Discover more from Sticky Bits by Lauren Yoshiko
Should I trademark my weed brand?
Three brands and a lawyer share their stories.
The Broccoli Report
February 12, 2021
Time to read: 15 minutes, 4 seconds. 3015 words.
To trademark or not to trademark? That is today’s roundtable question.
For starry-eyed entrepreneurs planning to cash in on the shiny, exciting legal cannabis industry, “intellectual property” might seem like dull legalese. It’s boring compared to novel scientific extraction methods or medical breakthroughs and a lot less fun than dreaming up new products or planning cool collaborative pop-ups. But protecting proprietary ideas and products through patents and trademarks can be a make-or-break detail that separates businesses that succeed from those that fail, and it’s a painful lesson to learn the hard way. In the discussion below, patent and trademark attorney Sheila Gibson breaks down common misconceptions and what to know about protecting what’s yours. Then, three cannabis-adjacent brands and a cannabis educator share their bumpy journeys regarding IP and what they learned along the way.
The Expert: Sheila Gibson, founder of Aura IP Law, a law firm specializing in intellectual property protection for cannabis entrepreneurs, innovators, and brands
I wish people knew that IP is an asset. More often than not, it is the most valuable asset in your company. It is more valuable than the computers and phones you purchased, your inventory, etc. Whether we’re talking about something you’ve invented, your brand name, or your trade secrets, your intellectual property is what will give you your competitive advantage in the market and what will drive up (or down) your valuation.
The number one thing someone starting a cannabis brand can do to ensure a strong IP position is to select a strong trademark. Entrepreneurs are often inclined to choose trademarks that convey to consumers features of the product or service. However, trademark protection is limited, if available at all, for these types of trademarks. Even where trademark protection is obtained for descriptive marks, it will be an uphill battle to protect these types of marks as others enter the market and are inclined to use the same or similar names.
The much better option is to start with a strong trademark, either an arbitrary mark (for example, Apple for computers or Dove for chocolate) or a fanciful or made-up term (such as Kodak or Pepsi). These types of trademarks are much easier to protect and enforce, and they are also much easier for consumers to distinguish among a sea of similar descriptive marks.
Once you’ve selected a strong trademark, you should research to see if anyone might be using the same or a similar mark. You can start by searching the USPTO trademark database, but you should also search the internet, social media, domain names, industry databases (such as Weedmaps), state business records, and anywhere else you might find others who might be using the same or a similar trademark.
The most common misconception is that the trademark process is simply a registration process whereby you submit your name to the trademark office, and they put a nice seal on it. The trademark process is actually an examination process. There is an attorney at the USPTO who will examine your mark, evaluate whether there is a likelihood of confusion with an existing mark, whether the mark is descriptive, and whether the goods or services violate any federal laws, among many other issues. Many trademark applications receive at least one refusal, which will need to be negotiated with the trademark office, sometimes with legal arguments. For cannabis trademarks, many issues need to be navigated. Most need to be navigated BEFORE you file your trademark application as there are some things in a trademark application that cannot be fixed after you file. So it’s very important that you consult with someone with specific experience in the cannabis industry to give your application the best chance of success to proceed to registration.
Another common misconception is that if you search the USPTO database of trademarks and do not see an exact match, that means it is available. The USPTO is an exact-match search only. It is not looking for phonetic equivalents, foreign equivalents, or similar meanings, but the USPTO examiner will be searching for all of these things. This is because trademark protection is not limited to exact matches but extends to anything that would be confusingly similar—that is, similar in sight (same or similar spelling), sound, (phonetic equivalents), and meaning.
You would never purchase a home and not immediately figure out how to secure it with locks, deadbolts, cameras, and/or a dog. Intellectual property protection includes a similar arsenal of options—patents, trademarks, copyrights, trade secrets, IP agreements—and each one provides business owners a different option to consider for securing their intellectual property. At a minimum, you should know what your intellectual property or competitive advantage is, know how it can best be protected based on your particular business model, and if you choose to forgo IP protection, be clear on why. Not all IP needs to be protected in every instance, but these are affirmative decisions that should be made with clear reasoning. I wish businesses would secure their intellectual property in the same way they secure their real properties.
Esther LeNoir Ramirez of Session Goods: Picking patents and picking battles when an award-winning bong design got copied.
In 2018, our small team officially debuted the Session Bong. We had conducted and compiled information from multiple focus groups and studies that we ran for two years and spent a lot of time thinking about the peripheral details by observing how people used the piece. Our goal wasn’t to design a bong but to create a better overall experience when interacting with a bong.
