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23 November 2020
As of 4 November 2020, four more states have voted to legalise recreational marijuana use for individuals aged 21 years and older:
Mississippi also voted to allow prescribed medical marijuana for people with certain conditions. While the specific regulatory frameworks concerning cannabis in these states have yet to be determined, companies involved in the cannabis industry should begin thinking now about what requirements exist to secure trademark rights for cannabis-related goods and services. Securing trademark rights within specific states where cannabis has been legalised is particularly important for cannabis companies, since federal trademark protection is not yet available in connection with cannabis itself.(1)
As new regulations in each of the above states take shape, the cannabis industry should keep in mind that in order to apply for trademark registrations, trademark use in the state will likely be a prerequisite before any state trademark registration can be obtained. A state trademark registration can put potential infringers on notice of a company's right to use the trademark in connection with its goods or services and be useful if a cannabis company needs to take legal action against infringers.
Cannabis companies can currently file for Arizona state trademark registrations involving cannabis goods and services because of the state's prior regulations allowing medicinal cannabis. To obtain an Arizona state trademark, applicants must pay a $15 filing fee and complete a trademark application. An applicant's trademark must be in use prior to submitting a trademark application in Arizona and the date of first use in Arizona must be provided. Prior to submitting an application, an applicant (or their attorney) should conduct an Arizona records search, among others, in order to ascertain the trademark's availability in Arizona.(2)
Under current Montana regulations, to file for a trademark an applicant must pay a $20 fee, plus an additional $20 per class if the application is for more than one class. Additional fees will apply if the applicant requests expedited processing. The application must be submitted to the Montana Secretary of State's Office. Among other information, the application requires the applicant to provide a specimen of use and the date on which the trademark was first used in Montana. Prior to submitting an application, an applicant (or their attorney) should conduct a search to ascertain the trademark's availability in Montana.
Under current New Jersey regulations, trademark applicants can file for a state trademark with the New Jersey Department of Treasury. To file for a trademark, the trademark must be in use within New Jersey, and the date of first use provided with the application must reflect the date on which the good or service was used in New Jersey. Applicants cannot provide a future date of first use in order to reserve a trademark. The current cost to file a trademark application is $50 per trademark class, with additional charges applying for expedited handling. A specimen of how the trademark is being used in New Jersey in connection with the good or service must be included with the application, as well as a drawing of the trademark. The application must be signed and notarised for it to be accepted by the state of New Jersey. Prior to submitting an application, an applicant (or their attorney) should conduct a New Jersey business records search, among others, in order to ascertain the availability of the trademark in New Jersey.
Under current South Dakota regulations, the fee for a trademark application is $125. Once the application is completed, it must be delivered to the Secretary of State's Office, along with the required filing fee. Among other information, the trademark application must include a specimen of the mark in use and a first use date in South Dakota. If the trademark is not in use in South Dakota prior to filing, the application will be rejected. South Dakota currently does not have a specific trademark framework for cannabis-related goods as legalisation has only just occurred. Prior to submitting an application, an applicant (or their attorney) should conduct a search to ascertain the trademark's availability in South Dakota.
Under current Mississippi regulations, the fee for a trademark application is $50 for Mississippi residents and $60 for non-residents. Applicants must complete an application form with the Mississippi Secretary of State's Office. The applicant must:
Applicants must also complete a notarised affidavit in connection with the application. Prior to submitting an application, an applicant should conduct a Mississippi records search, among others, in order to ascertain the trademark's availability in Mississippi.
For further information on this topic please contact Marcella Ballard, Kristen Ruisi or Maria Sinatra at Venable LLP by telephone (+1 410 244 7400) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org). The Venable LLP website can be accessed at www.venable.com.
(1) Under the current federal trademark framework, applicants can obtain federally registered trademarks for goods with a delta-9 THC concentration of no greater than 0.3% on a dry-weight basis which do not include cannabis, supplements or any products that are ingested.
(2) Arizona Trade Name and Trademark Handbook, Arizona Department of State, Office of the Secretary of State (January 2019).
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