Brands urged to ‘cast a wide net’ for cannabis TMs: WIPR TM Live
Companies looking to enter the booming cannabis industry should “cast a wider net” when registering trademarks, according to a virtual panel discussion.
The WIPR Trademarks Live session heard cannabis IP experts discuss the challenges of trademark clearance in the cannabis industry, where they covered how to secure global coverage, navigating intent to use in the US, and how the best trademark teams are succeeding.
The panel—hosted by Malia Ladd, chief product officer at Corsearch—comprised Mary Shapiro, managing counsel at Evoke Law and Anna Arakelyan, manager of research operations US and cannabis clearance product expert at Corsearch.
The global market value for the legal cannabis industry was $24.6 billion in 2020 and has grown rapidly in recent years, with the value expected to reach $90.5 billion in 2027, explained Ladd.
This market growth is reflected in IP, where global trademark applications for cannabis-related products have been rising. Since 2015, the volume of trademark applications for cannabis, cannabidiol or CBD has grown almost 1,000%, with 2018 seeing the biggest rise (206%) compared to the previous year.
Branding considerations
Areas of commerce for cannabis are not as clear cut as in other markets and trademark clearance can be heavily impacted, said the panel.
Arakelyan explained: “Depending on what you are registering, you want to make sure you cast a broad net... With cannabis products in dispensaries, you can have the bud, bongs, infused oils, Sativa oils, food products, lotions and medical articles all next to each other.
“The cannabis market encompasses so many products, so you do not want your branding similar to any other branding in the space. Even outside of the cannabis market, if you are creating a CBD-infused lotion, you need to consider brands in that space too... You need to cast a really wide net.”
Assessing at the outset
With 52% of US Patent and Trademark Office trademark applications related to cannabis being declared invalid between 2015 and 2020, the panel highlighted the difficulties faced by companies looking to protect their brand in such a fast-paced environment.
Ladd said: “This recent industry growth presents huge opportunities for brands to reach new markets and consumers. However, navigating global trademark needs for cannabis related products still presents challenges.”
When asked how to best optimise trademark strategies across national, international and online means, Shapiro said: “You need to assess whether the jurisdiction will register just medical, or recreational use cannabis products, then whether it recognises just statutory trademark rights or whether it recognises common law rights, next you need to consider the channels of trade etc.”
Watch Challenges of Trademark Clearance in the Cannabis Industry here.
