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Trademark Registration for Your New York Cannabis Industry Business and Brand | Vicente Cederberg LLP

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Want to start a cannabis business in New York? To help prepare, VS’s New York team has created an eight-part VS Insight series to help navigate the path to applying for a cannabis business license in New York. This series is essential for New York cannabis entrepreneurs, including business formation, license application preparation, suitable real estate search, financing and investment, eligibility as a social equity applicant, communication with city authorities, and environmental requirements. Take up the topic.

Part 4 of the series focuses on one of the more exciting yet essential tasks of creating a business brand name and logo and protecting that brand with a trademark.

Brand names and logos are essential to the growth and success of the cannabis industry’s business. Consumers may not purchase, share, or celebrate products or services without a brand. Effective brands need to be developed, built, supported, and protected. As explained below, cannabis brands can usually build and protect their brands and trademarks just like any other business.

The foundation for building and protecting a legally strong brand is choosing a creative name. The more distinctive it is, the better it is. Names that consist of common names or common industry jargon are likely to be much more difficult to protect and increase the risk of conflict with other brands in the industry. Therefore, we recommend that you work with a lawyer to conduct a review and clearance search before adopting a new brand name.

Once the name is chosen, trademark registration is extremely valuable as a cannabis brand asset and to ward off infringers. There are some hurdles to getting a federal trademark registration for a cannabis brand, especially due to federal law, but there are still options available.

Trademarks can usually be registered at both federal and state levels. Federal trademark registration conveys the strongest level of protection by providing owners with a number of rights, including:

  • ® Registration code can be used

  • Proof of ownership of Mark

  • Notify existing trademark rights to the public

  • Ability to file proceedings in federal court

  • Providing the basis for applying for a trademark in another country

  • Stop importing infringing goods (by registering the mark with the US Customs and Border Protection)

Federal trademarks, once applied for and granted by the United States Patent and Trademark Office, provide national rights. Federally registered trademarks provide extensive protection, while state trademark registrations provide protection only within the state in which they are applied for.

Currently, you cannot receive federal trademark protection for products and services that come into contact with cannabis, but not all hope is lost. Currently, the best way to get federal protection for a cannabis brand is to apply for a product or service that does not call CSA. Some examples include cannabis-related websites and merchandise (such as clothing and apparel).

We have worked with dozens of cannabis companies to acquire strong brand rights in the current legal context. In addition, federal registration is generally available for hemp or CBD products that comply with the 2018 Agricultural Bill and, where applicable, current guidelines under FDA regulation.

For example, below is a list of some registered marks that VS helped protect clients.

For websites with online business directories and listings featuring commercial or advertising information in the areas of product recommendations, consumer ratings, and legally licensed cannabis product and service reviews.

BLUPEAK BOTANICS All online retail services featuring hemp and hemp-derived CBD products have the properties of non-medicinal and non-consumable health and beauty products.All of the above have a delta-9 tetrahydrocannabinol (THC) concentration of 0.3 percent or less on a dry weight basis.

For websites featuring articles in the field of cannabis and CBD

To provide medical information about cannabis and CBD

B WELL Website with consumer information and news about cannabis

Slumber CBN To provide websites with medical and health information in the areas of risks and benefits of using cannabis and CBN

In states where the use of cannabis is legal, cannabis brands may also be able to register their trademarks in the state.

See this discussion with VS Intellectual Property Attorneys Sahar Ayinehsazian, Erik Pelton, and Jeffrey Welsh for trademark details, including common pitfalls, strategies for distinguishing marks, and ways to avoid registered mark infringement.

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