By Jillian Dahrooge
With more lawful producers than ever before, the demand to legally protect cannabis products is dramatically increasing. Since 2018, the United States’ Patent and Trademark Office has issued almost 250 cannabis-related patents. Similarly, around 110 cannabis-related trademark applications have been filed since Congress approve the Farm Bill in 2018. However, it is important to note that these patent and trademark applications are for “cannabis-related” products only. These products include medical treatments, cultivation techniques, vaporizers, and cannabis-infused merchandises. Any product that contains more than 0.3% of THC is prohibited from obtaining federal protection due to its illegality; thus, leaving key individuals in the legal cannabis sector without any protection for their products or technologies.
Intellectual property protection is critical for individuals and companies to differentiate between their products and services. However, this is challenging because federal law is unaccepting of the cannabis business. One of the biggest hurdles that individuals and companies face is securing a federal trademark registration for their cannabis products. Typically, there are three levels of legal protection for trademarks. First, common law rights encompass circumstances where the trademark is used in commerce with goods or services, despite lacking government approval. Second, common law trademarks give the user the exclusive right to use the mark in their geographic market. Third, federally registered trademarks give the user exclusive control to use the trademark without geographic restriction, all over the United States. Even though trademarks are permitted for all goods that are sold or transported in interstate commerce, cannabis is excluded because federal law prohibits the manufacturing, distribution, and sale of cannabis products through the Controlled Substances Act. On the other hand, individuals and companies are permitted to file for federal patents for their cannabis-related inventions. There is no prohibition, as there is with federal trademarks, in patenting cannabis-related technologies. To get a patent, the invention must be novel, non-obvious, and cannot already exist in nature. However, these requirements pose problems in the cannabis industry. It is extremely difficult for an inventor to prove that they were the first to invent a cannabis product because the industry has been illegal for decades. Further, a strain of cannabis cannot be patented because its genetics are not human-bred. On the other hand, cannabis blends or editing technologies can be patented. This is appealing because it provides a limited monopoly for these products, where the owner can sell the product or license others to use it. While this may seem beneficial, patents can only be enforced in federal courts and the U.S. federal court system has been slow to accept any cases that relate to cannabis-related patent infringements. As a result, inventors cannot prevent others from infringing on their products; thus, leaving no true incentives for obtaining a patent for cannabis-related commodities.
Recently, federal courts have let cannabis-based suits proceed but only on their merits. One example is Preservation Sciences, Inc. (“PSI”) v. CannaHoldCo, Inc. (“CHC”). In this case, PSI is a cannabis business that created a new technology for drying cannabis and hemp products. It is upon information and belief that CHC is using this same technology as PSI and is seeking investors for its “invention.” Since PSI is not entitled to sue CHC for infringement, this lessens the damages that they are entitled to. Without federal intellectual property protections, the technologies created by PSI, have lost their true value. As a result, this damages PSI’s reputation as a successful business and leads to a significant loss in investors for its technology. As the law stands now, there is no reward or profit for technological advancement in the cannabis industry. More importantly, people are profiting off of others inventions with no recourse for their illegal actions. Overall, this provides individuals with little incentives to create or promote tools to properly develop products for the cannabis industry.
Intellectual property in the cannabis industry needs to be strict enough to allow defenses against infringement suits, but also malleable enough to be applied to all states where cannabis is legal. However, installing state protections is not enough. In some states, cannabis companies are allowed to apply for a trademark or patent registration to protect their brands and technologies. Although, this protection is granted for that geographical area only. For example, a brand name that is registered in California may be owned by another company in Massachusetts, but both are permitted to operate with the same name. This ultimately causes confusion with consumers and limits the expansions of the company’s products to other states. State registrations also require extra due diligence by cannabis retailers and companies, whereas they need to research companies and products throughout multiple states. Taking the time to do this is extraneous for a field that is developing at such a rapid rate.
The best solution would be to grant cannabis products and technologies federal intellectual property protections. There are clear benefits from these products that influence the industry as a whole. This federal protection would also provide inventors and businesses with the proper recognition that they deserve in contributing to this widely growing industry.
Student Bio: Jillian Dahrooge is a second-year law student at Suffolk University Law School who is pursuing a concentration in Intellectual Property. She is also a staff member on the Journal of High Technology Law. She currently holds a Bachelor of Arts Degree in American Studies and a minor in Human Development from Connecticut College.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
