As the legal cannabis industry continues to grow, companies need to understand the ever-changing landscape of intellectual property law and how to protect their products. Here, we provide a brief overview of how the plant’s unique legal status affects patents and trademarks, as well as how these issues may affect commercial operations.
A patent protects new and non-obvious inventions and gives the patent’s holder an exclusive right to the invention for a limited period of time. Patents may cover a wide range of things from plant varieties and cultivation methods to extraction techniques and infused products.
On the other hand, a trademark is a symbol or words used by a company or individual to identify their goods or services. A trademark gives the owner exclusive rights to use the mark in connection with certain products or services.
Both patents and trademarks are important tools for protecting products and brands, but there are limits on the rights they confer given the federal ban on cannabis.
Patents
Even though companies cannot patent “drug paraphernalia,” which comprises products used to produce, conceal, or consume federally illicit substances, there is an exception for products that primarily are intended for legal uses. For example, products intended for use with tobacco may be patented, even if they also potentially could be used for cannabis consumption. In fact, a lighter holder received patent protection because its components traditionally were used for tobacco, even though the patented product was advertised and marketed for use with cannabis.
Takeaway: Companies that produce or sell products that can be used for tobacco and cannabis may be able to patent those products, despite how they’re used in the market.
Some other good news is that cannabis companies likely can assert their patents despite the federal ban on the plant if the patents are broadly drafted. In one patent case, the court found a patent holder could assert its patent for extracting oils from cannabis plant material because the process also could be used for extracting legal hemp. As written, the patent was not limited to cannabis; instead, the text only mentioned plants generally.
Takeaway: Companies considering patents should seek broad ones that cover federally allowed applications and avoid specifically limiting their application to cannabis-related products or activities.
Patents may also cover genetically modified organisms, meaning cultivators may be able to receive patents on human-modified cannabis plants. This protection includes the major advantage of being able to prohibit others from cross-breeding or reproducing the modified strain.
In addition, patent protection may be available for new chemical compounds derived from or based on cannabinoids. Companies that create their own unique strains or cannabinoids should strongly consider patenting these formulations to protect their investments and prevent other companies from copying their proprietary technology.
Trademarks
Obtaining trademarks also can be tricky, because products containing THC derived from marijuana are illegal under federal law. The general rule is that companies cannot obtain federal trademarks in connection with cannabis products. Nevertheless, there are ways to obtain some kinds of trademark protection.
Unfortunately, companies cannot receive trademarks for products that are considered drug paraphernalia. But, similar to patents, goods that generally are used with tobacco are not considered drug paraphernalia and can receive trademark protection, even if there are alternative, cannabis-related uses. Companies are not required to identify all existing or potential unlawful uses of products that also have legitimate and lawful uses. So, a company could trademark brand names for rolling papers and smoking accessories that are intended for cigarettes even if those products also could be used with cannabis.
Courts have ruled companies may procure trademarks for providing information related to cannabis and related products. For example, companies have secured trademark protection for websites providing information about the plant and strains, as well as for providing consumer information about companies that deal in marijuana products or services.
It’s clear companies cannot file for trademark protection now for products they intend to sell in the future, hoping the legal status of cannabis has changed by the time the company is prepared to go to market. But given the ever-changing legal landscape, companies should be prepared to file trademark applications as quickly as possible after federal prohibition ends.
Despite the hurdles to obtaining federal trademarks, businesses can take important steps to protect their brands. First, cannabis companies may make and sell branded apparel and then apply for federal trademarks for the apparel goods. This strategy helps organizations stake claim to their names, logos, and slogans on the federal trademark register and may dissuade competitors from using a similar name or design. Second, companies may apply for state trademarks in each state where they conduct legal operations. These state-level trademarks cover limited areas but can be used to protect products and services outright.
While the legal status of the plant and related products provides unique hurdles to obtaining intellectual property, businesses should consider what potential patents and trademarks are available to them and how to obtain those rights to protect their investments. Companies interested in obtaining intellectual property rights related to cannabis should seek legal counsel to discuss their options.
As a specialist in intellectual property law at Banner Witcoff, Jake Webb, Esq., focuses his practice on patent and trademark litigation and patent prosecution. His litigation experience includes patent, trademark, trade dress, and other intellectual property disputes. He is especially interested in the emerging relationship intersection of the cannabis industry and intellectual property law.
Formerly a patent examiner and the chief legal officer for a clinical-stage pharmaceutical company, Paul Rivard, Esq., brings a unique combination of experience to bear on his Banner Witcoff practice. He concentrates on counseling in intellectual property matters including risk assessment, patent preparation and prosecution, and post-grant proceedings before the U.S. Patent Trial and Appeal Board (PTAB).
With experience in patent, trademark, and copyright litigation as well as patent and trademark prosecution, Banner Witcoff attorney Christian Wolfgram, Esq., has represented clients in a variety of matters, including patent counseling for cannabis-related inventions, developing global intellectual property protection strategies, asserting and defending rights before the PTAB and U.S. Trademark Trial and Appeal Board, and large-scale district court litigation.
