Cannabis retailer and cultivator MedMen has filed a trademark application for the word “cannabis,” it was revealed recently. The application to trademark the word for use in connection with “T-shirts; Short-sleeved or long-sleeved t-shirts” was filed with the U.S. Patent and Trademark Office (USPTO) on October 3. Photographs included with the application depict graphic T-shirts with the word “cannabis” superimposed over photographs of MedMen dispensary exit bags held by models with cropped-out heads.

News of the application created a buzz on social media and among cannabis industry publications, with many lamenting a takeover of cannabis by big business and others wondering if the action by MedMen is simply a publicity stunt. I tried to get more information from the company but requests for comment sent to Daniel Yi, vice president of corporate communications, and Dan Edwards, senior vice president of legal affairs and the attorney who filed the trademark application, have not yet been answered.

Intellectual Property in the Cannabis Industry

We also reached out to Shabnam Malek, an attorney who specializes in trademarks and intellectual property in the cannabis industry at the law firm Brand and Branch in Oakland, California. Malek says that protecting intellectual property can be tricky in the pot industry.

“Protecting some kinds of intellectual property can be a challenge for cannabis businesses,” Malek said. “Trademarks present the biggest complication because in the United States to develop rights in a trademark you must be using the trademark in commerce.”

Malek said that trademarking the word “cannabis” is allowed. But the trademark has to be used in connection with goods or services that are lawful. Because of the federal prohibitions on marijuana, a trademark would not be granted for use with cannabis or cannabis products.

MedMen’s trademark application is for use in connection with T-shirts, however, a product that is perfectly legal.

“In theory, it’s entirely possible for somebody to get a registration of the mark ‘cannabis’ or the word ‘cannabis’ in connection with apparel,” said Malek. “It’s absolutely possible. Whether or not MedMen will successfully be able to do it is an interesting question.”

Malek explained that trademarks with the word “cannabis” are problematic because they are so popular.

“The problem with the word cannabis tends to be that everybody else is using a similar word in the cannabis industry so it’s hard to develop rights in that term– it’s not distinctive or unique in general when used in connection with cannabis goods or services,” she said.

So, for MedMen’s application to be successful, the company will have to be the first seeking to use the term in connection with T-shirts or similar products.

“Two identical marks, generally won’t be registered for use in connection with the same or highly related goods or services,” said Malek.

Malek conducted a search on the USTPO website to research other trademark applications for the word “cannabis.” Malek learned that more than 1,000 registration applications including the word “cannabis” have been filed with the USPTO. When she narrowed her search to include applications for the word “cannabis” alone, Malek found only 16. Of those, only four applications were considered active or “live.”

One was MedMen’s application filed last month. Another was for a stylized version of the word “cannabis” for use in stickers and a third company had registered its own stylized version of “cannabis” in connection with apparel. That application was suspended because of an approved registration for the mark “cannabis couture” for use in connection with “wearable garments and clothing, namely shirts.”

“Nobody appears to have just the word ‘cannabis’ registered in connection with apparel, but that’s neither here nor there,” said Malek.

“The general principle is when you have marks that are identical or substantially similar– in this case ‘cannabis’ and ‘cannabis couture’ are substantially similar– they probably won’t be allowed registration if the goods and services are the same or highly related,” she continued.

Will MedMen Succeed?

Because of the similarity, Malek doesn’t see much chance of MedMen’s application succeeding.

“What may happen to this MedMen trademark application is that it could very likely be initially denied registration because of this other registration for ‘cannabis couture’ and the prior suspended application,” Malek predicted.

Malek sees another potential problem in MadMen’s application in the photographs included with it.

“There is some chance that their application could be refused registration because the use of the mark is, what we would say, merely ornamental, or not used as a trademark,” Malek said.

Simply screening the word “cannabis” on the shirts might not be enough for a trademark if MedMen isn’t manufacturing the apparel, she explained.

“The point of the trademark is that it’s meant to convey to a person that ‘hey, we manufactured this good and it comes with a certain quality level,'” she said.

Whatever MedMen’s chances of trademarking the word “cannabis” are, we won’t know if they will succeed until late 2019. Malek says that the USPTO has a backlog of about 3,500 cannabis-related trademark applications and it is taking up to 11 months for a case to be assigned to an examining attorney.

And even if they aren’t successful in the end, MedMen is certainly getting loads of press for its $225 application fee.