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Trademarking marijuana and its products in the US and Canada

Posted on by trademarkangel

Both in the US and Canada, the current view of business owners and entrepreneurs in the marijuana industry is that they cannot protect the brands they use or brand their existing products related directly or indirectly to cannabis or its by‑products. The belief may present itself as well‑founded, but it is inaccurate! These ‘marijuana marks’ can be protected and it is advised to do so.

The protection of marijuana products and the marijuana mark demands an in‑depth knowledge of the rules and regulations formulated by the United States. A clear insight into the current position of the marijuana industry and where it will be in the future is crucial for the survival of any entrepreneurial venture or product in marijuana. It is critical to come up with a strategy for the protection of both marijuana and its related by‑products.

The legalization of Marijuana in California (or the golden state) momentarily uplifted the mood for both the users and the manufacturers in the weed industry. But the dawn of the new, more conservative presidential reign made its presence known by merely showering some empty threats. It should be kept in mind that selling marijuana and its related products legitimately in an illegitimate situation cannot be considered a healthy business ambiance.

There are several questions that were left unanswered with the shift in American administration that took place in the year 2016. One of these is the need of trademarking marijuana and its by‑products.

Issues with Trademark registration in the weed industry

The USPTO (or The United States Patent and Trademark Office) is the governing body in the United States that oversees all the applications for trademarks and patents. USPTO examining authority will refuse to register marks and provide rights to any individual or entity if the concerned party violates the ‘Lawful Use Rule.’ Violation of the Lawful Use Rule occurs when the application of the applicant is against the regulations of the federal law, i.e., the CSA (or Controlled Substances Act).

As per the rules set by the CSA, the distribution, manufacturing, processing or dispensing of certain controlled substances including marijuana and its by‑products is illegal. The production, distribution, dispersion or possession of certain controlled substances, including cannabis and preparations made with marijuana is prohibited under the Controlled Substances Act. Further, as per the regulations put in place by CSA, it is unlawful to sell infrastructure/property to carry out transport and commerce of drugs, drug processing equipment, bongs, vaporizers, marijuana grinders, etc.

USPTO Ban on registration of Trademarking marijuana

In simple words, the USPTO will not issue a registration to trademarks of marijuana and its by‑products. In the beginning, the governing body didn’t have such strict rules in place for the marijuana industry. After the herb was legalized in the state of California, officials at the USPTO kept their doors open for the entrepreneurs in the weed industry. The gavel hit the deck from the USPTO’s side when there was a sudden surge in incoming applications for registering trademarks for marijuana and marijuana‑based products. The inflow of applications was so high that at one point in time the officials found themselves buried beneath the paperwork that needed sorting and scrutiny.

The incident led the officials to close their doors for new applications pertaining to cannabis trademark registration for new companies in the weed industry. They subsequently returned the application fees to the respective applicants.

The USPTO is especially strict with trademark applications where the name of the trademarks suggests it has something to do with “marijuana”. So all “MARIJUANA”, “CANNABIS”, “BONG”, “WEED”, “CUSH”, “GRASS”, “DOPE” trademark applications are immediately under scrutiny and if there are any of the products in the application that have something to do with marijuana such as weighing scales, vaporizers and grinders. Most likely such a company may still receive an objection from the Trademarks Office if an examining attorney has suspicions that applicant doesn’t have genuine intention to use the applied‑for mark legally in commerce.

Case study

Across the United States of America, legalization is still a debated issue. While some states have already approved its consumption and usage, some states are thinking towards the legalization. Marijuana is fully legalized for both medical and recreational needs in the District of Columbia. Another 13 states have legalized the psychoactive medical marijuana. 12 more states have accorded decriminalized possession laws for medical marijuana and discrimination law while only 3 states and 2 inhabited territories.

Update (July 29, 2018): The Federal Government of Canada legalized the distribution, production, and sale of cannabis and its by‑products on July 1, 2018. Legislation for the same has been tabled and when the Government shared the news for the same to the public and media, the shares of Canadian marijuana companies skyrocketed.

As of October 17, 2018 it will be possible and legal to buy marijuana in Canada.

