Can I Protect My Cannabis-Related Intellectual Property?

Oregon has now legalized cannabis in all forms for medical and recreational uses. As this new industry finds its footing, many questions arise for growers, retailers, and consumers. Can you trademark your cannabis brand, like you would normally be able to do with a new company’s distinctive branding? Can you protect your unique, artistic labels, advertising, and packaging like traditional copyright protection would allow? Can you patent unique strains of marijuana plants? And what about trade secrets – if employees leave your business, can you protect your confidential information??

As the local laws shift around cannabis use and distribution, businesses are clamoring to protect their intellectual property. It is difficult, however, to utilize established, federal laws to protect these new enterprises. As the law in this area continues to evolve, it is likely that many of the available legal protections will change as well.

 

Federal Intellectual Property Protections: A Bad Fit for The Cannabis Industry

Trademarks

Trademark protection is designed to protect your unique “mark” or branding. The most effective way to protect your rights to use your unique mark is to register it with the U.S. Patent and Trademark Office (USPTO). However, the USPTO will not register a mark if you cannot show “lawful use of the mark in commerce.” Since cannabis is a Schedule 1 controlled substance under federal law, which makes it illegal to grow, sell, distribute, or possess, it’s impossible to meet the USPTO’s lawful commercial use requirement. The Controlled Substances Act makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.”[1]

Moreover, the USPTO can deny the registration of a mark to the extent it  “Consists of or comprises immoral…or scandalous matter…”[2] The Federal Circuit has defined immoral or scandalous marks as those which are “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable…
giving offense to the conscience or moral feelings;… [or] calling [for] condemnation.”[3] On this basis, the PTO has refused to register (and thus officially sanction) trademarks related to cannabis products, because they ostensibly “risk offending the public at large.”[4]

 

Copyrights

Similarly, copyright protection is a way to register unique labeling, product design, advertising material, packaging, and trade dress, so that consumers can be assured that when they see your distinctive design they know what product to expect. This protection helps guarantee consumers a consistent product, as well as protecting your business’s goodwill.

Under the U.S. Copyright Act, copyright protection can apply to “pictorial, graphical, and sculptural works,”[5] to the extent that a work has an aesthetic or artistic component above and beyond its “utilitarian” function.[6] You can copyright original prints, designs, and patterns, unique color arrangements, and novel combinations of elements used in packaging and promotional materials. And, as with trademarks, registering your copyright with the USPTO is the best way to protect your rights and allow you to pursue legal actions safeguarding your protected intellectual property.

Unlike trademark protection, copyright protection has been granted by the federal government for use with cannabis-related products.  For example, copyright registrations have been granted to numerous eligible items that relate directly to or promote cannabis production or use, including books like the “Marijuana Grower’s Handbook” by Ed Rosenthal and the Cannabis Science logo. This makes sense from a First Amendment perspective, as it’s not the message or content of works that determines their eligibility for copyright protection; rather, it’s the artistic nature of the work itself. However, a growing body of litigation deals with cannabis-related “parody” logos and artwork that allegedly infringe on existing copyrights, such as the Denver Metro Chamber of Commerce’s suit against the Colorado Cannabis Chamber of Commerce for its suspiciously similar logo.  When registering a cannabis-related work, like any other, it is imperative that you conduct a thorough search for existing similar, protected works.  

 

Patents

Although new and unique plants are normally a category of patentable material, the USPTO has been resistant to patenting unique strains of cannabis plants. However, this may be changing; a collective of growers in California appears to have obtained the first patent on a unique strain of low-THC marijuana plant. The Patent Act does not have the same “immoral or scandalous” restriction as the Trademark Act, and does not require that a product be actually used “in commerce.” In the next few years, it seems likely that the fight for patents on cannabis products will come to the forefront of federal consideration.

 

State Options for IP Protection

Although federal trademark, copyright, or patent registrations carry the highest level of protection for your intellectual property, these are not the only mechanisms to protect your IP. Another viable option is to register your trademarks to the degree allowed by your state. Registering your trademark (or tradename) with your state gives you exclusive rights to use that mark within the state. However, it does not protect your rights in other states. So, even if your mark is protected in Oregon, for example, it doesn’t prevent a competitor from using your mark 10 miles across the Willamette, within the same metropolitan area, in Vancouver, Washington. In order to obtain protection in both Oregon and Washington, you would need to qualify and register your trademark in both states. Given the current status of federal prohibition, however, operating an interstate cannabis business wades into a dangerous grey area of interstate drug trafficking and potential federal prosecution. It might be necessary for you to establish completely independent businesses that comply independently with each state’s laws before you contemplate registering a trademark within multiple states.

Regardless of federal or state trademark registrations, it’s important to remember that merely making use of your mark in commerce, normally provides a basis for “common law” rights in the mark, which may help you defend your right to a mark that you have actually used, as long as the mark is not confusingly similar to another mark that was in use prior to your mark in the same class of goods or services.

If you are planning to register your cannabis-related mark at the state level or if you are contemplating registering ancillary products, getting advice from an experienced intellectual property attorney is crucial. You must avoid marks that are “confusingly similar” to marks already in existence, and you must be careful to comply with state and federal requirements. Consulting an attorney to help you through the process can help ensure that your cannabis-related business is taking advantage of every available avenue to protect your intellectual property as the laws continue to change.

The content of this legal blog is for educational purposes only in order to provide general information and a general understanding of the law. This blog does not provide legal advice and no attorney-client relationship is created between you and Bristow-Ford Law or Susan Bristow-Ford as a result of this blog.  No information herein should be used as a substitute for competent legal advice from a licensed attorney in your state or jurisdiction and your use of this information is at your own risk. The information herein may not reflect the most current legal developments and may be changed, improved, or updated without notice. Neither Bristow-Ford Law nor Susan Bristow-Ford is responsible for any errors or omissions in the content of this blog or for damages arising from the use of information contained in this blog under any circumstances.

 

Written with the assistance of attorney Jamie Pfeiffer.

 

 


[2] 15 USC §1052(a), aka “Section 2(a) of the Lanham Act.”

[3] In re Fox, 702 F 3d 633, 635 (Fed Cir 2012), internal citations and quotations omitted.

[4] Id.

[6] Id.

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