What is the Process for Trademarking Cannabis Cultivars?

December 14, 2022 steven

Amendments to the Canadian Trademarks Act in 2019 make it easier for cannabis growers to get their strains into the Canadian market and take them globally.

Cannabis cultivators in Canada can now apply for a trademark, even if they haven’t entered the Canadian cannabis market. Additionally, non-traditional marks like scents, tastes, and textures may be registered as well.

Dave Ward, a grower in Tofino, B.C., has 60 cultivars on the go and a few he’s currently working on trademarking.

“I’d say our Banana Candy is what we’re most known for,” says Ward. “I hope by next year we should be able to market to LPs.”
A registered trademark not only helps consumers pick out high-quality cannabis products from the crowd, but it also protects products under law from exploitation by others. This can go both ways.

In 2021, well-known restaurant Subway took cannabis store Budway to court and won. The case showed the swift and serious consequences for companies that use parody trademarks to build their brands on the backs of established businesses. Similarly, in 2020, Herbs ‘R’ Us Wellness Society lost a trademark battle against Toys ‘R’ Us.

How to get a Canadian Trademark Registration for your Cannabis Strain

Trademark approved stamp

A trademark is a combination of letters, words, sounds, or designs that will distinguish your cannabis strains from those of others at the local pot shop. Considering this, the more generic your trademark, the easier it is for others to claim as their own. In the cannabis industry, avoid using extremely common terms such as “green,” “420,” and “Mary Jane.” The more distinctive your trademark, the more difficult it will be to copycat.

Let’s look at how to trademark your cannabis cultivar in Canada.

First, search the Canadian Intellectual Property Office (CIPO)’s Trademark Register for pending and registered marks that could be considered “confusingly similar” to your label. Then search the internet to ensure your trademark idea is available for use and registration.

Next, apply to the CIPO along with a cheque for $336 (to cover government filing fees). A trademark examiner will then review your application and search the Register for any marks that are considered “confusingly similar.” Any shortcomings must be resolved before CIPO will accept the application.

Finally, the CIPO will then advertise your application in the Canadian Trademarks Journal for two months. If no one opposes your application, it can proceed to registration.

The updated Trademark Act also allows growers to file centrally for registration in 120 countries while relying upon a foundational Canadian application. This is called the Madrid Protocol.

Regulations still limit the frequency of cannabis trademarks on the packaging, as well as the size of the logo text, the color scheme, and the potential influence of the mark to minors. Most applications in Canada are processed within 18 to 24 months.

Challenges with Trademarking Cannabis in the United States

With so much red, white, and blue tape, trademarking cannabis strains in the U.S. is anything but a green light for growers.

The U.S. Patent and Trademark Office (USPTO) issued guidance in 2019, stressing trademarks must be “lawful” under federal law.

However, while trademarks for cannabis cannot be federally registered, CBD products containing no more than 0.3 percent THC are legal under the 2018 Farm Bill.

Even if cannabis growers encounter issues with registering their strains, it may be possible to apply for trademark registration in states where cannabis is legal. Growers in the U.S. should also consider filing their cannabis-related trademarks in Canada.

While a Canadian registration only establishes rights in Canada, it may enable a U.S. cannabis grower to challenge a brand copycat if it can show American consumers are familiar with the mark in Canada.

Conclusion
Although many growers would rather deal with rolling papers than paperwork any day, trademarks are important to cultivators in an increasingly overgrown cannabis market. Not only will they protect your unique strain, but over time, the trademark will protect your reputation.

Consumers of all products like what they know and trust.

“I think hard work is the path to all things worthwhile,” says Ward.

Despite the lengthy paperwork fill process, there are more than 5,000 cannabis-related trademarks currently pending at CIPO.

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