We began the patent conversations with our IP lawyers before we launched but technically didn’t have a full patent until 2020. We are self-funded, so our lawyers recommended that we first file a provisional patent, which is essentially a partial payment to the government acknowledging that we are planning on filing, so they will “hold our place in line.” Filing the provisional patent extended our deadline to claim IP and prevented others from filing a claim ahead of us. In 2020, we converted the provisional patent into both Utility and Design patents in the U.S., Canada, and the E.U. The E.U. application was the first to be approved. (The U.S. and Canadian offices' process tends to be lengthier, typically because a few amendments need to be made before final approval.)
We received a Facebook message asking if we had any affiliation with a brand called Pinnacle. The gentleman who reached out was kind enough to send some photos of the piece along, with a link to where he purchased it. It looked exactly like the Session at first glance, but with different colored silicone pieces and a Pinnacle logo. (We couldn’t find any trace of an actual brand operating under that name.) Our best guess is that someone likely saw the Session at a tradeshow and bought a sample. There have been minor tweaks made over the years to perfect the product, and the knockoff seemed to be based on the first version.
We looked into the eBay store that it’d been purchased from and found that a Virginia-based distribution company supplied them. We then tapped our network, looking to see if anyone knew the Virginia company. Alas, we shared no contacts. Our network advised us not to make contact directly without a lawyer, for fear we would be too aggressive in our tone and open ourselves up to a lawsuit. If the VA company felt threatened, a tactic they could use is to file suit before us, which would require Session to travel to their jurisdiction anytime there is a court date or meeting.
We have IP lawyers on retainer, and we asked them to send a cease-and-desist letter. They advised that if the VA company ignored the letter, Session did not have the legal authority to enforce anything at this stage (patent pending ≠ patent protected). We had three options:
1. File a new patent hyper-specific to our product (less likely to need amendments) and pay an expedited fee to push it through in six months, then send a letter; or
2. Do nothing, wait for the original patent to be approved, and then send a letter; or
3. Send a letter alerting the VA company that they were selling products that would fall under our IP protection once our patents are approved.
We moved forward with option three, planning on pivoting to option two if the VA company ignored us. We sent letters to both the eBay seller and the Virginia distributor. The eBay seller removed the listing immediately. We never received a response from the VA distributor, and they still have the knockoff on their website.
We've invested about $15K into each patent we hold. I am glad we filed the patents, but, looking back, I don’t think getting them faster would’ve changed the situation we are in right now. When it comes to IP infringement, it ultimately comes down to balancing the costs. Even with the documents protecting the IP on your side, enforcing any IP infringement is expensive. (Something I wish I knew at the beginning of the process was to ask the lawyer how many hours we should expect to be billed on top of the patent filing fees.) Seeing someone rip off anything you do sucks and can feel personal, but I am not convinced this VA company poses an immediate threat to Session’s success. We have to pick our battles.
Something I wish I knew at the beginning of the process was to ask the lawyer how many hours we should expect to be billed on top of the patent filing fees. It’s helpful knowledge, especially if you are budget-sensitive.
Calan Ma’lyn of GreenThumbEdu: Dealing with a cease-and-desist letter and working to build a happy ending.
When my mom had a debilitating stroke, GreenThumbEdu was born. What started as a whisper from a neurologist that “cannabis is medicine” became an obsession with finding a way to help people who were suffering. We grew into a community education company that works to connect people to cannabis in bite-sized ways.
We recently received a cease-and-desist letter from GreenThumb Industries (GTI), a cannabis brand and multistate operator with products, dispensaries, and thousands of employees working to sell cannabis. I didn’t realize they operated in my state (Pennsylvania) for years after starting GreenThumbEdu. I knew it was only a matter of time until they found me, but when I received that letter—on Martin Luther King Day, of all days—I was furious! They wrote that our names were too similar, and they didn’t want to have their customers confused. I said I’ll gladly change my name; I would hate for their customers to think they were supporting a Black-Woman-owned business.
After my fiery response (no regrets, haha), crying for a bit over all the things, and discussing what to do next with our new co-founder Caroline, I knew it was time to let go. We reached out to our community and made this news public: our name is changing, and we need your help coming up with a name. The outpouring began. Having a community is the biggest part of who we are! People fought for our honor and hard work; rebranding is expensive. Taking down everything that GreenThumbEdu has covered will take months, so people said something. Pioneers I’ve worked with in the space—including Dasheeda Dawson, Rachel Knox, Mary Pryor, Jane West, and Luke Anderson—supported me. I’m blessed to be surrounded by my more experienced cannabis brothers and sisters.
In a flash, I had a meeting set up with Michael, GTI’s corporate social responsibility director, to discuss what happened and see how we might work together for the good of cannabis. It was an amazing meeting. Michael apologized for what happened, and we spent a refreshing hour talking about the change we wanted to see in our cannabis world. We talked about opportunities to collaborate to help our veterans, other women of color, autoimmune individuals like myself, and more. He spoke of sponsorships and reach, that they would help me support me financially and within their network so I can become a louder platform to help others. I left that meeting in the happiest tears. GreenThumbEdu started as a way to help alleviate peoples’ suffering, and it looks like our new entity will be even bigger! Wow. Jessica Gonzalez, our new IP lawyer, said she’s never seen anything like this, and she’s hopeful for the future. Us, too.
