Although adult-use cannabis has been legal in some states for over a decade, starting with Colorado, Washington, and California, federal law continues to classify cannabis as a Schedule I controlled substance. As a result, cannabis businesses face a unique challenge: they cannot register trademarks for cannabis goods or services with the United States Patent and Trademark Office (USPTO).
Despite that hurdle, brand protection remains a priority for cannabis businesses. Trademark rights are central to brand identity, market exclusivity, and long-term value. Without access to federal trademark protection, cannabis brands have had to get creative.
State Trademark Registrations: A Limited Tool
Many states that have legalized cannabis allow for the registration of trademarks at the state level. These registrations offer some level of brand protection, but only within the borders of the registering state. More importantly, federal trademark law preempts state trademark rights.
If and when the USPTO begins accepting applications for cannabis goods and services, these state-level rights could be pushed aside by federally registered marks.
Nonetheless, cannabis companies often pursue state trademarks as a temporary measure, while they prepare for eventual federal legalization.
Positioning for Federal Registration
Because many in the industry expect federal legalization at some point, cannabis brands are proactively laying the groundwork for future USPTO registrations. The goal is to ensure that, when cannabis-related applications are finally accepted, existing trademarks held by these companies serve as a basis to block competitors.
This is where knowledge of key trademark doctrines becomes essential.
Disclaimer: Federal legalization of cannabis has not occurred, and there is no clear timeline or guarantee that it will happen. As a result, the USPTO does not currently accept trademark applications for cannabis goods or services that violate federal law. If cannabis is legalized in the future, the examination process, applicable standards, and USPTO policies governing such applications remain entirely uncertain. Any strategies discussed are based on current law and educated predictions, and their effectiveness cannot be guaranteed if and when the legal landscape changes.
Likelihood of Confusion and the Natural Zone of Expansion
One of the main grounds for refusing a trademark registration at the USPTO is likelihood of confusion. This doctrine assesses whether the applied-for mark is so similar to an existing registered mark that consumers would likely believe the goods or services come from the same source.
The USPTO considers several factors in this analysis, including the similarity of the marks in sound, appearance, and meaning, as well as the relatedness of the goods or services.
The goods or services do not need to be identical. Confusion can still be found if they are complementary or commonly offered by the same type of business. The goal is to prevent consumer misunderstanding and to protect the integrity of existing trademarks.
The natural zone of expansion doctrine can also influence USPTO examination, particularly when assessing whether a newly filed trademark application is likely to cause confusion with an existing registration.
During examination, the USPTO evaluates not only whether the goods or services listed in the new application are identical or closely related to those in an existing registration, but also whether they fall within the natural zone of expansion for that registrant.
If consumers would reasonably expect the existing brand to expand into the applicant’s market, the application may be refused on likelihood of confusion grounds, even if the goods or services are not identical.
A cannabis brand’s application could be refused if its goods are deemed to fall within the natural zone of expansion of an existing federally registered mark, such as one for hemp products or smokers’ articles, especially where the branding and commercial context suggest a strong connection between the markets.
USPTO Strategies: Class Selection and Disclaimers
Many cannabis brands have filed federal applications for goods in Class 034 (smokers’ articles) as a placeholder. Others have filed for goods that are federally legal but closely resemble their cannabis offerings, such as hemp-derived products that contain less than 0.3% THC. These applications often include a disclaimer stating that the goods do not contain cannabis or are not intended for cannabis use.
The long-term effectiveness of this strategy is uncertain. It remains to be seen whether the USPTO will treat these cannabis disclaimers as distancing the registrations from cannabis entirely, or whether they will be close enough to support an argument under the natural zone of expansion doctrine.
Including “Cannabis” in the Registration
Some brands have found ways to include the term “cannabis” in their goods or services descriptions by focusing on offerings that do not involve the sale or handling of cannabis itself.
One common approach is to register trademarks for educational or informational services under Class 041, which covers services such as online publications, blogs, and training programs.
For example, a brand might obtain a registration for an informational website that provides articles or resources about cannabis culture, product types, or industry developments. Because these services do not involve federally prohibited substances, they often avoid the need for cannabis disclaimers and may create a clearer connection to cannabis-related goods and services in the future.
Building a Trademark Portfolio: A Layered Approach
The most comprehensive brand protection strategies rely on multiple components:
- State registrations for cannabis goods and services
- Federal registrations in related or adjacent classes, often with disclaimers
- USPTO filings that specifically reference cannabis in the goods or services description, where permitted
There is no one-size-fits-all answer. The best strategy depends on the brand’s existing activities, business goals, and long-term outlook for federal legalization.
Planning for the Future
Until the USPTO begins accepting cannabis trademark applications, we cannot say for sure which strategies will offer the strongest protection. But proactive planning today could make all the difference tomorrow.
If you are looking to position your cannabis brand for long-term success, Seligson Law can help. Contact us to start the conversation about building a trademark strategy that works for you.
FAQs
1. Can cannabis businesses register trademarks with the USPTO?
No. Because cannabis remains federally illegal under the Controlled Substances Act, the USPTO will not currently register trademarks for cannabis goods or services that violate federal law.
2. What protection do state trademarks provide for cannabis brands?
State trademarks offer protection within the borders of the registering state, but they are limited. Federal trademark law preempts state law, meaning state-level rights may be overridden once federal cannabis trademarks are accepted.
3. Why should cannabis companies think about federal trademark registration now?
Even though cannabis trademarks are not yet accepted, many businesses are laying groundwork so they can file quickly once legalization occurs. Positioning early may help block competitors and secure stronger brand rights in the future.
4. What strategies are available to cannabis brands at the federal level today?
Brands often register marks for federally legal products like hemp-derived goods, smokers’ articles, or educational services. These filings may include disclaimers clarifying that the goods do not contain cannabis.
5. What is the “likelihood of confusion” and how does it impact cannabis trademarks?
Likelihood of confusion is a USPTO standard for refusing applications if a mark is too similar to an existing one. Even if cannabis is legalized, applications could be rejected if the goods fall within the “natural zone of expansion” of an existing brand, such as hemp products.
6. What is the best way to protect a cannabis brand’s trademarks now?
The strongest approach is layered: pursue state registrations for cannabis products, federal registrations in adjacent classes (like hemp or smokers’ goods), and registrations for cannabis-related services when possible. This positions a brand for stronger protection if federal law changes.
About the Authors
Richard Jordan is an attorney at Seligson Law P.C., where he focuses on intellectual property and cannabis law. He is the primary author of this article.
Kenneth Seligson, principal at Seligson Law P.C., co-authored this article and provided additional insights on trademark strategy.
