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09.15.21

Pathways to cannabis brand protection in New York State

BY , , Kristen Mollnow Walsh

Although New York became the 15th state to legalize recreational adult-use cannabis in late March 2021, it took the State Senate until early September 2021 to appoint and confirm Tremaine Wright Chair of the New York State Cannabis Control Board and Christopher Alexander Executive Director of Office of Cannabis Management. These confirmations, which were spearheaded by newly appointed Governor Kathy Hochul, reflect her drive to get New York's cannabis industry up and running as quickly as possible.

Despite recreational adult-use cannabis being legalized in New York, only cannabidiol, or CBD from hemp, is legal at the federal level. Moreover, the updates to the 2018 Farm Bill left an opening for the FDA to continue to regulate CBD products that are ingestible or medicinal. Therefore, cannabis brand owners remain precluded from seeking federal trademark protection, even if their products are legal at the state level.

So what, if anything, is new for brand owners? Cannabis brand owners already providing goods in New York State should seek state-level trademark protection for their now-legal products containing cannabis, CBD from marijuana, or any other type of medicinal or ingestible CBD products. Where federal protection is not available and until federal law changes, it is important to file state trademark applications as early as possible to protect the brand to the degree available and for use for state-level enforcement. Even though state filings do not have the same benefits or provide the same statutory rights as federal protection, they are a critical first step in building protection for cannabis brands as the law continues to evolve. State applications are also often processed and register faster than federal registrations and are also less expensive. Importantly, most state trademark registrations are found by third parties when conducting searches of trademark databases. In these instances, the state registration can act as notice of ownership of the mark as well as a deterrent for others seeking to adopt a similar mark. Whether or not one pursues a state filing, utilizing the symbols ™ and ℠ in the upper right-hand corner of a mark can provide another level of ownership notice as well as deterring others from using a similar mark in the CBD and larger cannabis industry.

Simultaneously, any ongoing or new businesses that provide non-medicinal, non-ingestible CBD products (derived from hemp with less than 0.3% THC on a dry-weight basis) in interstate commerce should continue to file for federal protection for their brands. This approach includes working with marketing professionals and attorneys to develop a broad trademark strategy aligned with the patch work of state laws, unless or until such time as additional cannabis products are federally legalized.

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Lauren J. Arnold

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Kaleigh Morrison

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Kristen Mollnow Walsh

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