The so-called “green rush” to profit from the recreational cannabis industry has been generating a lot of excitement — and professional billings — lately. Industry players are in a hurry to stake claims to market share and to various forms of intellectual property, all in advance of legalization later this year. But when it comes to selecting and protecting cannabis related brand names, the “green rush” is beginning to look like Rush Hour on the Don Valley Parkway.
Currently, there are more than 500 trademark applications pending in the Canadian Intellectual Property Office with “proposed use” claims for cannabis or cannabis-related goods or services that have yet to be examined. There are good reasons to have filed an application already or to be filing one now. The first person to file a proposed-use-trademark application gets priority over confusingly similar proposed trademarks and, let’s face it, there are only so many distinctive variations of CANN-, CANNA-, BUD, LEAF, GREEN, etc. Also, trademark applications can take 18 months or more to be processed. And the market for legal weed opens soon.
But a bottleneck is forming in CIPO that could leave many of these applications in limbo for years to come. This is bound to frustrate many cannabis businesses that are eager to settle on and secure rights in their brand names. There are several factors to blame.
First, CIPO’s trademarks office is already dealing with higher volumes and backlog because of the significant amendments to the Trade-marks Act that are set to come into force in 2019. The amendments include removing the requirement that a trademark be used in commerce before it can be registered. This has prompted a wave of speculators applying to register trademarks for every good and service under the sun with no intention to use them but who will be happy to sell them for the right price.
Second, with so many applications being filed concurrently for the same goods and services, there are bound to be conflicts that will need to be sorted out. CIPO reviews all trademark applications for a likelihood of confusion with trademarks in prior-filed applications. If a trademark is deemed confusingly similar with another that is the subject of an earlier application, CIPO will refuse registration. But the applicant will be invited to file submissions to overcome the objection. Its application is then reconsidered, which can create a bottleneck within a bottleneck.
It doesn’t end there. Applications that are approved by CIPO may then be opposed by other applicants or trademark owners. There may be strategic reasons for a brand owner to oppose a competitor’s application that have little to do with the merits of the opposition.
Third, CIPO is very particular — and increasingly so these days — about how goods and services are described in trademark applications. CIPO’s Goods and Services Manual is a reliable guide for describing a huge range of goods and services, but, not surprisingly, it is less helpful when it comes to new things — and old things that used to be but are no longer illegal to sell. For those things, CIPO may require time to determine what “ordinary commercial terms” it will accept (“weed” is unlikely to be accepted). Pending applications describing every imaginable cannabis-related product or service may be the subject of extended review. Many will be returned to applicants and their trademark agents for revised descriptions.
Meanwhile, cannabis brand owners still face uncertainty as to whether they will even get to use the trademarks they are seeking to register. While CIPO slowly processes their trademark applications, Health Canada is working on regulations to restrict the kind of branding that cannabis companies can use in association with their products.
While some things are clear — i.e., that you won’t be able to use KIDZ WEED or TONY THE TOKER to appeal to children (even if you register the trademark) — much of the proposed legislation is impossibly vague. For instance, a provision in the proposed Cannabis Act prohibits the use of a trademark that “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.”
In short, the “Green Rush” to secure cannabis-related brand names is a game of hurry up and wait. But this is to be expected in an emerging market of this scale and significance, at least in a country like Canada. And while many hundreds of cannabis trademark applications are already pending, it is not too late to get in on the fun.
In case you’re wondering, someone has already applied to register GREEN RUSH. But the application only covers “non-alcoholic fruit based smoothies.” So you might argue that GREEN RUSH for “topical and oral spray preparations containing cannabis, tetrahydrocannabinol or cannabidiol” is unlikely to be confused with it.
John Simpson is an intellectual property lawyer and the principal of Shift Law, an intellectual property and new media law boutique firm and can be reached by email @email@example.com.