“What can I do if I do not like the strain name provided by a producer? Can I change it when I sell it? Do I need to worry about trademark infringement of the producer and/or processor?”
Often retailers order a strain and they do not like the strain, or they believe it to be questionably close to another familiar product. Gorilla Glue, for example, is a common strain in the Cannabis field but also lends its name to an adhesive product that provides glue or tape products to the general public. It is not uncommon for retailers to find names that are potentially problematic and have questions about their responsibilities.
First, you cannot change the name of a strain that you find suspicious.
If you believe a strain is problematic for whatever reason – trademark infringement, vulgarity, misrepresentation, appealing to children, etc. – it is the absolute right of the retailer to reject the product. You are under absolutely no obligation to take product that a producer and/or processor sends.
Under WAC 314-55-010(19), lots must consist of the same strain and cannot be mixed unless there is a Cannabis mix product made.
Similarly, under WAC 314-55-077, producer and/or processor are the only licensees permitted to make packaging, not retailers. Under these WACs, retailers are not permitted to change the names of strains.
Second, it is important to remember that retailers can be held liable for trademark infringement as well as product liability just as much as the producer and/or processor. Many retailers believe that because the retailer is not creating the name and product, and in fact, they definitionally cannot have control over such things, then that relieves them of liability.
After all, under WAC 314-55-018, retailers cannot exert undue influence over producers and/or processors. However, retailers can be held liable for trademark infringement and product liability in civil matters, so it is crucial that stores keep a close eye on such products.
Be sure to keep an eye on strains that come into your store. Some may be appealing to children, promote over-consumption or use a trademark that may be unlawful. You cannot change the name of a strain, so it is best to verify strains before they are sent to the store or enact protocol where your staff is examining strain names as they come in.
HOW TO PROTECT YOUR STRAINS THROUGH TRADEMARKS AND CONTRACTS
I often get questions about how to properly protect the strains and genetics created by growers. All too often do problems arise surrounding the consistency of strains, not just by name, but also of the quality of the strain.
One then has the responsibility of providing a producer with the correct type of strain, but also ensuring that they are equipped with preserving the genetic quality of the generations of the plants to come. In other words, in order to protect one’s strain, one must take a hands-on approach to renewing the plants or replacing them with plants in order to keep the correct strain alive.
First, you have to be prudent about properly contracting around the terms of the genetic license. This means that if you wish to preserve the integrity of your strain, you must establish at the beginning of the contractual relationship that you are entitled to test the clones, plants and flower, to make sure the plants and buds are being held to a satisfactory standard.
Second, be sure to protect your trademark. Filing a state trademark means that you actually have to be in commerce in the state of Washington. Federal trademarks afford you broader protection geographically and also permit you to secure trademarks for marks that you intend to use. This means for federal trademarks, you don’t need to be in commerce at the time you file, but that you intend to.
This may seem to make a secure case for federal trademarks, but the complexity of establishing a federal trademark opens you up to competitors in other states who might have a similar mark as yours. In this sense, you want to make sure that your mark is different enough from others in order to make a successful trademark.
Finally, you may want to protect your trade secrets in any tissue culture procedures your company is using in order to ensure your strain is authentic. This means securing a series of non-disclosure agreements or confidentiality agreements in order to ensure that your methods of protecting your strains are proprietary and not publicly known. Those who fail to protect their trade secrets may find out later on down the line that such a failure waives their right to those methods.