Pot IP: California's Secretary of State Accepting Applications for Marijuana Trademarks

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Assortment of cannabis products sold in California. Credit: Jason Doiy/ ALM [/caption] In a nod to the recent legalization and regulation of a recreational market, California's Secretary of State is accepting applications for marijuana-related trademarksSam Mahood, a spokesman for Secretary of State Alex Padilla, confirmed that with last year's passage of legislation creating the framework for legal medicinal and recreational sales and adoption of emergency operating regulations, "the Secretary of State's office made the determination to register cannabis trademarks and service marks that are lawfully in commerce under California law."The registered goods and services must comply with all relevant state laws and the requirements set by California's three marijuana-licensing agencies, Mahood said."In this industry and particularly with a state as large as California, these trademark applications are a game-changer," said Shabnam Malek, a partner at Brand & Branch, who is also president of the National Cannabis Bar Association.With marijuana still illegal under federal law, the U.S. Patent and Trademark Office does not register cannabis or cannabis-related products and services. That's left states where marijuana sales and use are legal, including Oregon, Washington, Colorado and now California, to authorize their own trademark registries to protect intellectual property within their borders. Attorneys in California's emerging cannabis field have been lobbying state officials for trademark protections Malek called Padilla's decision “a really big deal." "This opens up a huge wave of protection for cannabis in California," she said.Malek said officials with the secretary of state's office notified cannabis industry attorneys late last year that the office would begin processing service marks on Jan. 2. Last Friday, those officials told Malek and others that they would expand the application process to products as well.Malek said a colleague of hers was in Sacramento on Jan. 2 with paperwork for the first applicants, including a marijuana distribution company,California has joined the ranks of marijuana-legal states creating their own industry rules even as the federal government threatens a crackdown. On Tuesday, 18 states' attorneys general, including California's Xavier Becerra, signed a letter to congressional leaders, asking them to back legislation that would provide a safe harbor to banks that serve the marijuana industry. Most banks still refuse to accept state-legal marijuana businesses as clients for fear of running afoul of federal money laundering laws."Congress has the power to protect a growing $6.7 billion industry and the public safety of our communities," Becerra said in a prepared statement. "My team at the Department of Justice is committed to implementing and enforcing the law in California in a way that most effectively protects the health and safety of our people.”The secretary of state's office received 127 applications for cannabis-related trademarks between Jan. 2 and Jan. 12 compared to 73 requests for non-cannabis marks during that same period, Mahood said. Mary Shapiro, an intellectual property specialist and founder of Evoke Law, said she doesn't expect an immediate crush of applications; most business owners have been overwhelmed just securing temporary licenses and getting ready for the Jan. 1 recreational launch.That may change, though, she said, as most businesses in the cannabis industry are "state-specific" and could seek protections through the new registry."When you think of California being the sixth-largest economy in the world, having a trademark application system is significant because you can stop someone from coming into California," Shapiro said.Separately, Padilla announced Tuesday that his office will now accept trademark registrations from all applicants online. Previously, paper applications had to be submitted in person or via mail.Read more:Cannabis-Industry Lawyer Raises Questions After His Bank Terminates AccountJames Cole's Marijuana Memo Just Got Revoked. Here's What He Thinks About That.Marijuana Dispensary, Pointing to Jeff Sessions, Seeks Immunity in IRS Audit CaseWe Asked 4 Marijuana-Industry Lawyers 4 Questions. Here's What They Said