Cannabis Brand Protection: USPTO Opposition Proceeding Securing National Trademark Rights

Matter Overview

A well-established cannabis brand operating under a distinctive word mark in multiple western states discovered that a competing operator had filed a federal trademark application for a confusingly similar mark. The competing application, if registered, would have blocked the client from obtaining federal trademark protection and created a colorable infringement claim against the client's existing state-level uses. The timing was critical: the client was preparing to expand into four additional states and had licensed its brand to a multi-state partner — a license that would have had no federal IP anchor if the competing mark registered.

Work Performed

Hoban filed an opposition proceeding before the USPTO Trademark Trial and Appeal Board (TTAB) within the 30-day statutory window following publication of the competing application for opposition.

The core challenge in cannabis trademark opposition proceedings is the ongoing federal illegality of cannabis under the Controlled Substances Act, which affects the available arguments. Hoban structured the opposition on two independent non-cannabis grounds: (1) likelihood of confusion with the client's pre-existing state registrations in California, Colorado, and Oregon under Section 2(d) of the Lanham Act; and (2) the applicant's bad faith in selecting a mark it knew was already in use — documented through archived trade show materials and industry publication coverage.

We took the applicant's deposition during the discovery phase, establishing that the applicant's marketing director had attended the same industry conference where the client's mark appeared on booth signage. This created a viable bad-faith record without requiring us to litigate cannabis commerce in federal proceedings.

Outcome

The applicant abandoned the application during discovery, before the trial phase. The client subsequently obtained federal trademark registration for its primary mark and a design variant, providing nationwide brand protection for its multi-state expansion.

Lessons Learned

Cannabis brands have more federal IP options than they commonly assume. TTAB proceedings can be won on likelihood-of-confusion and bad-faith grounds without triggering the federal illegality problem. The critical strategic move is filing the opposition within the 30-day window — missed oppositions result in published registration that is far more expensive to challenge.

Engage Hoban Law Group

Hoban Law Group advises cannabis and hemp brands on federal and state trademark protection, opposition proceedings, and IP licensing. [Schedule a consultation](/consultation?source=matter&matter_slug=cannabis-trademark-uspto-opposition-2024&matter_type=cannabis-intellectual-property).