Hemp Trademarking- Why You Cannot Own a Varietal Name

This article is reposted with permission from Danny Zlatnik, a lawyer licensed in California and Texas experienced with both cannabis law and intellectual property.  

As explained in a previous post to this blog, the name of a hemp strain cannot be a trademark. Strain names merely identify a plant varietal, and as the Federal Circuit has explained, a consumer

“has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.”

This is really just a restatement of the basic rule that no business can monopolize a merely descriptive term or a product name, even a name that the business makes up for the product.

Nevertheless, many businesses in the hemp industry attempt to claim strain names as their trademarks.

For example, multiple companies have attempted to register “Cherry Wine” as a trademark for hemp, even though those companies were actually using that phrase as a varietal name, rather than as a trademark.

The USPTO rejected one such application, pointing out that “CHERRY WINE is a strain of hemp.” In a recently filed response, the applicant argues that “there is no standard metric . . . for identifying such a strain as would be recognized by a horticulturist.” Rather than a strain name, the applicant argues that “[t]he Subject Mark (CHERRY WINE) is the name of the products.” That response misses the point and actually concedes that the mark is merely descriptive: Regardless of whether anyone recognizes it as a strain name, the applicant itself uses “Cherry Wine” as the name of a product. Product names cannot be trademarks.

While that application was pending, another company filed a very similar application for CHERRY WINE. (That company may have believed it has trademark rights based on its claim that it created the “Cherry Wine” strain to begin with. That may be true, but the origin of a varietal name is not relevant to whether it can serve as a trademark.) Predictably, the USPTO recently rejected the mark as “merely descriptive,” pointing out that “CHERRY WINE identifies a strain of hemp” and that “[v]arietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds.”

Other examples of failed attempts to register a strain name abound (e.g., BERRY EXOTIC, HAWAIIAN HAZE).

The lesson here is that trademark registration is not simply a matter of racing to the USPTO to register a word or phrase that you wish to have exclusive rights to, even if you were the first to use the word or phrase. Instead, the first question is, “Is this word or phrase even a trademark, so that my use of it gives rise to any exclusive rights to do so?” This is because registration does not create a trademark or grant you trademark rights. Rather, registration means that the government has recognized that you have a valid trademark and have established your exclusive right to use it.

March 25, 2020

Rod Kight is an international cannabis and hemp attorney. He speaks at cannabis conferences across the country, drafts and presents cannabis legislation to foreign governments, is regularly quoted on cannabis matters in the media, and maintains the Kight on Cannabis legal blog, where he discusses legal issues affecting the cannabis industry. Rod also has extensive experience representing clients through periods of financial distress. You can contact him here.