As per the analytical reports of the Canaccord Genuity in the later part of 2016, if the legalization process of cannabis is carried over within the proposed timeline, the country will be home to over 4 million legal users of marijuana. If the calculations were correct, the total market value of legal marijuana would be close to $6‑billion annually.

Canadian outlook on marijuana

When countries around the world are curbing the development of the marijuana industry, Canada is setting an example in this sector. They are building the necessary infrastructure to create business opportunities for marijuana entrepreneurs to conduct their business operations within the country legally. The United States poses several legal and financial barriers to the entrepreneurs in the marijuana industry. It is a direct result of the discrepancies amongst the different states of the United States that includes a lack of access to financial backing from the traditional banking systems. On top of that, the tax deductions and several other complicated laws within the United States Code sum up to make the US an unwelcoming destination for the marijuana industry.

The new and improved, more ‘hospitable’ business ambiance of Canada’s will undoubtedly lure in new investors and innovators to make the marijuana industry success.

The Federal Government of Canada allows the cultivation of marijuana through the hands of a controlled number of large‑scale growers. It is a practice that removes the middlemen or so‑called ‘dealers’ who previously serviced both the streets and the legal market.

Canada is the new and attractive destination for investors looking to invest their resources in the development of marijuana‑based products and by‑products for both medicinal and recreational use. By the summer of 2018, Canada is expected to fully legalize recreational marijuana, which will make it the first industrialized country to legalize and regulate marijuana from production to consumption.

In Canada, it is possible to obtain trademark protection for a trademark that is proposed to be used with marijuana and marijuana‑related goods and services. Recently there has been a huge increase in trademark applications for marijuana and marijuana-related products.

The situation in Canada is indeed a surprising story for both the users and the providers in the United States who have been struggling to get their trademarks registered with the USPTO. Even if weed is legalized in many states of the US, it is still recognized as a controlled substance under the United States Federal Law and as such, it is not possible to trademark.

Conclusion

The goal of this article was merely to emphasize the fact that trademarking marijuana is a substantial business opportunity for the future. It is still a sector for both the investors and the entrepreneurs where the shadow of competition and saturation still awaits. The trademarking marijuana and its by‑products are available in the United States. But the catch is, interested parties need to go through several channels of the Federal Government viz. common law, federal registration, and state registration.

The Marijuana industry is projected to become a $50 billion business sector by the end of 2026! It can only happen if the taboo of the herb is broken, subsequently taking the industry out of the shadows and into the mainstream.

Updated July 29, 2018

Steps To Follow When Starting Your Online Business

Posted on by trademarkangel

You’ve grown weary of attending to your 9‑to‑5 job as you do not foresee any prospects of career progression. You are very keen to go it alone by starting your online venture as you have seen many of your colleagues and friends strike gold by following that route. However, you have absolutely no idea on how to get started.

Since the time Internet emerged, online technology has progressed by leaps and bounds (and still continues to), rendering the process of incorporating a web‑based startup, remarkably easy. Nowadays, corporate organizations, as well as big and small brick‑andmortar businesses, need to have an online presence (read website) in order to be viable and competitive. Regardless of whether you want to turn your online venture into your chief source of livelihood or wish to develop the Online Business business as a secondary source of income, you can achieve success if you follow specific steps. 

A typical web‑based online business has some inherent advantages over an offline or physical commercial establishment that makes the former more lucrative than the latter. For instance, your incorporation and overheads costs are lower, you can make do with less staff at least in the initial years, and overseeing the entire setup is more manageable. Abide by the steps outlined below if you are sincere about beginning your online undertaking, increasing its visibility across the web, attracting niche traffic, and raking in the moolah which is what ultimately matters.

1. Company formation and registration with IRS/Canadian Revenue Agency

The entire process of registering and incorporating a new online business has become much easier in the present times. You do not have to fill up endless forms and documents, make endless visits to the respective authorities for submitting the transcripts, pay a small fortune as registration fees, and finally wait for the approval‑these formalities used to be de rigueur in the past. Though you can hire an accountant or solicitor for entrusting them with the formalities of opening an online startup, you can also do the work of the consultant yourself as the rules and regulations are easy to follow.

First of all, you’ll need to decide whether you want to opt for a partnership or sole proprietorship mode or wish to fulfill the obligations of a public or private limited company. Each and every form of business has its own advantages and disadvantages. At the end of the day, it is completely up to you to decide which route you will take depending on your preferences and requirements.                      

