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Survey of Marijuana Law in the United States: Intellectual Property issues related to Legal Marijuana Sale

Summary of Intellectual Property Issues

Marijuana is still federally outlawed and as such the list of intellectual property protections for marijuana businesses, despite operating legally in their state, is short. Patents and trademarks are two vital pieces of intellectual property and their application in the marijuana industry is still being explored as more states pass statutes legalizing marijuana at some level every year.

Articles on Intellectual Property Issues related to Marijuana

Branded Bud or Generic Ganja? Trademarks for Marijuana in Washington

Author: Sean Clancy 

Marijuana is legal under Washington State law but illegal under United States federal law. This paper assumes that marijuana will remain legal in Washington. Springing from that assumption, a crucial question is, what shall a merchant call her marijuana? This paper explores that question first by describing the benefits and costs of allowing trademark protection for marijuana, concluding that trademark law should protect marijuana products. Second, this paper identifies possible methods of seeking trademark protection for marijuana. Third, this paper explains how the law should determine whether proposed marijuana trademarks are distinctive and protectable, or unprotectable for being descriptive or generic. Ultimately, this paper argues that an understanding of marijuana’s various genetic strains and slang terms is necessary to properly assess marijuana trademark rights and to prevent unfair competition in the marijuana industry.

Franchising a Marijuana Business: It's Not Quite Mission Impossible

Authors: Shannon L. McCarthy and Dawn Newton 

This article focused primarily on the laws in states that have legalized all uses, including smoking, of the cannabis plant by the public. Some states have legalized the use of cannabis in medical research only; use of only hemp extracts or oils, use of only cannabidiol (CBD), which is derived from cannabis but does not produce the high that comes from tetrahydrocannabinol (THC); and medical use only for epilepsy and other purposes. This article limits the discussion to trademarks because of its definitional connection to franchising, but an entire article could be written on the full panoply of the intellectual property rights related to cannabis. 

Patenting Marijuana Strains: Baking Up Patent Protection for Growers in the Legal Fog of This Budding Industry

Author: Joseph Dylan Summer 

The current state of the law regarding the patentability of marijuana and cannabis products is murky. Despite the fact that several states have legalized the medical and/or recreational use of marijuana, federal law continues to explicitly prohibit the use, distribution, and cultivation of cannabis under the Controlled Substances Act (CSA). Due to changing state laws and the growing public support for marijuana decriminalization, the author of this Note suggests several options for legal changes that would allow cannabis cultivators to patent unique marijuana strains. The author provides three possible avenues for moving forward: (1) Congress could enact legislation to resolve the conflict between federal and state laws; (2) the president could change the status of marijuana from a Schedule I narcotic to Schedule II or less; or (3) the United States Patent and Trademark Office (USPTO) could issue a patent for a cannabis strain to demonstrate the patentability of individual cannabis strains. Although cannabis cultivation has been federally prohibited, policy concerns underlying plant patents and Federal Circuit case law demonstrate cannabis varieties are likely patentable. This Note highlights the change in the public acceptance and legality of marijuana and asserts that patenting individual strains of marijuana may spark innovations in cannabis varieties.

Puff, Puff, Patent: Identifying and Addressing the Tensions between the Medical Marijuana Industry, Patent Law, and the Controlled Substances Act 

Author: Dustin Boone

This note analyzes in detail the issues stemming from the intersection of the Controlled Substances Act, federal patent law, and the medical marijuana industry, and recommends potential solutions to address some of the negative consequences that result from these intersections. First, the note provides background information about medical marijuana generally, including an explanation of how marijuana affects the human body, a summary of the prevalent research regarding marijuana’s clinical benefits in different health conditions and its potential adverse effects, and a snapshot of the drug’s current legal status in the U.S., at both the state and federal level.  Second, the note discusses copyright, trademark, and patent, and how those protections may or may not be appropriate for protecting marijuana strains and uses, as well as marijuana-related items, goods, growing methods, and technologies. The author argues that patent protections are ideal for medical marijuana developers. The author also addresses the negative consequences of the tension between marijuana’s federal illegality and the patent system and suggests strategies for mitigating these consequences. The note does not discuss the topic of recreational use. 

