Pst, have you heard about California Trademark Laws?

By Zareefa B. Flener In  Posted 

California has amended its trademark laws to allow the registration of cannabis goods and services!  As of January 1, 2018, the California Secretary of State is now registering trademarks covering cannabis goods and services.  State trademark protection is available on these marks provided: (1) the mark is lawfully used in commerce within California, and (2) the goods and/or services covered in the trademark application follows the classification system adopted at the federal level by the US Patent and Trademark Office.

The lawful use in California commerce element is important for businesses to be mindful of.  Lawful use of the trademark must be at the time the trademark application is filed.  This means businesses must be licensed to sell the products or perform the services covered in the trademark application and have actual sales.  Unlike the federal trademark system, there is no opportunity to reserve trademark rights based on intent to use the mark in California commerce.

These changes to California trademark law arise from California’s legalization of marijuana use, but lack of harmonization with trademark protection for cannabis business.  Literally a “wild west” where multiple companies could lawfully sell cannabis goods and services under the same or similar trademarks, potentially trading off each other’s goodwill.  Previous California trademark law tracked federal trademark law.  The U.S. Patent and Trademark Office has taken the position that if a trademark covers goods or services considered illegal under the Controlled Substances Act, lawful use in commerce is not possible and trademark protection is and remains unavailable.

This new California trademark law is a first, but is likely to be replicated in other states where cannabis is legal, but state trademark law continues to track federal trademark law in defining “lawful use in commerce”.  Flener IP & Business Law is continuing to track developments and to consider trademark protection strategies in California and other states.

FLIP is a women owned boutique firm specializing in intellectual property law from counseling, managing global and domestic portfolios, transactions, corporation formation and maintenance, and litigation surrounding all aspects of intellectual property.