Once you are through with the first step, your next task will be to decide upon a company name. Make sure the name is something that has a good recall value. In other words, it should be one that you or anybody else for that matter can easily remember.

Thereafter, you will have to accumulate all the details required for registration including company name, business address, and nature of the online business, share capital details, shareholder(s) details, and company director details. The next step would be to prepare the Memorandum and Articles of Association (a must if the venture is a public limited or private limited company). Thereafter, you’ll have to register your business with the IRS for which you will have to log in to its official site www.irs.gov.

You will receive an online business registration number for the state you are based in. Once you click on the link for your respective state, you’ll be taken to the portal of the state from the IRS site. You get a registration number for your state and if you want you can also a federal EIN (Employer Identification Number).                         

In order to obtain both the numbers, just follow the steps listed below: 

  1. Click on your state’s link
  2. Furnish the relevant information as outlined in the application form for your state
  3. Thereafter, you will be landing at the IRS’s online application page for EIN registration
  4. Give additional info (if required) to apply for your EIN number
  5. Once you receive your EIN, check out of the IRS site
  6. Key in your EIN number in the application form for your state

In case you are a Canadian citizen (naturalized or residency), you’ll have to register your company with the Canadian Revenue Agency. There are four distinct CRA program accounts and you will have to apply to anyone for registering your startup by fulfilling BRO (online business registration) formalities. Once you are through, you’ll receive a business number which will lend a legal sanction to your venture. 

BRO can connect you with the sites of provincial programs for Nova Scotia, Ontario, and British Columbia. Log in at www.canada.ca for taking advantage of the BRO for registering your startup as a: 

  • Proprietor or owner
  • Third party petitioner
  • RepID or GroupID representative
  • Domestic worker, caregiver or babysitter employer 

2. Picking up a domain name and registering it

Once you decide on the commercial segment you wish to enter and are through with the company’s incorporation, your next response would be to register record your online firm’s domain name. Your sites URL (uniform resource locator) is its domain name which is unique as no other site owner can stake claim to the web address once you have registered it. Registering or recording the domain name of your web‑based venture is similar to patenting an offline business‑you become the sole owner of the online platform and enjoy specific intellectual property rights. 

You can apply for a domain from any of the several firms dealing with online domain registration. Many of these firms that are termed as domain name registrars run promotional offers from time to time that let you have a domain or several domains free of cost if and when you opt for a web hosting package. It is also recommended that one should avoid purchasing a domain from the hosting provider. It is better to have the hosting and domain account separated. However, always make sure that the domain or web address is registered under your name and not in the name of the registering company. 

If the domain is not registered under your name, you may not be able to lay claim to it in case you shift to another hosting firm in future. Alternatively, if you are entrusting the creation of your site to a professional web designer and developer, ensure that you buy out the sites domain and the hosting account. Much before you register the domain, you’ll need to select a title or name for the same. 

See to it that the domain name you eventually choose is unique and distinctive or in other words, no other site should have the same name. You can opt for your name if you wish to lend a personal touch to the product or service you would be promoting. However, if you find that somebody else already owns a domain by that name, you can tweak the name a bit by prefixing or suffixing another word, for instance, simongarfunkeltrainer.com in place of simongarfunkel.com 

Your other option, when it comes to choosing an exclusive domain name, is to base it on the purpose that the product or service is going to serve. A domain name that mirrors your online business niche will go a long way in attracting the customer segment you are targeting.

3. Website hosting

Once your web‑based startups’ domain name has been registered, you will have to book space on the servers of the hosting firm in order to host your e‑commerce site. Though many individuals register the domain with one firm and books server space with another, you are better off entrusting the tasks to one company. That way, you’ll be able to keep a leash on your overall costs as many firms offer free domain names when you subscribe to their web hosting packages. 

Before you select a hosting firm, check out the background of at least 4‑5 such companies. Also, compare and contrast the different hosting features they are offering like uptime scalability percentage, disk storage capacity, drag and drop site builder, subscription periods, optimization for email, and so on. Alternatively, find out if the firms are providing SSL security, e‑commerce and online marketing tools, feedback forms, and most importantly, round‑the‑clock customer support. 

