Canada’s Legalization of Recreational Marijuana and Overhaul of its Trademark Law is Fueling Cannabis Trademark Registrations
Canada’s legalization of recreational marijuana and overhaul of its trademark law is fueling cannabis trademark registrations. But is it time for U.S. companies to follow suit?
Cannabis remains a Schedule I substance in the U.S. under the federal Controlled Substances Act (CSA). Cannabis businesses therefore often face difficulties securing federal IP protections, particularly with respect to trademarks. The U.S. Patent and Trademark Office (USPTO) has consistently refused federal registration of medical marijuana and other cannabis-related trademarks.
In addition to citing the CSA, the USPTO’s denials also rely on 37 C.F.R. § 2.69, which states that “[w]hen the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.” The Lanham Act governs U.S. trademark law and is empowered by the Commerce Clause, and so at the federal level “lawfulness” is denied and trademarks in the cannabis space are federally ineligible.
Cannabis Trademarks in Canada
Under Canadian law, it is possible to register a trademark for cannabis-related products and services. There are nearly 2,000 trademarks listed on the Canadian trademark register, with goods or services containing the word “cannabis” or “marijuana,” the majority of which were filed within the past two years. The number is expected to grow now that Canada has legalized recreational marijuana and amended its Trademark Act.
Effective June 17, 2019, Canadian trademark applicants no longer have to demonstrate use of the mark in Canada as a requisite to registration. In contrast, under U.S. trademark law, except in certain limited filings based on foreign registrations, to secure a registration applicants must be using the mark in U.S. commerce.
The change in Canada makes it attractive for companies to file trademark applications before they are ready to enter the Canadian market. For the U.S. cannabis industry, it also allows companies to begin protecting their brands even though it’s not currently possible to do so under U.S. federal trademark law.
Canada’s Cannabis Act Restricts Marketing
While it may be relatively easy to secure trademark protection for cannabis products in Canada, you may not be able to use those marks like you planned. Any use of the trademark must also comply with the Cannabis Act’s marketing rules, which are stringent. Specifically, it is prohibited to promote cannabis or a cannabis accessory or any service related to cannabis, including:
By communicating information about its price or distribution;
By doing so in a manner that there are reasonable grounds to believe could be appealing to young persons;
By means of a testimonial or endorsement, however displayed or communicated;
By means of the depiction of a person, character or animal, whether real or fictional; or
By presenting it or any of its brand elements in a manner that associates it or the brand element with, or evokes a positive or negative emotion about or image of, a way of life such as one that includes glamour, recreation, excitement, vitality, risk or daring.
Canada’s cannabis regulations also include strict labeling requirements. Each product label must include a standardized cannabis symbol that meets certain size, appearance, and placement requirements. In addition, mandatory health warning messages and THC content are required on all cannabis packaging.
Despite the above restrictions, trademarks can still be beneficial to cannabis companies in Canada and the United States. The expected growth in both markets is also expected to increase the number of “trolls,” which seek to register intellectual property before the rightful owner and then later attempt to extort payment to transfer the rights.
If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.
Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.
Does Your Homeowners Insurance Provide Adequate Coverage?
