Copyright Protection as an Alternative to Trademarks: A Guide for Cannabis Businesses

As most companies are well aware, a well-known brand (aka a trademark) represents one of a business’s most valuable assets.  Companies spend thousands of dollars and countless hours developing a distinctive visual look, crafting the perfect logo, and devising ways to make their product packaging stand out from the crowd of competitors.  It’s only natural for companies to vigorously protect and defend this crucial intellectual property.

Restrictions of Trademarks for Cannabis Businesses  

For businesses outside of the cannabis space, federal trademark registrations serve as an important tool for enforcing ownership rights in a brand.  Registering a trademark with the United States Patent and Trademark Office (USPTO) expands enforceability across the country and provides nationwide priority over others using similar names.

Unfortunately, many cannabis companies struggle to avail themselves of this resource.  The USPTO refuses to register trademarks for goods related to the manufacture, distribution, dispensing or possession of cannabis and cannabis-based preparations.  This is because the USPTO will only register trademarks associated with goods in “lawful” commerce, which means that the goods must be legal under federal law. See TMEP §907.  Yet, cannabis, and its psychoactive component, THC, remain classified as Schedule I substances under the federal Controlled Substances Act (CSA). This impedes many cannabis companies’ efforts to protect their branding. 

An Alternative to Trademarks

However, fear not!  A different intellectual property right – Copyright – provides another outlet for protecting distinctive branding.  Copyright is defined as an “original work of authorship fixed in any tangible medium of expression,” and includes pictorial and graphic works. See 17 U.S.C.A. § 102.  For cannabis companies, creative elements of a logo, packaging and other product design elements may constitute copyrightable works. 

As with trademarks, a copyright owner may register their works with the federal government and expand their enforcement avenues against potential infringers.  In fact, copyright owners must register their works in order to sue infringers in federal court. Unlike the USPTO, however, the US Copyright Office makes NO inquiry into the business of the copyright registrant or the type of goods related to the copyright.  The Copyright Office simply weighs whether the applied-for work possesses a minimal degree of original, creative expression.  As mentioned above, in the case of cannabis branding, many unique and fanciful logos and packaging designs meet this threshold.  Savvy cannabis companies can therefore secure copyright registrations for their unique logos and packaging.  This provides an alternate means of protecting one’s branding against potential counterfeiters or copiers seeking to profit off of a business’s hard-earned goodwill. 

Limitations of Copyright Protection

In some ways a copyright covers a narrower scope of expression than a trademark, offering a copyright owner less grounds on which to protect their intellectual property. One can’t enforce a copyright against another company that copies the general look and feel of branding.  Generally, copyright infringement occurs when one impermissibly reproduces an exact copy of the original work.  And, not every piece of branding constitutes a copyrightable work – the Copyright Office will only register works that were created independently (e.g. without copying another work) and contain a sufficient amount of creativity. Typically, words, names, short phrases, and simple combinations of a few familiar symbols or designs do not possess the creativity necessary for a copyright registration.  Nonetheless, obtaining a copyright registration of distinctive and original branding can stand as a useful alternative for a cannabis company struggling to secure trademark registrations from the USPTO.

We at Rogoway Law Group advise many businesses on strategies to protect branding, packaging, and other intellectual property portfolio component.  In this context, we’ve helped many businesses secure copyright registrations for their distinctive logos and packaging.  Consulting an attorney about intellectual property issues represents an important practice for any business, so please don’t hesitate to contact us for an initial consultation.

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