The booming cannabis industry has compelled cannabis-related business owners to seek trademark protection to boost their brand and protect their intellectual property, but the inhibition by the Federal Controlled Substances Act (CSA) has created problems.
Marijuana-related paraphernalia is prohibited under federal trademark laws for the following reasons:
Trademark registration requires lawful use of the mark in commerce
Marijuana is still considered a Schedule I drug under the CSA, and, as such is federally illegal. Since the United States Patent and Trademark Office (USPTO) requires trademarks to be for goods or services used in lawful commerce. Since cannabis remains illegal under federal drug laws, “lawful use of the mark” is impossible.
Section 2(a) of the Lanham Act
The Lanham Act is the primary federal trademark statute of law in the United States and Section 2(a) specifically bars registration for an “immoral, deceptive, or scandalous matter.” The USPTO has made clear that because marijuana is illegal under federal law, marijuana trademarks constitute an immoral or scandalous matter.
Intellectual Property Protection in the form of Patents
A solution to the above problem may come in the form of patents. Federal patent law does not have the same “immorality” standard as federal trademark law, and inventors are not explicitly barred from securing patents for products that are or would be illegal. While a patent would not prevent others from using similar names or logos for your cannabis products, they will protect the actual product themselves.
Cannabis-related paraphernalia can be patentable matter, as long as the invention itself is novel, unique, and is not explicitly barred as a judicial exception, such as a naturally discoverable product. But is it possible to patent a strain of cannabis?
There exists a category of patents called plant patents that are granted to distinct and new varieties of plants. Particularly, the plant must express a set of characteristics determined by its unique genetic makeup and can be duplicated through some type of asexual reproduction. The plant must have been discovered in a cultivated area, which means that it cannot have been “manufactured.”
Functionally, patents grant exclusionary rights. They exist for a limited amount of time so that inventors are allowed to profit from their invention before others, such as large companies with significant budgets, are able to copy and undersell that invention. The protection granted by a plant patent is that it precludes others from asexually reproducing, selling, or using the patent plant without authorization or licensing from the patent owner. Plant patents expire 20 years from the filing date of the application.
Plant Patents for Cannabis Strains
So, based on the above guidelines, it would not be surprising for the USPTO to grant patents for cannabis strains. In fact, there are multiple marijuana patent applications already filed with the USPTO and have been published or granted.
On December 20, 2016, the USPTO issued the first plant patent for a strain of cannabis. U.S. Patent No. PP27,475, “Cannabis Plant Named ‘Ecuadorian Sativa’,” is a cornerstone patent as it suggests even more availability of protection by the U.S. government for marijuana, in spite of the federal position that marijuana is a Schedule 1 drug.
As of 2020, twelve cannabis plant patents have been granted by the USPTO, and this number is projected to rise as more states legalize the recreational use of the plant.
Utility Patent for Cannabis Strains
Utility patents protect inventions that are functional, such as unique processes, devices, machines, methods, chemical compounds, or manufactured products. With some limitations due to application requirements, the utility patent has advantages over plant patents in that it can include, along with the strain type, methods of production, and processing, given that these methods are unique.
This is especially true for any genetically modified or laboratory cultured non-natural plants, as the utility patent can protect something as specific as the uniquely designed DNA, which has a much broader scope than just the plant.
Additionally, utility patents provide much stronger protection against infringement, since they prohibit the replanting of seeds harvested from a licensed plant. Plant patents, on the other hand, allow licensees to sexually reproduce plants indefinitely, as long as they do not sell the seeds.
On August 4, 2015, the USPTO issued the first patent that protects a strain of cannabis. U.S. Patent No. 9,095,554, “Breeding, Production, Processing and Use of Specialty Cannabis,” is a utility patent that protects the strain of cannabis, as well as the means of production and method of processing. As this is a utility patent, it gives exclusive rights to the patent owner to make, use, sell, offer to sell, or import this particular strain.
The USPTO patenting process can take years, so, at this time, the cannabis intellectual property landscape is still incredibly young. Questions about cannabis patents remain up in the air as legalization continues on a state-by-state basis.
Ultimately, patents may soon become the most effective way to protect cannabis intellectual property. At this time, it is crucial for breeders to file as early as possible to protect their proprietary strains before the field quickly becomes overcrowded and flooded with applications.
Wang IP Law Group, P.C. is a Los Angeles based full service legal firm that specializes in intellectual property law (patent, trademark, copyright, and licensing agreement), business and commercial litigation, and a wide range of other legal matters including immigration, real estate, and landlord/tenant cases. Our multilingual attorneys represent clients from all over California and internationally from China, Taiwan, Hong Kong, Japan, and Israel.
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