IP in the Weeds: Navigating Cannabis Patents and Trademarks

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 t*rademark* 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.
------------------------------
[image: Jake Webb (square)]

*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.*
[image: Paul Rivard Square]

*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).*
[image: Christian Wolfgram (square) 2019]

*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.*