Dude, Where’s My Patent? Illegality, Morality, and the Patentability of Marijuana

Author: Manuela Cabal Carmona

This note looks to the role illegality should play in the utility requirement for patent protections. The author analyzes how illegality under federal law affects the patentable utility of marijuana-related inventions. The note proposes that illegality should not foreclose patentability because the rejection of illegal inventions is inconsistent with the goals of the patent system. In support of this, the author looks to the history of the utility requirement and provides an overview of the patent prosecution process. The author also evaluates the patentability of marijuana strains and marijuana-related inventions and concludes that they would not lack patentable utility. 

Entrepreneurship and Legal Uncertainty: Unexpected Federal Trademark Registration for Marijuana Derivatives 

Authors: W. Michael Shuster and Jack Wroldsen

This article argues that cannabidiol (CBD) is treated differently to marijuana in respect to federal trademark registration, despite the two acting as market competitors in states where the two are legal. The article looks at seemingly inconsistent state and federal law covering marijuana and its derivatives, and analyzes the policies underpinning state and federal trademark regimes. The article argues that the divergence is attributable to entrepreneurs exploiting uncertainty surrounding CBD’s legality to persuade trademark examiners to register CBD marks. The author discusses the United States Patent and Trademark Office’s inconsistent treatment of trademark applications for both products within the context of the federal government’s position that both drugs are illegal. The author also contextualizes their analysis of CBD trademarks in the literature of innovation and legal disruption.  

Next Dance with Mary Jane? An Argument for the Patentability of Specific Genetic Strains of Marijuana under Federal Patent Law 

Author: David F. DuTremble

The author looks at the Controlled Substances Act (CSA) and its interactions with state legalization efforts and current moral and social issues related to marijuana, calling for political change. First, the author looks at the social history of marijuana in America, looking from the initial illegalization to present issues, and then explores current popular opinion in the United States. Second, the note looks at the conflicting contours of state and federal marijuana law, beginning with a discussion of federal enforcement mechanisms. The author focuses in particular on the CSA and the federal government’s “willful blindness” policy with regards to enforcing the CSA. Next, the author analyzes Gonzales v. Raich. A major contention is that, since newly developed strains could be obtained by legal efforts resulting in novel and useful material, they should be patentable. The author also argues that there is no moral obstacle to marijuana patent protection and that the CSA does not supersede state law. 

Obstacles to Obtaining and Enforcing Intellectual Property Rights in the Marijuana Industry 

Author: Emily Pyclik

The author highlights that the United States Patent and Trademark Office (USPTO) is granting patent protections for novel marijuana strains and discusses why the USPTO denies trademarks for marijuana-related goods. This note looks at obstacles facing a marijuana business owner seeking to secure intellectual property rights. These include parties raising equitable defenses like unclean hands at trial, problems trying to retain an attorney to work on a case involving a marijuana business, problems with discovery if a party attempts to invoke the Fifth Amendment, and issues with potentially biased juries because of moral issues associated with marijuana. The author also identifies issues in patent litigation relating to attempting to identify a prior art to invalidate a patent and in trademark cases with the possibility that a court could cancel a trademark if it determines that the owner is using the mark with illegal goods. The note then looks at treatments of marijuana in other areas of law, and considers based on current trends what courts might take when faced by marijuana-related patent cases and overviews issues a marijuana-related intellectual property owner should consider before litigating. Finally, the author comments on the importance of venue clauses in license agreements and arbitration agreements to mitigate risks. 

