Republic Technologies (NA) LLC (“Republic”) filed an application to register the proposed mark 4:20 with the United States Patent and Trademark Office (“USPTO”). Republic amended its goods twice during prosecution of the application and ultimately sought to register “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis” (emphasis added). The USPTO alleged that consumers would understand 4:20 to mean cannabis, the mark misdescribes non-cannabis related goods, and consumers would believe the misrepresentation. Therefore, the USPTO refused registration alleging that the mark was deceptively misdescriptive of the goods in the application. Republic appealed the decision to the Trademark Trial and Appeal Board (the “Board”). But the Board saw through the smoke of Republic’s arguments and affirmed the refusal. Continue Reading 4:20 Unfriendly – TTAB Says 4:20 is Deceptively Misdescriptive of Goods Not Used with Cannabis
A Texas appellate court recently upheld a decision to prevent a ban on the sale of delta-8 tetrahydrocannabinol (THC) products in the state. Tex. Dep’t of State Health Servs. v. Sky Mktg. Corp., No. 03-21-00571-CV, 2023 BL 341460, 2023 TX App Lexis 7448. The decision allows cannabis companies to continue selling delta-8 THC goods in Texas and establish a reputation for their brands. In contrast, delta-9 THC remains federally illegal and banned from sale under the Controlled Substances Act. Delta-8 THC and delta-9 THC are distinct cannabinoids (i.e., compounds) in the cannabis plant. However, the legality of the delta-8 industry remains clouded in smoke. This case, and its counterpart in Virginia, could have a significant impact on brand owners’ ability to establish rights in their cannabis-related trademarks.Continue Reading What’s the Delta? How Delta-8 Can Provide Trademark Rights for Hemp and Marijuana
A recent lawsuit alleging trademark infringement by AmerikanWeed illustrates the importance of protecting intellectual property in the cannabis industry. Complaint at 9-10, Palmer, et al. v. Komm et al., No. 21-2-13589-3 SEA (Wa. Sup. Ct. filed Jun 21, 2023). Because the plaintiffs obtained a Washington state trademark registration, their recourse is limited to that state. To have recourse against infringement outside Washington, a federal registration may provide additional remedies—if it can be obtained. A recent precedential decision by the Trademark Trial and Appeal Board (“TTAB”) highlights some of the pitfalls to avoid if pursuing federal registration.Continue Reading Blunders That Made ‘Bakked’ Cannabis TM Go Up In Smoke
The Supremacy Clause and Trademarks: Why State Cannabis Legalization Isn’t Enough for a Federal Trademark
Recently, we published an article regarding the increasing viability of cannabis related patents. See here. Sadly, the story is the opposite for federal trademarks. Last month, National Concessions Group, Inc. (“NCG”) was denied federal registration for its trademarks: BAKKED and
(collectively the “Marks”) by the United States Patent and Trademark Office (“USPTO”). Continue Reading Indica and IP – A Series on the Intersection of Cannabis and Intellectual Property
This 4/20, patent owners with Intellectual Property (“IP”) related to cannabis have one more reason to celebrate as they may be able to enforce their rights against infringers in federal court. IP rights may provide an enforceable protection against copycats and competitors in the market, and may provide significant value to a company’s balance sheet. This was demonstrated when Tilray Brands, Inc. announced its intent to acquire fellow cannabis company Hexo Corp., a Canadian entity with a large patent portfolio related to cannabis, for approximately $56 million. Previously, whether a utility patent related to cannabis could provide such value in the United States was hazy. A first-of-its-kind case in California shows that it may be more than a pipe dream for cannabis patents to bolster a company’s balance sheet. The Court held the illegality doctrine did not bar an infringement claim based on a valid cannabis related utility patent asserted against a cannabis company.Continue Reading California Ruling May Sow Seeds of Cannabis Patent Precedent
Proposed legislation in Pennsylvania would allow the sale of cannabis through the Commonwealth’s existing alcohol store system. This could make it easier for consumers of both substances to stock up for their next get-together. But it could also lead to confusion in the aisles of Pennsylvania’s liquor stores. Continue Reading Booze and Buds – The Potential for Confusion if Cannabis is Sold in Liquor Stores
Federal bans, lack of knowledge, and misinformation all stifle IP protection in the cannabis industry. Previously, one of our colleagues attended MJBizCon in Nevada and noted that “there is so much more to be done to bring this industry on par with other advanced industries that rely on IP to protect innovation and provide commercial advantage.” https://www.blunttruthlaw.com/2022/11/flowers-gummies-an-ip-lawyers-impressions-of-mjbizcon/. After attending the New England Cannabis Convention (“NECANN”) in Boston, we are pleased to observe that the industry appears to be making headway to address these trailing efforts.Continue Reading The Blooming Field of IP at the New England Cannabis Convention in Boston
Cannabis has become a growing sector for investment with increased focus by investors and entrepreneurs. See our colleague’s impressions from the 2022 MJ BizCon cannabis conference here. With the increased funding pouring into this sector has come a desire to protect the intellectual property in the products, research, and developments brought to market. Previously, patents—a limited monopoly allowing a patent holder to bar competitors from making/using/selling/importing a claimed system or method—were of limited use for those in the cannabis industry.Continue Reading What CannI Say? Litigating Cannabis Patents In District Court
Co-authored by Ruth Fisher, PhD
The following post explores the bioavailability and efficacy of various cannabis products, followed by a brief overview of the legal protection afforded to each as an intellectual property asset.
Over the millennia, our bodies have evolved to better protect themselves. Protection from outside our bodies comes from our skin, which creates a barrier that’s quite difficult to penetrate by most foreign substances (pathogens). Protection from within our bodies comes from barriers (epithelial tissues) that line all our internal organs and pathways, to make sure nothing penetrates areas it should not. The result of all this protection is that it can be difficult for cannabis substances to penetrate our bodies and travel to the sites needed to generate their effects.Continue Reading Technologies for Enhancing Cannabis Bioavailability and Their Legal Methods of Protection
Despite legislative uncertainty (e.g., bills that have been passed, multiple times, but not become law), a wide range of brilliant entrepreneurs, industrial companies, investment mavens, and service providers have been consciously and conscientiously advancing the US cannabis industry’s interests.
MJBizCon and CannaVest West are proof positive – the breadth, depth, and sophistication of cannabis-related products, services, and innovations on display was truly staggering.Continue Reading Flowers, Gummies & An IP Lawyer’s Impressions of MJBizCon