It’s Legal, Now What?

This is an approximate transcript of my video It’s legal. Now What? found on YouTube. In this blog, we discuss New York state’s legalization of cannabis use and what that may mean from an intellectual property perspective. More about the New York state law can be found at the Office of Cannabis Management  

Hello! Hello! Hello! Good evening, Happy Thursday, and welcome to Thursday Thoughts.

If you’re new here my name is Adjckwc O Browne Esquire and I am the founder of Browne Law. Each week on Thursday we are live and answering any questions that have been posed to us by followers on IG, clients etc. The topic for the evening is – It’s legal now what? The question that was posed was can I obtain a federally registered trademark for my cannabis products and that conversation/question spun out of a larger conversation regarding how in the great state of New York the sale of cannabis for recreational purposes has been made legal. Really, the better term is authorized. There is a ton of details around that and here is a good link to get started. This site will provide a fact sheet around the Marijuana Regulation and Taxation Act that you are able to download. Reach out @ inquiry@lawwhereyouare.com if you have further questions, I would be happy to try to assist you. We are centering this conversation around the ability to register a cannabis trademark. Keep in mind that this is fairly new in the state of New York and in other states. Cannabis has been authorized under what we term “medical marijuana” which is where use is only authorized for those that have been prescribed and then there is recreational use. Recreational use in New York has most recently become authorized and so then the question becomes how do I protect the brand that is centered around the now authorized use of cannabis in the state of New York and other states. There are about 37 states across the country with varying levels of authorization for cannabis. and so hopefully that sets a good backdrop before we answer the question. The answer to the question of how you protect a cannabis brand is it depends. If you watch Thursday Thoughts you will know that that is often the answer in the law. But not only does it depend, it also in this case is varied. So the approach that you would want to take is to think about broadly how you are intending to use the products. If you wanted to let’s say, set up a website ‘AJSCANNIKNOW.com’ by AJS CANNIKNOW to inform people and give them information about the use of cannabis including its medical uses and its recreational uses and descriptions about the types of cannabis. This would not include instructions on how to grow, but just a website that provides information on the plant. That brand under which you provide that information (AJS CANNIKNOW) is something that you could federally register. The problem or the issue is that although cannabis has been authorized at the state level in many states New York being one of them is not authorized or made legal at the federal level. Consequently, the US patent and trademark office will not grant a federal registration which is that broad registration that covers the whole of the United States and if you take the needed steps to transfer that already registered mark then most of the world. Generally, a USPTO registration is going to cover you within the United States and across all of those states to protect your brand nationally. The USPTO will not provide registration for something that isn’t considered legal i.e. that you can do from state to state and so because it (cannabis) is still federally illegal and not authorized across all 50 states for either medical or for recreational use they would not provide you with a federal trademark registration. Your alternatives are to think about getting a state registration for that brand based on whatever state that you are in where it is authorized. When your state has authorized cannabis for medical or recreational use and you are creating a brand around that product you would want to get a state-level registration to protect your brand. This registration will be specific to the geography of the state that you are specifically doing that business in. Generally, that is something I would never recommend because most businesses do online and across states but this is a specific instance where it is the way to go and which office you seek really depends on where you reside at and where the business is going to operate. So you go to that state and seek a trademark registration there –https://dos.ny.gov/application-register-trademark in New York. Then broadly for the federal, if you have what they call sister products or companion products those can be registered in the smoke arena. So, you can protect the brand at the state level, and then at the federal level you can register and protect any of the informational brands that you provide any sister products that you provide. As an example, vape is something that is legal and authorized across the federal government. If you had something that was similarly branded or exactly the same brand that you can protect that brand in that category but not specifically for cannabis.

If you building a brand in that arena the question once again is how do you protect it from being infringed or from other folks pretending that you are using your brand awareness and taking customers and monetary increase. When it comes to cannabis you will want to look at the state and do your registration protections in the state and anyone a look at the federal for any informational services ( example of a website that you’re producing information about cannabis) you can protect that brand that that website is under also any sister products so vaping, again anything that is not federally illegal, rolling papers and whatever goes with that product. The reason why this is I think so important is because especially in New York the purpose of the cannabis authorization law really is to undo (and this is information directly from some conferences I sat in on with those legislators that were writing the bill), to provide equity, and to do some repair for communities of color that were most harmed by the war on drugs and specifically the war on drugs when it comes to cannabis. Where historically there were families torn apart. There were what can be called excessive fines and excessive jail sentences for minimal quantities of cannabis. A lot of what this law is set to do is to ease some of those disparities created by the war on drugs. An important factor of the New York bill includes the expungement without a request of these crimes and then a licensing factor. The New York law has been written with a commitment to allocate 50% of the initial licenses to go to disparaged or communities of persons who come from those communities of New Yorkers who would’ve been targeted by the war on drugs have the opportunity to profit on people in this industry whether you’re for or against it is which is a multi-billion-dollar industry. People are becoming significantly wealthy through the authorization of the sale of cannabis. Anyone reading this and especially those that come from the communities that I come from, I want to make sure people understand that they can get in on this business if they want to and that there is a way to protect their brand in a multifaceted way. Just because you can’t just go to the US Patent and Trademark office today and obtain that registration there are still other steps you can do to protect your brand and I would encourage you to seek counsel or reach out to my firm would be happy to help.

 The intention is there to create equity so we need to be aware of how we can take advantage of that and what are the steps that we need to do as always to own our stuff. Wherever we are, whatever we bring into the business stream we want to make sure that we can protect that and that we can own it and then you know at some point maybe sell it, make a profit it, lease it, etc. As always, I hope this was useful.