Your home is likely your greatest asset, which is why it is so important to adequately protect it. Homeowners insurance protects you from the financial costs of unforeseen losses, such as theft, fire, and natural disasters, by helping you rebuild and replace possessions that were lost While the definition of “adequate” coverage depends upon a […]
Understanding the Importance of a Non-Contingent Offer
Making a non-contingent offer can dramatically increase your chances of securing a real estate transaction, particularly in competitive markets like New York City. However, buyers should understand that waiving contingencies, including those related to financing, or appraisals, also comes with significant risks. Determining your best strategy requires careful analysis of the property, the market, and […]
Fred D. Zemel Appointed Chair of Strategic Planning at Scarinci & Hollenbeck, LLC
Business Transactional Attorney Zemel to Spearhead Strategic Initiatives for Continued Growth and Innovation Little Falls, NJ – February 21, 2025 – Scarinci & Hollenbeck, LLC is pleased to announce that Partner Fred D. Zemel has been named Chair of the firm’s Strategic Planning Committee. In this role, Mr. Zemel will lead the committee in identifying, […]
Novation Agreement Process: Step-by-Step Guide for Businesses
Big changes sometimes occur during the life cycle of a contract. Cancelling a contract outright can be bad for your reputation and your bottom line. Businesses need to know how to best address a change in circumstances, while also protecting their legal rights. One option is to transfer the “benefits and the burdens” of a […]
What Is a Trade Secret? Key Elements and Legal Protections Explained
What is a trade secret and why you you protect them? Technology has made trade secret theft even easier and more prevalent. In fact, businesses lose billions of dollars every year due to trade secret theft committed by employees, competitors, and even foreign governments. But what is a trade secret? And how do you protect […]
What Is Title Insurance? Safeguarding Against Title Defects
If you are considering the purchase of a property, you may wonder — what is title insurance, do I need it, and why do I need it? Even seasoned property owners may question if the added expense and extra paperwork is really necessary, especially considering that people and entities insured by title insurance make fewer […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Do I need to register my cannabis trademark in Canada?
Author: Scarinci Hollenbeck, LLC
Canada’s Legalization of Recreational Marijuana and Overhaul of its Trademark Law is Fueling Cannabis Trademark Registrations
Canada’s legalization of recreational marijuana and overhaul of its trademark law is fueling cannabis trademark registrations. But is it time for U.S. companies to follow suit?
Cannabis remains a Schedule I substance in the U.S. under the federal Controlled Substances Act (CSA). Cannabis businesses therefore often face difficulties securing federal IP protections, particularly with respect to trademarks. The U.S. Patent and Trademark Office (USPTO) has consistently refused federal registration of medical marijuana and other cannabis-related trademarks.
In addition to citing the CSA, the USPTO’s denials also rely on 37 C.F.R. § 2.69, which states that “[w]hen the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.” The Lanham Act governs U.S. trademark law and is empowered by the Commerce Clause, and so at the federal level “lawfulness” is denied and trademarks in the cannabis space are federally ineligible.
Cannabis Trademarks in Canada
Under Canadian law, it is possible to register a trademark for cannabis-related products and services. There are nearly 2,000 trademarks listed on the Canadian trademark register, with goods or services containing the word “cannabis” or “marijuana,” the majority of which were filed within the past two years. The number is expected to grow now that Canada has legalized recreational marijuana and amended its Trademark Act.
Effective June 17, 2019, Canadian trademark applicants no longer have to demonstrate use of the mark in Canada as a requisite to registration. In contrast, under U.S. trademark law, except in certain limited filings based on foreign registrations, to secure a registration applicants must be using the mark in U.S. commerce.
The change in Canada makes it attractive for companies to file trademark applications before they are ready to enter the Canadian market. For the U.S. cannabis industry, it also allows companies to begin protecting their brands even though it’s not currently possible to do so under U.S. federal trademark law.
Canada’s Cannabis Act Restricts Marketing
While it may be relatively easy to secure trademark protection for cannabis products in Canada, you may not be able to use those marks like you planned. Any use of the trademark must also comply with the Cannabis Act’s marketing rules, which are stringent. Specifically, it is prohibited to promote cannabis or a cannabis accessory or any service related to cannabis, including:
By communicating information about its price or distribution;
By doing so in a manner that there are reasonable grounds to believe could be appealing to young persons;
By means of a testimonial or endorsement, however displayed or communicated;
By means of the depiction of a person, character or animal, whether real or fictional; or
By presenting it or any of its brand elements in a manner that associates it or the brand element with, or evokes a positive or negative emotion about or image of, a way of life such as one that includes glamour, recreation, excitement, vitality, risk or daring.
Canada’s cannabis regulations also include strict labeling requirements. Each product label must include a standardized cannabis symbol that meets certain size, appearance, and placement requirements. In addition, mandatory health warning messages and THC content are required on all cannabis packaging.
Despite the above restrictions, trademarks can still be beneficial to cannabis companies in Canada and the United States. The expected growth in both markets is also expected to increase the number of “trolls,” which seek to register intellectual property before the rightful owner and then later attempt to extort payment to transfer the rights.
If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.
Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
