MarkIt to Market - February 2019: Up in Smoke? IP Protection for Cannabis Products

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

In a recent decision, the TTAB overturned a descriptiveness refusal to register the mark CANNABIS CANNIBALS for “entertainment services, namely, an ongoing series featuring animated cannabis smoking cannibals provided through network or cable TV and the internet” in Class 41. The overturned descriptiveness finding aside, what has drawn attention to this case – and mark – is the fact that the federal government allowed registration of a mark containing the term “cannabis” for services that mention cannabis. As most are aware, cannabis use is still illegal under the Controlled Substances Act (CSA), which prohibits manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a). To register a mark with the U.S. Patent and Trademark Office (PTO), an applicant must be able to lawfully use the mark in commerce in connection with the goods/services. If an applicant’s goods and/or services are themselves illegal under the CSA – such as identifying strains of cannabis or cannabis distribution services, it follows that their mark cannot be registered for those goods and/or services. In the case of CANNABIS CANNIBALS, the goods or services themselves did not involve actual cannabis (and presumably featured only the depiction of animated cannabis), which was why the TTAB allowed the mark to register.
Similarly, the PTO has recently allowed registration of marks covering goods and services ancillary to the cannabis trade, such as publishing information about the benefits of cannabis, educating others about the cultivation of cannabis, organizing events in the field of cannabis culture, providing medical information related to medicinal use of cannabis, and software and mobile applications featuring information relating to cannabis. Registration for ancillary goods and services may provide some modicum of protection for entities who also offer actual cannabis products or distribution services under the same mark.  Mark owners may also want to consider seeking state-based trademark registrations for their cannabis-related goods/services in states where cannabis is legal.
While trademark applicants may be constrained in terms of registering marks for goods containing cannabis or services related to distribution of cannabis products, the PTO has already issued hundreds of patents covering cannabis products, their derivatives, production processes, and methods of use. In fact, the period from 2015 to 2017 saw the greatest increase in cannabis patent application filings, reaching an all-time high of 118 applications filed in 2017 alone. The PTO has issued patents covering cannabis inventions without regard to whether making, using, or selling the claimed subject matter would violate federal laws. Indeed, some of the patents within this technology class are even owned by or licensed to federal agencies including the National Institutes of Health and Department of Health and Human Services. Thus, patents (utility, design, and plant) present a potential avenue for protecting cannabis-related products despite the federal classification of cannabis under the CSA.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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