Intellectual Property

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Recent legislative changes in California have opened up exciting opportunities for cannabis lounges and retailers.  With a new law allowing on-premise consumption areas, the sale of food and drinks, and the hosting of live music events, businesses are gearing up to create unique and engaging experiences.  However, as these businesses expand and innovate, it’s crucial for all brand owners to consider the implications for trademarks in the cannabis industry. Continue Reading Café con Cannabis – California’s Cannabis Café Law and Trademark Considerations

As the prospect of federal rescheduling of cannabis looms, some in the industry are seemingly attempting to preserve their spot in line at the United States Patent and Trademark Office.  A recent Trademark Trial and Appeal Board (the “Board”) decision underscores a significant hurdle for cannabis related applications—use in interstate commerce.  In Allright Mind Enterprises Ltd. v. Creative Arts By Calloway, LLC, the Board dismissed a cannabis company’s opposition because the company lacked a bona fide intent to use its mark in commerce.  Opp. No. 91273573 (TTAB 2024).  The case could affect cannabis companies’ ability to obtain trademark rights at the federal level.Continue Reading Reefer Madness – TTAB Dismisses Opposition Because Cannabis Company Lacked Bona Fide Intent To Use Its Mark

In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights.  Door Dash, Inc. v. Greenerside Holdings, LLC, Opp. No. 91285160 (TTAB 2024).  The Board struck the affirmative defense of “trademark bullying” because a cannabis company did not…

Continue Reading Bully for You: Cannabis Company Fails to Adequately Plead “Trademark Bullying” Defense Says the TTAB

Join the ABA Litigation Section and JC Zwisler on August 8 at 1 PM ET for “Protecting Cannabis: An In-Depth Discussion of Intellectual Property Protections of Cannabis.” In this virtual CLE program, panelists will discuss how to protect cannabis goods and services through existing and future IP rights in the U.S. Litigation Section members can register for free! Sign up…

Continue Reading Protecting Cannabis: An In-Depth Discussion of Intellectual Property Protections of Cannabis

Federal trademark registration is typically unavailable for goods and services related to the sale of cannabis.  But a combination of federal copyright registration and state trademark registration for these goods and services may provide an opportunity for cannabis companies to protect the substantial investments made in their brands and offerings.  A recent case in California, The Holding Company LLC v. Pacific West Distributors et al. 2:24-cv-00986-DDP-JDE, illustrates potential strategies surrounding intellectual property protection for those in the industry to consider.  It’s easy to imagine what may happen if a competitor began using your branding in a way that treads on your investment without legal means to stop them.  The strategies we discuss below may not be appropriate for all cases.  But cannabis companies, along with their counsel, should evaluate the potential costs and benefits of pursuing these strategies to protect their businesses. Continue Reading Whoa! Cannabis Company Lawsuit Lights Up the Benefits of Creative IP Protection

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