Cultivating a Better Strain of Trademark Law: Why the Unlawful Uses Doctrine Should Be Modified for State-Legal Marijuana-Related Marks 

Author: Sam Crocker

This note argues that the Unlawful Uses Doctrine should be curtailed in the examination of trademarks related to the sale of cannabis and cannabis-related products, much as the Beneficial Uses Doctrine has been phased out in the examination of patents. The note first discusses the history of both doctrines, their current status, and how each has been applied to United States Patent and Trademark Office applications related to cannabis. The note then analyzes the application of each doctrine and assesses how the Unlawful Uses Doctrine could be limited in the review of cannabis marks. Finally, the note recommends that the federal courts adopt an approach of permitting the registration of cannabis trademarks based on compliance with state cannabis laws. 

How Small Cannabis Business Can Survive the Hurdles of IP Protection

Author: Spencer Keller

This comment looks at obstacles faced by cannabis businesses and how industry participants can strategically utilize intellectual property protections available to them. First, the author discusses current cannabis and patent laws in the United States, and explains the possibility that cannabis patents are invalid. Second, the author discusses the current patenting system and how the United States Patent and Trademark Office continues to grant overly broad cannabis patents due to the insufficient record of technological advancement in the cannabis industry. The author suggests using ancillary federal trademark registration, state trademark registration, and common law trademark laws to protect cannabis brands along with other strategic options like trade secret protection and first-mover advantage. Finally, the author offers a federal policy prescription to resolve intellectual property issues that are unique to the cannabis industry. 

Trademark Laundering, Useless Patents, and Other IP Challenges for the Marijuana Industry

Authors: Sam Kamin and Viva R. Moffat 

Marijuana law is changing rapidly in the United States today – since 1996, 23 states and the District of Columbia have legalized medical marijuana and five jurisdictions have made marijuana legal for all adults. Because marijuana remains a prohibited substance under federal law, however, the states are significantly limited in their ability to control marijuana policy within their borders. For example, because banking is regulated by the federal government, state-licensed marijuana businesses cannot gain full access to banking services; because bankruptcy is a federal benefit, it is unavailable to those involved in the business of violating federal law.

This article examines the implications for marijuana businesses of another area of federal regulation that has heretofore escaped academic commentary: federal intellectual property law. The continuing federal marijuana prohibition means that the most relevant federal intellectual property protections – trademark and patent – are largely unavailable for most marijuana businesses. While they are bound to comply with the dictates of trademark and patent law in their own affairs, marijuana businesses cannot acquire the rights and benefits of those laws or invoke those doctrines against others.

We discuss the ways in which these businesses attempt to circumvent the unavailability of patent and trademark rights, often through reliance on state law doctrines which generally prove insufficient to meet their needs. We also discuss the unexpected natural experiment that the current conflict between state and federal law creates. It is often asserted that intellectual property protections are necessary to foster creativity and investment. Yet the marijuana industry has seen extraordinary innovation and capital formation, even as these ostensibly necessary protections have proven unavailable. We conclude by discussing the implications of this observation for federal intellectual property law and policy more generally.

Roll Another (Serial) Number for the Road: The Long, Strange Trip of Protection for Marijuana Trademarks

Author: Rebeccah Gan 

Print, broadcast, and social media will not advertise their goods and services. Yet, the advent of legal medical and recreational marijuana has nonetheless birthed a budding "green" economy replete with branded snack foods, infused cosmetic creams, sundry varieties of unprocessed cannabis, and even "CANNABREAD," a marijuana-specific marketing agency. Unfortunately, the core of cannabis brands, the trade and service marks to which consumer goodwill necessarily attaches, are mired in a decidedly fraught relationship with intellectual property protection. Specifically, the complex interplay between the marijuana industry and the U.S. Patent and Trademark Office (USPTO) presents a variety of challenges for would-be pot barons. This article analyzes obstacles and potential protection strategies for cannabis brands in the emerging marijuana marketplace, including state trademark protection, federal copyright for a cannabis company's non-marijuana-related goods and services, and possible protection for unregistered trade and service marks under section 43(a) of the Trademark Act. 

Blogs on IP Issues Related to Marijuana

Note: The following blog posts are from Seyfarth's "The Blunt Truth" blog

Note: The following articles are all from Duane Morris Cannabis Practice

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