There are many well‑established companies that provide a high quality of service with respect to website hosting like GoDaddy.com, Bluehost.com, JustHost.com, iPage.com, and WebHostingHub.com. Cloud servers or hosting has recently been popular for their security and ease of use. So exploring the hosting services provided by Linode or Cloudflare can be one of those options. Cloudflare also offers a free SSL certificate with each hosting account. 

4. Filing Your Trademark

Applying for a trademark should be your next step. Registering the brand’s trademark is essential not only because you invested so much time, effort, and resources to conceive a distinctive name, logo, and slogans but also to protect it from infringement by competitors.

If most of your business is done in the US, then protect your brand name in the US by registering your trademark with the US Patent and Trademark Office (PTO). 

If most of your customers are in Canada, start with registering your trademark in Canada. 

You can file your trademark yourself or ask for help. Hiring a trademark professional will help you to increase the chances of successfully registering your trademark while minimizing the stress. 

Remember: trademark registration is the cheapest form of protection you can get for your brand. 

5. Check to make sure you are not infringing on anyone’s intellectual property rights

If you are about to sell products, make sure that you are not infringing on anyone’s patent rights. Likewise, for literary, musical and artistic works, it’s useful to make sure that there is no copyright infringement.  If you are the creator, then you will own copyright, however, if not, make sure you have rights to sell these products.   With a name you give to your products, check to make sure you are not infringing on anyone’s trademark.

Very often people overlook intellectual property aspect of opening a business, which can cost them dearly.

6. Website design and development 

After your website has been hosted, your next response would be to design and develop the online business website that will be the firm’s online face. You can either build the portal yourself or outsource the project to a webmaster. In case you take the DIY route, you can take advantage of the multiple design and development tools (that are provided by numerous hosting companies free of cost) for creating your portal. 

There are many open‑sourced website building and blogging CMS platforms including but not limited to WordPress, Joomla, Drupal, and Magento that you can employ as well. WordPress is by far, the most popular CMS platform as it is not only remarkably easy to set up but also offers near unlimited templates that are compatible with customization as per your preference. You can also employ Adobes Dreamweaver for website creation but then you will have to be mentally prepared to devote the time necessary for mastering this tool which might take months. 

However, outsourcing the website design and development project to a professional design company or webmaster will ensure that you have an advanced as well as the user‑friendly portal. With so many design companies competing with each other for clients, you can get the job done without having to spend a ton. And if you can get your site designed and developed by a learner, a college student, for instance, you may have to pay even less.

While you get your site developed, bear in mind that both the visual and textual content of the portal equally matter. Also take note that if you entrust the project to a designer, you automatically own the sites hosting account as well as its domain name. Also before launching a website, it is a good idea to know where exactly its files are located. For easier management and understanding, WordPress is the best platform to build your site on. It is pretty easy to manage and make changes. Hence, it will be a lot easier for you to make new blog posts, change prices, add photos or changing sections without even asking a developer to take care of those. 

7. Promoting your site via online advertising and by hiring freelancer

Following the hosting of your online business website on the net, your main thrust obviously will be to amplify its visibility across all online platforms, including the automated social networking sites. Formulating an SEO strategy would be indispensable if you want to divert a high volume of traffic to your site. Search engine optimization would imply creating original textual content that elucidates the nature of your business and should be punctuated with relevant keywords that will be preferred by search engines crawler bots. 

SEO would also require you to take care of lots of other aspects including but not limited to uploading fresh blogs, PRs, guest blogs, creating profiles on Facebook, Twitter, Instagram, and LinkedIn, podcasting, advertising on Google, Bing, and Yahoo. A robust SEO plan will be instrumental in popularizing your site in a short period of time since it will be wishful thinking to expect users to log in to your site within a few days of its hosting. 

The focus should be on content marketing with the ultimate objective of publicizing the portal on social media. As you may not be in a position to invest in Google PPC of Facebook advertisements initially, you can hire freelance content writers. Another good strategy is to get popular bloggers write positive reviews in exchange for a free product or tickets to a movie. There are lots of online platforms where you can hire great freelancers at a fraction of the cost.

