Patents and trademarks are still legal gray areas in the cannabis industry and can present new and difficult problems and challenges. And as the cannabis industry continues to grow, both worldwide and here in the United States, issues with intellectual property will continue to crop up.
Marijuana operators, growers, and inventors are attempting to put together state-level patents working with city and state lawmakers, and even relying on a “common-law” trademark, which basically just allows a company to “possibly” seek protection against competitors with similar names or logos later.
Why do they have to resort to this and have no protection for their intellectual property, as any other business in the U.S. would expect?
Because the U.S. Patent and Trademark Office has not awarded a single patent to cover cannabis genetic material, despite hundred of patent applications for cannabis strains and products have been filed.
Despite the fact that the U.S.P.T.O. has long given out patents for growing specific genetic material, such as GMO types of soybeans, corn, and many more crops.
They also cannot receive trademark protection, because of marijuana’s status as a Schedule 1 controlled substance. As it is still federally illegal, on a nationwide level, cannabis companies are out of luck and unprotected against competition and intellectual property theft.
MJBizDaily reports, “the Trademark Trial and Appeals Board of the U.S. Patent and Trademark Office ruled that owners of state-licensed marijuana retailers can’t receive federal trademark protection on marks that are connected to cannabis sales because marijuana is illegal under federal law.”
Some Recent Cases
As of January 2017, a well-known company making marijuana utensils, Roor, had filed 200 lawsuits to protect its trademark. Smoke shops in California, Florida, and New York were reportedly selling counterfeit products with the Roor company’s name and logo.
According to the Associated Press, Roor, the German company, and its American licensee, Sream, of California, hold U.S. Trademark No. 3675839 to protect its fashionable pipes and bongs sold with the Roor mark, which is the word “RooR” with the second “r” capitalized and facing backward.
Even though they currently hold a trademark, it can be difficult or even impossible to prosecute counterfeiters, since utensils used to consume cannabis are federally illegal and cannot be trademarked.
But that doesn’t stop people from trying to bring suits against companies for infringing on their intellectual property and trying to protect their company.
Headspace, based in southern California, is a multi-million dollar company which produces marijuana oils. It’s product “The Clear” is sold in seven states, and their brand is well-known. Headspace filed a trademark suit against Podworks, based in Washington state, over their product Top Shelf Clear.
Headspace claims that Podworks is illegally using The Clear’s name by simply removing the article. “We take a lot of pride in the proprietary nature of what we do,” said Chris Barone, CEO of Headspace International. “We’ve got a lot of time and money invested into what we’re doing.”
Podworks owner Thomas Worth said his product is called “Top Shelf Clear,” not just “Clear,” and that he has a legal trademark for his product’s name and does not plan to give it up. This could be a landmark case for the cannabis industry.
Famous Names in the Game
Rapper Snoop Dogg got in a trademark infringement fight in 2016, over whether his “Leafs by Snoop” product line, including marijuana strains and merchandise such as clothing, infringed on the NHL team, the Toronto Maple Leafs trademark. Snoop did file a federal trademark application as far back as January 2015, but dropped it in November of that same year, as it was not going through.
The newest celebrity in this fight is on the opposite side. Jessica Alba is suing Honest Herbal, a three-year-old Colorado-based company that makes nutritional supplements from CBD oil. Alba claims that they are infringing on her trademark of LA-based The Honest Company. Her attorneys argue that Honest Herbal is attempting to confuse consumers and “profit from the goodwill and consumer recognition associated with The Honest Co.” The Honest Company lines include Honest Baby, Honest Beauty, and Honest Man.
What are your thoughts? As with any other plant and logo, we think cannabis companies should be able to get federal trademarks and the protections associated with that. But in the meantime, these landmark cases will help determine future litigation in the marijuana industry. And as the industry continues to grow worldwide, we will be seeing more and more of these.