Can I get a trademark, copyright, or patent for Cannabis-related products?
Maybe.
Individuals and businesses crave certainty. With every emerging area of law; however, comes a certain degree of uncertainty. You can think of that uncertainty as a vacuum – and when the vacuum exists, speculation, conjecture, and myths rush to fill it. The legal landscape in the United States surrounding cannabis is rife with uncertainty.
Actually, that is an oversimplification because the legal landscape surrounding cannabis is not homogeneous. As of this moment, the map below shows the cannabis legal landscape in the US:
Source: https://www.ncsl.org/research/health/state-medical-marijuana-laws.aspx
Nineteen states and the District of Columbia have legalized both medical and adult (sometimes referred to as recreational) use of cannabis; eighteen additional states have a fully regulated medical cannabis program; ten states allow use of CBD/low THC products; and three states prohibit all use of cannabis and cannabis derivatives.
Though the numbers will change with the next election cycle, that means that according to the 2020 census (under state law):
- 43.73% of the US population live in states where cannabis use is fully legal;
- 31.44% of the population live in states with a medical cannabis program but restricted adult use;
- 22.71% of the population live in states where only CBD/low THC use is allowed; and
- 2% of the population live in states where cannabis is illegal.
It is anticipated that the 2022 elections will change that map.
For instance, Arkansas (54% in favor), Iowa, Maryland (62% in favor), and Missouri will likely have ballot initiatives for legalization.
In other states, tea leaves predict change in the near future.
Eighty-three percent of Nebraskans support legalizing medical cannabis – though the Governor Pete Ricketts (R) is a staunch opponent, saying legalization will ‘kill kids.’
Sixty-eight percent of polled North Carolina voters support medical legalization, as do a whopping eighty-three percent of Texans. Seventy-six percent of polled South Carolina Republican voters approve of a medical program. [1]
Nationally, on average, two-thirds of polled voters believe cannabis should be legalized for adult use. Over 90% of voters believe cannabis should be legalized at least for medical use. [2] Culture war holdovers and those without much science-backed data to support opposition to legalization might slow the process, but a casual glance at the landscape makes it clear that legalization is a question of when, not if.
Entrepreneurs and existing businesses see those tea leaves and positioning their businesses in states where change is on the way, while businesses in states with established medical and adult-use programs are taking additional steps to refine their businesses and take additional steps to plan for the future.
But that question of when takes us back to the beginning of this post – it is the uncertainty vacuum inviting conjecture and myths. For businesses and individual seeking to capitalize on legalization and create a well-positioned business, not knowing when they can operate causes problems.
Take for instance the field of IP law. Intellectual Property rights are, largely, federal in nature.
Federal cannabis prohibition and the Controlled Substance Act’s (“CSA”) scheduling of Cannabis on Schedule 1 (for the most dangerous known drugs without any medical use) create a perception that Cannabis businesses, whether in fully legal or medical states, can’t take advantage of IP protection. That is wrong. Below are some common myths associated with Cannabis IP and an answer to your question of whether you can protect your cannabis-associated IP rights.
MYTH 1
You are out of luck for federal trademark protection.
In order to register a mark with the United States Patent and Trademark Office (USPTO), you must be able to show that the mark is being used in interstate commerce in connection with federally lawful goods and/or services.
First, marks may be obtained for ‘ancillary’ goods or services – these might be marks that relate to advocacy for cannabis legalization or that pertain to the medical benefits of cannabis.
For goods or services that are ‘plant-touching,’ marks cannot be registered because of federal scheduling in the CSA. Registrants must be able to show that their desired mark relates to a product or service that has a use beyond cannabis. Hemp was legalized under the 2018 Farm Bill for inhalable and topical products, though not for ingestible products. So, a business creating products or services related to hemp would be able to register a mark. Those products or services might also be used in the inhalation or topical application of cannabis. Experienced trademark counsel can help you distinguish between products and services purely related to cannabis and products and services that relate to a federally lawful good or service but might also be used for cannabis.
Additional trademark protection might be available depending on the state the registrant is located in. Many states with medical or adult-use programs will allow for state trademark registration for goods or services related to the state-legal products or activities. Most such state trademarks will be limited to inhalable or topical products as opposed to edible products because of FDA involvement with edibles.
MYTH 2
If we search online and see our desired trademark is not used, then we will be able to register it.
