As of November 4, 2020, four more states have voted to legalize recreational marijuana use for individuals aged 21 years and older: Arizona, Montana, New Jersey, and South Dakota. Mississippi also voted to allow prescribed medical marijuana for people with certain conditions. While the specific regulatory frameworks concerning cannabis in those states will still need 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 is legalized 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 states above take shape, the cannabis industry should keep in mind that in order to apply for trademark registrations, trademark use in the state is likely going to 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 and/or services and can be useful if a cannabis company needs to take legal action against infringers.
1. Arizona
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 $15.00 filing fee and must complete a trademark application.2 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 other searches, in order to ascertain the availability of the trademark in Arizona.3
2. Montana
Under current Montana regulations, to file for a trademark an applicant will need to pay a $20.00 fee, plus an additional $20.00 per class if the application is for more than one class.4 Additionally, fees would be applicable 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 the trademark was first used in Montana. Prior to submitting an application, an applicant or their attorney should conduct a search to ascertain the availability of the trademark in Montana.
3. New Jersey
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 the good or service was used in New Jersey. Applicants are not allowed to provide a future date of first use in order to reserve a trademark. The current cost to file a trademark application is $50.00 per trademark class, with additional charges applicable for expedited handling. A specimen of how the trademark is being used in New Jersey in connection with the good and/or service must be included with the application, as well as a drawing of the trademark. The application must be signed and notarized for it to be accepted by the state of New Jersey.5 Prior to submitting an application, an applicant or their attorney should conduct a New Jersey business records search, among other trademark searches, in order to ascertain the availability of the trademark in New Jersey.
4. South Dakota
Under current South Dakota regulations, the fee for a trademark application is $125.00.6 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.7 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 legalization has only just occurred. Prior to submitting an application, an applicant or their attorney should conduct a search to ascertain the availability of the trademark in South Dakota.
5. Mississippi
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 identify the date the trademark was first used in Mississippi, provide specimens of the trademark in use, and state whether the applicant has filed an application to register the mark with the United States Patent & Trademark Office.8 Applicants must also complete a notarized affidavit in connection with the application.9 Prior to submitting an application, an applicant should conduct an Mississippi records search, among other trademark searches, in order to ascertain the availability of the trademark in Mississippi.10
[1] Under the current federal trademark framework, applicants can obtain federally registered trademarks for goods with a delta-9 THC concentration of not more than 0.3% on a dry weight basis for goods that do not include cannabis, supplements, or any products that are ingested.
[2] Arizona Secretary of State, https://apps.azsos.gov/apps/tntp/index.html?__cf_chl_jschl_tk__=c58db1f7016a076554f226226c5ba26294994a1f-1604505084-0-AXfE7InYfURutCZ1u6oXE7ya5Xs_Hoa0Ko-m_Nc5qm1pLs5tJyTuaoNIVMgSvEM8AjMS2wdECXB1VnweKp1iKI_-6_sU-w4pjV7C_fXrpWWkXfiXozVhfuALfSPZbnEVVyybJRoDR-U3k0nueQvNP2YW0M-z-wd1RRI6KlxJVjhCR3ITU8wxYcVcsb3xiYCeBu7oPuv9tS-59Ue98hUXKMtEGRrx0nuWuupYufuOjqSzbnj14ws45JI2ILZA1Ask3SXBPSnWDvIciMB-4I6748eBkmYmIxiEfsx05l0sfmfC.
[3] Arizona Trade Name and Trademark Handbook, Arizona Department of State, Office of the Secretary of State (Jan. 2019), https://azsos.gov/sites/default/files/BSD_Trade_Name_Handbook_v4_20190107.pdf.
[4] Montana Secretary of State, http://www.mtrules.org/gateway/ruleno.asp?RN=44%2E5%2E120 (citing regulation 44.5.120).
[5] New Jersey Department of Treasury, Division of Revenue and Enterprise Services, https://www.nj.gov/treasury/revenue/dcr/pdforms/tmsm01.pdf.
[6] South Dakota Secretary of State Trademark Application Instructions, https://sdsos.gov/Business-Services/trademark-name-registration/docs/TrademarkApplicationInstructions.pdf.
[7] Id.
[8] Mississippi Secretary of State Trademark Application, https://www.sos.ms.gov/FeesForms/F0023.pdf.
[9] Id.
[10] Mississippi Secretary of State, Trademark Search Database, https://www.sos.ms.gov/Applications/Pages/Trademark-Search.aspx.