On January 1, 2018, the largest market in the U.S. is set to begin licensing and commercializing adult-use marijuana. California’s adult-use marijuana start date is highly anticipated by many in the cannabis industry. The Secretary of State has recently launched Cannabizfile, an online business portal to cannabis regulation, business licensing, corporate registration, and trademark/service mark filing.
As for filing state trademarks and/or service marks geared toward the cannabis industry, note that federal registration of the trademarks and service marks is not available, due to the USPTO’s continued refusal to recognize marijuana as a legitimate commercial use to justify a trademark/service mark registration at the federal level, with the most recent TTAB decision reiterating the USPTO’s position in denying trademark/service mark registration to cannabis-related goods or services. However, state registrations are available, at least, in the adult-use regulated states (i.e., Alaska, California, Colorado, Nevada, Oregon, and Washington; Maine and Massachusetts have not released cannabis-related trademark guidelines yet).
This assortment of state trademark registration regimes are a reasonable workaround to the federal intransigence to protection of cannabis-related marks. The specific requirements under California’s trademark regime are as follows:
- The mark must be for a legitimate use within the state of California. This means a newly formed cannabis-related company must comply with state cannabis regulations, and specifically, have the proper local and state licensing schemes in place before a trademark application is filed.
- The classification of goods and/or services must be based on those established by the USPTO, which uses the 11th edition of the Nice Classification. This means the identification of goods and services must fit under one of these categories of goods or services when the state trademark application is filed.
- The mark must be in actual use, and not an “intent-to-use” (ITU) mark. While the USPTO allows for both actual and IT-based applications to be filed, California only allows actual-use applications. Therefore, in order to proper legal use within California, the mark must be in use on January 1, 2018 at the earliest, since adult-use marijuana will not be legal until this date. Also, note that actual use constitutes an actual sale in commerce within the state of California.
- Specimens showing the mark in use in commerce will be required to be submitted at the time of the application.
- State trademark term is five years, so the mark must be renewed before the end of the fifth year.
- Applicants will be required to inform the Secretary of State’s Trademark Division of any federal applications filed and refused, and disclose any specific refusals made in the office actions.
- Unlike some states, California trademark and service mark applications undergo examination, so there may be a prosecution period with possible office actions between the state trademark examiner and applicant to address any questions or refusals that the examiner may have.
If there are any questions regarding California’s new cannabis-related trademark registration process, please feel free to contact us.