Trademark registration for cannabis and cannabis-based products

With the recent trend in states allowing adult-use and medical marijuana, even while marijuana, or as it is increasingly known, cannabis, is still illegal federally, many new legitimate businesses face the question of whether they can trademark their names and logos.  The answer is no … and yes.  Understanding this dichotomy involves unpacking trademark law a bit.

First, a trademark is words, graphics, or combination of words and graphics that identify the source of goods provided.  State governments and the federal government each provide registration of trademarks.   I will limit my discussion of state trademark law to that of California.

To register a trademark in California or federally, in the United States Patent and Trademark Office (USPTO), the mark must meet certain criteria.  One of those criteria is that the trademark must be used lawfully in commerce.  This means that marks for marijuana are ineligible for federal registration because marijuana is still included in the Controlled Substances Act (CSA).  Under the CSA, it is 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.”  Some brands opt to register their marks for ancillary goods or services that do not violate the CSA.

However, California is among the states that allow medicinal and adult use of marijuana.  On January 1, 2018, California began registering cannabis-related trademarks, as long as the mark is lawfully in use in commerce within California and the classification of the goods that is used by the USPTO.  As a result, California will register some marks that cannot be registered federally, because adult-use marijuana is legal in California but is still unlawful under federal law.  However, this does not mean that California will register all marijuana related marks.  There are some products that do not fall within the classification system use by the USPTO so they cannot be registered, even though their use in commerce may be allowed in California.

One ingredient that is of particular interest is cannabidiol (CBD).  Many products made with CBD do not have a significant concentration of tetrahydrocannabinol (THC), which is the psychoactive constituent of marijuana.

The CSA defines marijuana as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin. Such term does not include the mature stalks of such plant, fiber produced from such stalks, oil or cake made from the seeds of such plant, any other compound, manufacture, salt, derivative, mixture, or preparation of such mature stalks (except the resin extracted therefrom), fiber, oil, or cake, or the sterilized seed of such plant which is incapable of germination.”[1]

Under this definition, CBD extracted from the excluded parts of the hemp plant should qualify.  However, about the end of 2017, the USPTO began refusing applications for marks for any product containing CBD, even when the applicant signed a declaration stating that the CBD was extracted from non-marijuana sources.

As the law and practice stand, because the product must be used lawfully, and marijuana is unlawful under the CSA, trademarks for marijuana and marijuana-based products (including CBD products) cannot be registered federally.  However, trademarks for many cannabis products (including CBD products) can be registered in California.

If you have a cannabis based business and questions about your cannabis related trademarks, schedule a consultation to discuss your questions with us!

[1] 21 U.S.C. § 802(16).

Beginning the Patent Application Process – Prior Art Search and Patentability Opinion

How we think (read: hope) the patent process goes: invent something, file a patent application, get the patent, make millions!!!

Beyond the first step, the process is more involved.  And before you file a patent application for your invention, it is important to understand the process of applying for, and hopefully receiving, a patent.

In short, starting with a (professional) prior art search and patentability analysis is an up-front cost, but may save you money in the long run.  Schedule a free initial phone consultation with a registered patent attorney to see if it is right for you!

Now, back to the details of the patent application process.

The first step in the process of filing your patent application is determining whether your invention is patentable.  Patentable inventions include processes (i.e., a way of doing something), machines, articles of manufacture, and compositions of matter (molecules, etc.), but the consideration does not end there.  To be patentable, an invention must be new, useful, and non-obvious.  The first two requirements fall largely within the common understanding of the English words “new” and “useful”.  For an invention to be new, it must not have been invented by someone else before you; for an invention to be useful, it must serve a purpose.  Usefulness is the easiest of the requirements to meet.  After all, a rock is useful as a paperweight.  But the remaining requirements, novelty (patent-ese for new) and non-obviousness, involve more consideration.

You may be thinking, “how can you tell if it has been invented by someone else before?”  Well, I am glad you asked.

Google can be a useful tool when you’re trying to find an answer, or a restaurant, or even a patent.  However, a typical internet search is not a sufficient way to investigate whether your invention is new and non-obvious.  Determining that your invention is sufficiently new to warrant filing a patent application typically involves a prior art search.  “Prior art” includes the inventions in the same field as your invention that happened before your invention.  Prior art that will prevent your invention from being patentable includes issued patents, printed publications, inventions that are known and/or used, and inventions that are offered for sale.  When you get into the gory details, additional geographic and timing questions are relevant, but the patent attorney you hire can help with those details.

To find out whether your invention may be novel and non-obvious, and therefore warrants filing a patent application, a licensed patent practitioner should order a prior art search and analyze your invention in light of the search results.

The prior art search and analysis provides multiple benefits.  The first benefit is a determination that your invention is novel.[1]  The second benefit is providing some insight into the state of the art of your invention.  This can help the patent practitioner who is preparing your patent application to distinguish your invention from other inventions in the prior art.  By preparing your patent application to distinguish your invention from the prior art, you may reduce the number of times the patent practitioner you’ve hired needs to respond to letters from the patent office, thus reducing the cost of your patent application.

