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[WINTER LLP WARNING] Breaking News: SOS now accepting trademark applications for cannabis products

Hello all,

As you may have seen announced, California is now (allegedly) accepting trademark applications for cannabis products.

PLEASE BE ADVISED, we have been in constant contact with the CA Secretary of State and it is painfully clear that they have no idea what they are doing. None whatsoever. So, although it may seem tempting to apply for these state based trademarks, we are not recommending clients proceed with the California based trademarks at this time. Rather, we are advising on a wait and see approach. It’s going to be very messy…

However, if you want to proceed, please see the following:

State CA Trademarks:

Through our internal office discussion, we still believe that federal trademarks offer the strongest brand protection for your cannabis-related goods/services. That is because only with federal registration you are allowed to use ® (only can use ™ for State registration), and federal registration preclude later filed state registrations.

If you are still reading, and still want to proceed, we spoke with the Secretary of State’s Office earlier today and they indicated that cannabis-related marks may be registered with the CA Secretary of State so long as (1) the mark is lawfully in use in commerce within California; and (2) matches the classification of goods and services adopted by the United States Patent and Trademark Office. Additionally, only cannabis products that are allowed in CA regulations will be trademarked.

Currently prohibited items include but are not limited to:

  • Products that contain alcohol, nicotine, or added caffeine
  • Products that must be held below 41 degrees Fahrenheit
  • Vacuum packed products
  • Canned cannabis products
  • Cannabis-infused juice
  • Products that are easily confused with non-infused products
  • Edibles in the shape of human, animal, insect, or fruit
  • Most dairy and meat products
  • Cannabis related products that are attractive to children
  • Products that resemble traditionally available food packages
  • Products that exceed the maximum of 10 mg of THC per serving and 100 mg of TCH per package.

PLEASE BE ADVISED, there is NO classification of goods and services for cannabis in the USPTO system!! The State Office said we would have to use the “most appropriate USPTO class” for the cannabis product/service. Our most commonly used trademark classes have historically been in Class 003 (essential oils); Class 005 (herbal supplements) and Class 34 (smoking articles, cartridges, oils), and other food or candy related classes in applying with the USPTO. So our likely strategy with applying with the State will be to add THC/CBD to the description of goods in the aforementioned classes, i.e. “essential oils containing THC; herbal supplements containing THC; cartridges infused with THC/CBD, etc.”

Please contact our office if you are still interested in proceeding, and we will help you as best we can. But please note, we will probably try to convince you to file directly with the USPTO instead.

Thank you. Todd Winter, WINTER LLP.

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