Online Business Conclusion: 

Once your Online Business business portal is up and running i.e. it has been hosted, there are several steps you can take to amply its footprints in the online realm. For instance, you can titillate users with a white paper imprinted with rebate coupon codes, freebies on purchasing a specific value of products, and so on. You can keep track of your site’s performance and growth by using analyzing tools like Google Analytics which is available for free. 

To say the last but not the least, you’ll have to give due consideration to aspects of taxation, accounting, legal matters, and banking.

When should I not file a trademark?

Posted on by trademarkangel

This may seem like an odd question to ask, but it’s a good one to consider when beginning your journey into a trademark registration territory. Trademark Angel is here to help guide the way!

So, you shouldn’t file you are a trademark if:

  1. You haven’t searched the availability of the mark first

Filing without searching can be a surefire way to get into trouble. It’s like driving down a highway without any headlights. It’s often the case that you’ll make it all the way to the USPTO examiner (a potentially lengthy process all on its own) before he or she cites a prior registration as an obstacle to your own registration goals. What a waste of your business’ time!

In fact, even if your application makes it all the way to official registration. Third parties still have another five years to petition for cancellation based upon prior use. This is why it’s always better to search the availability and potential success of your proposed trademark before beginning the process of registration.

While an initial trademark search may be done on the USPTO website. It’s a good idea to consult with a trademark professional before looking into the use of a potential logo.

  1. Filing may prompt an unwarranted objection

You may not know this, but trademark applications are a matter of public record.

This means that many sophisticated trademark owners hire “watching services” to keep an eye out for any new trademark filings that infringe upon their own trademarks!

Sometimes, it’s best to fly under the radar; not filing a trademark won’t give you the same benefits as official registration. But it does allow you to keep some of the bigger businesses off your back!

  1. The mark is too descriptive, generic or scandalous

Remember: the Trademarks Office may refuse registration of a mark that merely describes an ingredient, quality, characteristic, function, feature, purpose or use of your particular goods and/or services. A seasoned brand lawyer will be able to help with this: they can often point out when a mark might be flagged as too descriptive or generic, and prompt you to come up with something more distinctive.

Example of a descriptive trademark: SUPER GROW within the fertilizer market.

Exception to the rule: Descriptive trademarks may be registered after a period of extensive use. A good example is BEST BUY.

It’s also important to note that, in the US, descriptive marks can be registered on the Supplemental Register if they are already in use (and can be proven as such) in a US-centric marketplace.

On the other hand, scandalous or deceptive marks can likewise be flagged, in which case a trademark lawyer could point out the respective issues and assist you in coming up with something more registrable.

Example of a deceptive trademark: ALL BRAN for cereal that does not contain any bran.

Examples of scandalous trademarks: DICK HEAD for restaurant services; JACK-OFF for adult entertainment.

  1. The anticipated lifespan of the mark is short lived

You should know that the earliest that one can expect a registration to be officially issued is about six months after a successful filing. This does not take into account any potential objections to the registration, or whether or not the proposed label is already in use. Either of these variables can mean a considerably longer registration time than anticipated.

This means that, if the intended use of the mark is limited in duration, there may not be much value in spending the resources to file an application. Although registration provides many important benefits, the trademark owner may simply rely on “common law rights” which come from using the mark in the sale or provision of goods or services.

  1. The trademark owner already owns a similar registration

It is not necessary to register a mark for everything under the sun. In the U.S., the “related goods” doctrine often protects goods and services that are closely related to current trademarks by the same company.

For example, if an owner has a trademark for t-shirts. It may not be worth filing a new application to register that same mark for sweatshirts or hooded shirts. In fact, if a third party started selling sweatshirts under the same mark, it would likely be considered trademark infringement; consumers would realistically expect the goods to come from the same source!

There are many other instances in which applying for trademark registration may not be necessary or advisable.

However, registering a brand is often the most prudent way to maximize brand value and minimize risk conflict, especially with competing businesses. In these cases, a trademark professional can provide you with the pros and cons of your particular trademarking goals. Which means you get to spend less time worrying about trademark registration and more time running your business.

Trademark Angel is here to help.

Please feel free to contact us, no obligation. With any questions about the possibility of logo registration for you and your growing business!