“Searching the USPTO database for the identical mark is not nearly adequate due diligence, especially for cannabis brands. While it is very good news that you didn’t find the exact mark on the USPTO database, many cannabis brands are not applied-for at the federal level as cannabis businesses have a long history of staying under the radar. Further, due to misunderstandings about what can and cannot be registered federally, many cannabis companies don’t even attempt to register their brand name/mark.” [3]
Determining whether there is a chance your desired mark will be confusingly similar to an existing mark requires a thorough search of not only registered federal trademarks, but also state marks and businesses operating with unregistered marks.
MYTH 3
Since Cannabis is a new state-legalized market, there is an excellent chance of getting protection for ‘slang’ terms for cannabis.
No. “Weed, Kush, Bud, Mary Jane, Ganja, Nugs, Jig, Blunt, Dabs, and Hash,” are slang terms for cannabis, but the terms have been in use for generations.
As such, such terms are seen as simply descriptive of cannabis and purely descriptive terms cannot be trademarked. Descriptive terms describe functions or characteristics of goods or services, and alone are too weak to function as a trademark. Thinking you can slide such a registration past personnel at the trademark office is a mistake. Trademark Examiners have seen it all – they will, with exceptions, be ‘in the know’ when it comes to cannabis terms. You do not want to bet your business’s IP protection on your ability to fool an unwitting examiner.
MYTH 4
If we don’t mention cannabis in our application, then the trademark office won’t know that our mark relates to cannabis!
Danger Will Robinson. When you apply for trademark protection, you will be required to submit a “specimen of use” that shows how you are using your mark. If your application misrepresents your use of the mark – you have another set of problems. If your application is cagey about your use, the trademark office will be able to ask further questions and search for more information about your actual use.
For example, upon considering the specimen of use, the Trademark Trial and Appeal Board (TTAB) refused to register the mark HERBAL ACCESS for use in connection with “retail store services featuring herbs,” based on an unlawful, rather than lawful, use of the mark in commerce. Although, the applicant’s description and specimen of use did not expressly show the applied-for mark being used for a cannabis dispensary, the Trademark Office was dubious and found ample evidence on the applicant’s website showing that the “herbs” in the application were indeed marijuana. [4]
MYTH 5
Well, I guess copyrights are tough too, huh?
Wrong! Copyrights are yours whenever you have ‘fixed’ your creative work. Take a photograph, write a passage, or create a work of art and you own a copyright in your creation (unless it is a work for hire – i.e. someone has paid you to create for them, etc.). That’s it, nothing more with almost no limitations.
Federally registering your copyrights provides a broad range of additional protections (including the possibility of enforcing your rights in federal courts, recovering statutory damages for infringement, and forcing infringers to pay your attorney fees).
Experienced attorneys can assist you in both registering those rights and pursuing those who have used your creative work without permission.
MYTH 6
I need federal legalization to pass quickly so I can patent my idea!
You don’t need to wait. As opposed to trademarks, which require you to show your mark in use, patents do not require any show of use.
In the United States, there are five elements of patent eligibility:
A patent application must cover subject matter that Congress has defined as patentable.
For a utility patent, your patent application must be for an innovation that has “utility,” or in other words, be useful. Note that this requirement is only for utility patents (see next question, below).
Your invention must be “novel,” or new.
Your invention must be “non-obvious,” meaning it cannot be something that is simply the next logical step of an already patented invention. Non-obviousness is the area of much of the argument between the USPTO and applicants.
You cannot have disclosed your invention – i.e. if you have debated and disclosed your invention before securing your patent, then you will likely have your application denied.
Cannabis manufacturing products and processes and plant material (creatively named ‘plant patents’) have all been granted. Genetic material patents and protection for strains are a burgeoning area of patent law. The federal prohibition on cannabis does make cannabis patent applications more subject to review, and there is the possibility of denial; however, the prevalence and approval of cannabis patents trends with the legalization trend in general.
Navigating the uncertainty of the cannabis marketplace requires experienced counsel. Fill that vacuum with good advice, not speculation and conjecture.
[1] https://norml.org/marijuana/library/surveys-polls/ (last visited June 13, 2022).
[2] https://www.pewresearch.org/fact-tank/2021/04/16/americans-overwhelmingly-say-marijuana-should-be-legal-for-recreational-or-medical-use/ (last visited June 13, 2022).
[3] https://evoke.law/cannabis-ip-myths/
[4] Id.
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