Alt Legal Connect Session Summary: Getting into the Weeds: Cannabis Law and IP Protection
Alt Legal Team | October 28, 2020
Thank you to Jordan Hameen for participating as a Law Student Reporter at Alt Legal Connect! Jordan is a 3L at University of San Francisco School of Law. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.
On Monday, October 26, famed cannabis law specialists Shabnam Malek and Amanda Conley of Brand & Branch LLP presented the session, “Getting into the Weeds: Cannabis Law and IP Protection.” The presenters discussed the peculiarities of IP protection in the cannabis industry and offered practical suggestions for serving these particular clients.
When dealing with cannabis and federal trademark law, it is important to understand where various states are in the legalization process. Also, it is important to understand the USPTO’s treatment of cannabis-related matters.
First, when considering the legalization process there is a key distinction between hemp and marijuana. Hemp contains no more than .03% delta-9 THC and marijuana is anything with more than .03% delta-9 THC.
Hemp, as an unscheduled drug, is legal in all states. Yet, currently, only 11 states and Washington DC have fully legalized marijuana. However, marijuana is not yet legal federally, causing some complications when applying for a trademark.
Second, when looking at how the USPTO treats cannabis, due to the illegality of the substance, attorneys must make the most creative arguments when filing marijuana-related applications. This is generally because the “use in commerce” requirement of a trademark cannot be an unlawful basis. Since marijuana is illegal under federal laws, the applicant often has to carve out their marijuana use under their goods and services and incorporate something else in its place. For example, possibly registering “herbs” like basil as the good.
The key to registering trademarks in this space is to put others on notice of your use. This notice is created by the publication of the trademark.
As the cannabis industry grows, more products are invented. While flower or bud currently make up a large portion of the industry, topicals, vapes, and edibles are also entering the market. In this ever-growing market, there are many very distinct brands and companies that now have to avoid common words that usually double as a colloquial for “marijuana” to establish their brand. Also, with brands trying to expand, coexistence agreements are very important as well.
According to the New Frontier Data, the U.S. market for cannabis-related goods and services is expected to reach $24.3 billion by the end of 2021. Cannabis is therefore very important to the growth of federal trademark law, even though it is faced with many challenges under the current regulations.
Access the Recording and Materials: Click here
Radiance Harris shared two examples of marks she successfully registered for supplies used to smoke: U.S. Reg. Nos. 5885977 and 5740794
Examination Guide 1-19 – https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf (thanks Ed Timberlake!)
Where to research TTAB cases? The TTAB Blog (Thanks, Dorna Mohaghegh!) and Westlaw (Thanks, Stephen Stanwood!)
https://1.next.westlaw.com/Browse/Home/AdministrativeDecisionsGuidance/FederalAdministrativeDecisionsGuidance/DepartmentofCommerceDOC/PatentTrademarkOfficeUSPTODecisions/TrademarkTrialAppealBoardTTABDecisions?transitionType=Default&contextData=(sc.Default) (Thanks, James Creedon!)
https://ttabvue.uspto.gov/ttabvue/ (Thanks, Ed Timberlake!)
https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions (Thanks, Olivia Clavio!)
International Cannabis Bar Association – https://www.canbar.org/ (Thanks, James Creedon!)