Knowing what I know now, I would have come up with a more unique name. I would have spent the time to find something funky and different so that I could claim my space in the cannabis world without hitting up against these dumb capitalistic barriers. Then, I would invest in an IP lawyer, get trademarked, and keep building. I love everything that’s been happening, but every other cease-and-desist situation I’ve heard of is nothing like this. Larger companies don’t usually care about supporting the people that are close to their name. This was a glimpse of change. I’m just grateful we have this story, that we can do this together.
Support Calan and GreenThumbEdu by donating to the Make History Month campaign happening all February long. Funds raised will support employing local artists and advocates, training classes for educators and small businesses, and helping with the costs of the rebrand.
Eunice Kim of HiVi: Learning the gravity of product patents and legal representation while running her previous sneaker business.
I’m an accidental entrepreneur who learned all about building and managing a business by fumbling through it firsthand. While it feels like my journey with building HiVi has been such a breeze, I remind myself that the mistakes and triumphs from my first company helped me be more informed and smart about my business decisions now.
My first company was a womxn’s sneaker brand called Here/Now, and I started it as a side-hustle purely to earn some money to go on a lavish Paris vacation (never did make it to Paris, in case you’re wondering). I didn’t have a business degree or a fashion design background, but I was convinced this one sneaker design with furry pompoms would be popular enough to sell 200 pairs. Fast forward six months, and Here/Now was carried in Barneys, Bergdorf Goodman, Nordstrom, and Fred Segal. I was managing shipments overseas for thousands of pairs. It was a wild and successful ride, but there are so many things I wish I knew then about protecting my work and my business.
When I started Here/Now, I was a team of one, and I was frankly pretty clueless about what was essential to setting up a business foundation. Google and “asking friends” took me far enough to know that I needed to set up an LLC, have a decently working supply chain, some understanding of profit and loss reports, and enough capital to get it up and running. I wouldn’t have known that protecting my brand’s proprietary design details was important if my sister, an intellectual property attorney, hadn’t spoken up.
A few days before officially launching my website, my sister casually mentioned, “You should get a design patent for your sneakers. You never know.” We went through the steps to get the design patent filed, and I didn’t really think it would amount to anything. But, a few months into launch, I started receiving photos and messages from my network and customers that huge brands like Steve Madden and Sam Edelman were teasing sneakers with noticeably similar designs for their upcoming collections.
When I called my sister in a panic with my screenshots, I learned that this happens all the time to small independent businesses. These large companies take over and build upon the work and creations of smaller companies with little to no repercussions, because small businesses are strapped and have few resources to fight back. Being prepared for this by filing for the design patent pre-launch and having legal representation when dealing with the other companies was immensely helpful.
Having a lawyer to support me in navigating the legal system and going through all the searches, checks, and processes allowed me to focus my attention on building the brand. I know lawyers can be expensive, but as you do your research, you’ll find that some firms, especially those that focus on IP, want to support budding businesses and offer special rates and packages. When you are setting up a business, you may not even need a lawyer on retainer full-time, but only for specific things, like running searches to avoid potential issues with pre-existing brands or help with filings. I would recommend a candid conversation on the tasks needed vis a vis their rates and agree on the budget and scope. If it hadn't been for my sister, I probably would have paid $15K to file my patent and deal with copycats.
When I started to build HiVi, the first thing I did was call my lawyer! I wanted to make sure that “HiVi” as a business name wasn’t going to be problematic and conflict with an already established business or filed the name. The process of setting up the business and trademarking the HiVi name and cost about $5K. My experiences with Here/Now definitely made me more aware of potential problem areas that might need added protection. It is always better to prevent a problem and protect yourself than have to troubleshoot and fix an issue later.
My advice to other start-ups is to invest in protecting your company, your product, formulation, method, or techniques early on in your business journey. A smart patent can protect you from larger companies who are bullish about taking over small companies’ IP. Be mindful of timing if you’re looking to protect your IP after you’ve launched or started selling/marketing your work because there is a set timeline for protections. In the cannabis industry, we’re uniquely dealing with a constantly and rapidly changing legal landscape and a high growth period of constant innovation, new inventions and methods, and interesting new products. Every cannabis entrepreneur is a problem-solver with a new and unique solution, and that should be protected.
I’ll be back Monday with a look at cannabis’ new friends: other herbs humans have smoked for centuries, and the different ways licensed cannabis and hemp CBD brands are incorporating these plants into their products.