The third benefit is to provide some insight into whether your invention is non-obvious.  The term “obvious”, as used in patent-ese, has a different meaning than when the word obvious is used in everyday speech.   In patent-ese, obviousness refers to whether your invention could have been made using two or more pieces of prior art that, when combined, make your invention.  The fact that no one has ever actually combined the prior art in the way you suggest does not make your invention non-obvious.[2]  Once again, when you get into the gory details, the obviousness consideration is more complex, but that is why you’re planning to hire a patent practitioner help you in the process.

Once you have decided to move forward with the preparation and filing of your patent application, the practitioner you’ve hired will work with you to draft a complete description of your invention, including a written description, drawings of the invention, and a set of patent claims.  The claims are the part of the patent application that describes exactly what your invention is.

After your patent application is prepared and you have reviewed and approved it, your application is filed with the United States Patent and Trademark Office (USPTO), and the filing and prosecution fees are paid.  The word “prosecution” is typically associated with criminal court, but that’s not the ways it is used here.  Patent prosecution describes the process of filing a patent application and responding to communications from the USPTO until your application has one or more claims allowed, or you decide to abandon the application.

[1] The results of a prior art search and the opinion of a patent practitioner cannot be guaranteed.  No prior-art search can be completely comprehensive, and the examiner at the Patent Office may find a reference not identified in the prior art search, or may simply have a different opinion, and may still reject an application based on novelty.

[2] The results of a prior art search and the opinion of a patent practitioner cannot be guaranteed.  No prior-art search can be completely comprehensive, and the examiner at the Patent Office may find a reference not identified in the prior art search, or may simply have a different opinion, and may still reject an application for obviousness.

Types of Intellectual Property Protection

So, you have a business and you just got a new logo.  You have heard about other businesses protecting their intellectual property, and you definitely want to protect yours, but what type of protection is right for you?

Or maybe you’re an artist or an author, and you just finished your latest work.  What do you need to do to protect your intellectual property in that work?  Are there extra steps you need to take to enforce your IP?

Or you are an inventor and you have invented a new device or way of doing something.  How do you protect your invention?  How do you keep other people from making money from your intellectual property?

To answer these questions, let us start by defining a few different types of intellectual property, what they each protect, and what rights each type gives to the owner.

Trademark

A trademark is a word, phrase, graphic, or combination of words and graphics, that identifies the source of goods.  Similarly, a service mark is a word, phrase, graphic, or combination of words and graphics, that identifies the source of services.  Commonly, service marks and trademarks are collectively referred to as trademarks.  Trademark protection gives the owner of a trademark the right to use the mark in commerce, and to stop others from using the mark or similar marks in commerce.

A federal trademark registration provides protection for an individual or business that uses a trademark in interstate commerce.  For individuals and businesses that uses a trademark, but only for commerce within a state, analogous (although more limited) protection may be obtained through a state trademark registration.

The first person or business to use a mark in commerce may obtain a federal registration for the mark.  Federal registration will enable that owner of the mark to stop others from using their mark or a mark that is confusingly similar to the registered mark.  The test for what makes a mark confusingly similar is whether a consumer would think that the product or service using the accused mark comes from owner of the registered mark.

Copyright

A copyright is a form of intellectual property that protects creative works that embody the expression of creative ideas.  Copyrights protect a work once it is fixed in a tangible medium.  Copyright protection gives the copyright holder the right to publicly display the work, to make copies of the work, to make derivative works based on the original work, and perform the copyrighted work (as in a song, dance, etc.).

When is a work fixed in a tangible medium?  A photograph is fixed in a tangible medium when the image is recorded on the film in a camera; a painting is fixed in a tangible medium when the paint is placed on the canvas; a song (or other phonorecord) is fixed in a tangible medium when the audio is recorded; a story is fixed in a tangible medium when the author writes it on paper.  Interestingly, there is no copyright protection in a live performance, although there is a copyright in a recording of the performance.

Computers and digital technology require an update to these concepts, because there is no film in a digital camera, no canvas in graphic design programs, no paper in a word processor, etc.  To answer how a digital work is fixed in a tangible medium, we can take the example of sound recordings, which faced this issue long before the introduction of home computers[1].

Sound recordings were historically made by recording physical indentations on a wax cylinder.  The advent of magnetic tape meant that the copy of the sound recording was no longer fixed in a tangible medium, in the sense that you cannot feel the recorded information on a magnetic tape.  However, a magnetic tape did make a copy of the sound recording that was able to be experienced by a listener at a later time, and copies of the original recording could be made.  In an analogous way, digital works are recorded as computer-readable information in the memory of a camera, smartphone, computer, etc.

Patent

Patents protect inventions.  The federal patent law tells us that anyone who invents or discovers a new and useful process, machine, article of manufacture, composition of matter may obtain a patent therefor.  What this means is that an inventor who invents a new way of doing something may be able to get a patent, an inventor who invents a new tool may be able to get a patent, etc.  Patents cannot be granted for laws of nature, natural phenomena, and abstract ideas.

A patent does not give the patent owner the right to practice their invention.  The inventor who receives a patent for their new and useful tool has the right to stop others from making or using the patented tool.  This is an important detail, because a patent may be issued for an improvement to an already-patented invention.

Conclusion

Do you have a slogan, logo, or brand you would like to trademark?  Do you have a creative work that you’d like to register for copyright protection?  Do you have an invention?  Give us a call, we’d love to schedule a time to see how we can help!

[1] Sound recordings were not protected under Federal Copyright law until 1972.