Cannabis continues to grow as states become more and more accepting of its use for medical and recreational use. The problem is that the Federal government is a bit behind the times and it has implications on the IP portfolio of growers, distributors, and dispensaries.
One particular area is in the realm of trademarks. For the time being, federal registration of a trademark cannot be secured. This is because registration requires use of the trademark “in commerce.” In layman’s terms, that means it has to be sold in a way that it is regulated by Congress. The Controlled Substance Act makes the sale of cannabis illegal—so use in commerce is impossible under current law.
This can inhibit growth of a cannabis business’s brand as states adopt cannabis-favorable laws. If the Federal government changes its position, it could also lead to some losing their brand or having it severely limited by a competitor that secures registration first.
One workaround is obtaining a patent. Although patents are usually intended for inventions, there are also design patents that protect the ornamental design of a functional item. This means that a design could be secured for a brand as it is used on packaging or on the item itself, e.g., the design of an edible.
Given the boom in the industry, speaking with your trademark or patent attorney soon is a good idea.