing, plus $70.00 filing fee per classification code. If more than one classification code is listed, then a $70.00 filing fee is required for each classification.

Please also note, along with some of our most entrepreneurial clients, we pioneered cannabis-related trademarks in the United States. There will be many attorneys and consultants with no trademark experience marketing their services to you for these California cannabis trademarks. Do not trust your state level filings with just anyone. Trademarks are much more complex than you realize. And if filed incorrectly, you run the risk of your brands being shut down and you being sued for profits and damages. We are experienced trademark attorneys, and have a state of the art trademark docket system (database) where we track and manage over 300+ trademarks for our clients throughout the world

We will keep you notified of any updates from the State as soon as they are released. Should you have any questions on any of the above, please do not hesitate to contact us.

Thank you. Todd Winter, WINTER LLP.