There have been a few observers, commentators, and practitioners who have been reporting that state trademarks/service marks can be freely registered through the Secretary of State’s office. This is not accurate. This post will hopefully clear up the misconceptions surrounding registration of a state trademark or service mark for cannabis-related goods or services.
First, legislation introduced in California’s legislature (SB 94) allowed for adult-use cannabis regulation. And, the Secretary of State issued a statement that starting on January 1, 2018, cannabis-related trademarks and service marks could be registered with the state as long as:
- The mark is lawfully used in commerce within California; and
- Matches the classification of goods and services adopted by the U.S. Patent and Trademark Office (i.e., Nice Classification).
Lawful use in commerce means that the company must be licensed by both the local municipality and the state before the state trademark application is filed, and the mark is actually in use in California.
Proper classification with the USPTO is a little more tricky. First, the USPTO has not been registering cannabis-related marks due to marijuana’s listing on the CSA’s Schedule I list (a future posting will delve more into this issue). In other words, because marijuana is technically illegal under federal law, the USPTO will not register marks directed towards a good or service associated with an illegal source. Further, the Nice Classification does not currently have a specified classification for cannabis goods or services. Additionally, a new legislation (AB 64) that would outline two new state trademark classifications has not yet been passed by the Legislature:
(a) Notwithstanding Section 14235, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, the following classifications may be used for marks related to cannabis, including medicinal cannabis, goods and services that are lawfully in commerce under state law in the State of California:
(1) 500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.
(2) 501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.[1]
The Nice Classification (and hence, the USPTO) has not adopted this version of California’s proposed statute. Therefore, the classification entered on the state trademark application must match what is currently in the USPTO’s TM ID Manual NextGen database. The proposed B&P Code 14235.5 500/501 classifications cannot be selected from the online trademark application because the drop-down menu currently does not include these classifications as options. Until AB 64 has passed the Legislature, the identification of goods and services must, therefore, be carefully crafted using the existing Nice Classification as adopted by the USPTO to ensure the actual goods or services are properly classified that will pass state examination. Unlike in some states, there is an examination of filed trademark applications, and as such, the examiner may issue office actions with refusals or objections if there are defects with the application as filed.
The Secretary of State’s office currently cautions that “not all cannabis-related products can be registered under current law due to the inability to meet federal classifications.” This is a reflection that current state law has not yet caught up with the legalized marketplace for cannabis.
Cost is $70.00 per class, per application.
Hopefully, this clarifies some generalizations being made about California’s state trademark registration process for cannabis-related marks. It is not as easy as some may seem to believe.
[1] Cal. Bus. & Prof. C. §14235.5.