CBD & Trademarks

Lawful Use in Commerce

Kieran Doyle- Partner, Cowan, Liebowitz & Latman

RADAR DETECTORS;

FOR: DETONATING

FIREWORKS; FIREWORK

FOUNTAINS; FIREWORKS:

FIREWORKS IN SHELL

FORMS, IN CLASS 13

FOR: LEGAL PROSTITUTION SERVICES IN CLASS 45

CLEAR THE MARK

Rely on Common Law Rights

State Applications

VAPOR ROOM

Medical marijuana dispensary

Register the Copyright in the Designs

Register Around The Edges

allbud

Providing a website for commercial purposes featuring ratings, reviews, referrals, information

and recommendations relating to businesses, service providers, events and products in the

medical marijuana industry

CBD and Trademarks

Brand Protection Strategies for CBD

Sarah E. Bro - Partner, McDermott Will & Emery LLP

CBD and Trademarks

• CBD - short for cannabidiol

• One of over 100 cannabinoids found in the hemp plant

• CBD, unlike THC, is non-psychoactive

CBD and Trademarks

• Use of a trademark in commerce must be lawful under

federal law to be the basis for federal registration under

the U.S. Trademark Act

• Cannabis remains a Schedule I controlled substance

under the federal Controlled Substances Act (CSA)

• U.S. trademark applications listing cannabis-based goods

or services must still be refused registration by the United

States Patent and Trademark Office (USPTO)

CBD and Trademarks

• With the passage of the 2018 Farm Bill, the federal

government removed “hemp” from the CSA’s definition of

marijuana

• Cannabis plants and derivatives such as CBD that contain

less than 0.3% THC are no longer controlled substances

under the CSA

• To keep up with this change in the law, the USPTO issued

Examination Guide 1-19 pertaining to the review of trademark

applications listing CBD-related goods and services

CBD and Trademarks

• Under the updated guidelines, certain types of CBD-related

goods and services will still cause a trademark application to

receive an unlawful use refusal from the USPTO

• Food Drug & Cosmetic Act (FDCA) continues to ban foods or

dietary supplements containing added CBD

• Trademark applications designating goods/services that fall

outside of the FDCA ban, might now be approved for federal

trademark registration by the USPTO

– CBD-infused skincare products; cosmetics; non-ingestible topicals

CBD and Trademarks

• Other trademark protection strategies:

– Apply for federal registration in relation to ancillary goods and

services (e.g., retail, informational websites, clothing merch)

– Consider state vs. federal trademark registration strategies for

goods/services still banned under the FDCA

– Rely on existing trademark registrations

• Review prosecution history re: any previous statements relating to

hemp or cannabis products

CBD and Trademarks

• Trademark Selection and Clearance:

– Avoid popular industry lingo • Cannabis strains are considered “merely descriptive”

– Consider traditional brands and goods/services in comparisons

• Trademark Enforcement Considerations:

– Consider trademark prosecution history (Woodstock Ventures LC et al. v. Woodstock Roots LLC)

– Common law trademark rights might not carry against federal trademark infringement claims (Kiva Health Brands Inc. v. Kiva Brands Inc.)

Examples of Registered CBD Trademarks

U.S. Trademark Goods/Services Owner

CBDOOBIE and Design

RN: 6021466

SN: 87878553

Registered March 31, 2020

Int'l Class: 34

First Use: December 15, 2015

Filed: April 16, 2018

(Int'l Class: 34)

Herbs for smoking; the foregoing containing lawful CBD derived from the mature stalks and

sterilized seeds of the industrial hemp plant

Euphoric Smoke LLC (Florida

Limited Liability Company)

5900 Stirling Rd St 2B Hollywood

Florida 33021

HOT MESS KUSHMETICS RN: 5999580

SN: 87926486

Registered March 3, 2020

Int'l Class: 03

First Use: September 1, 2017

Filed: December 20, 2018

(Int'l Class: 03)

Bath bombs; Body butter; Body lotion; Bubble bath, all of the foregoing containing CBD derived solely

from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis

Hangover Soap Co. L.L.C.

(Nevada Limited Liability

Company)

2230 Shaw Circle Las Vegas

Nevada 89117

Patenting in the Cannabis Industry

Gretchen L. Temeles, J.D., Ph.D.

Duane Morris, LLP

Patenting cannabis and cannabis products: legal

framework

• Cannabis is a Schedule 1 drug under US federal law

• USPTO permissive approach to patentability

• human organisms (The Leahy-Smith America Invents Act (AIA) (Public Law 112-29, sec. 33(a), 125 Stat. 284)

• special nuclear material or sole purpose as use in an atomic weapon (The Atomic Energy Act of 1954, See 42 U.S.C. 2181(a))

• Schedule 1 status of cannabis is not relevant to patentability

• Schedule 1 status of cannabis may not be relevant to patent challenge or enforcement

Cannabis patents and applications: trends

Cannabis patents and applications Cannabis legalization

0

10

20

30

40

50

60

70

80

2010 2011 2012 2013 2014 2015 2016 2017

Cannabis Patents and Applications

US granted US applications PCT applications

0

5

10

15

20

25

30

35

2010 2011 2012 2013 2014 2015 2016 2017

Cannabis Legalization: Number of US States

Medical cannabis recreational cannabis

What's being patented?

• plants: utility patents to new varieties, plant patents, genetically engineered plants

• cultivation technology: methods of growing, equipment for supporting growth

• processing: methods of extracting and processing active ingredients from cannabis plants

• products: extracts, oils, resins, foodstuffs, beverages, nutritional supplements, cosmetics, animal feeds, veterinary products

• medical cannabis use: treatments of diseases or disorders-cancer, pain, epilepsy, addiction

• consumption devices: vaporizers, nebulizers, inhalers, rolling papers, beverage dispensers

• detection and chemical analysis

The PTAB case: Insys Development Company, Inc. v.

GW Pharma Limited and Otsuka Pharmaceutical Co (IPR 2017-00503)

• PTAB decision issued January 3, 2019

• Parties: o Petitioner/challenger: Insys Development Company

o Patent holder: GW Pharma

• US Patent No: 9,066,920

• PTAB found claim 1 invalid over references published before the filing date: o 1. A method of treating partial seizure comprising administering cannabidiol (CBD),

to a patient wherein the CBD is present in an amount which provides a daily dose of at least 400 mg.

• PTAB did not agree that combination claims were invalid: o 3. The method of claim 1, wherein the CBD is used in combination with

tetrahydrocannabivarin (THCV).

The Federal court case: United Cannabis

Corporation v. Pure Hemp Collective, Inc. (Case No.: 1:18-cv-01922-NYW)

• Patent infringement case filed July 30, 2018 in the U.S. District Court for the

District of Colorado; case is pending

• Parties o Plaintiff (patent holder): United Cannabis Corporation (“UCANN”)

o Defendant (accused infringer): Pure Hemp Collective (“Pure Hemp”)

• UCANN asserted that Pure Hemp was infringing one or more claims of its

patent, U.S. Patent No. 9,730,911 (“the ’911 patent”)

• Pure Hemp denied infringement and counterclaimed that the claims of the

’911 patent are invalid

UCANN v. Pure Hemp: Issues

• Exemplary asserted claims: o 1. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids

is tetrahydrocannabinolic acid (THCa).

o 10. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is cannabidiol (CBD).

• Pure Hemp’s invalidity arguments o Claims are invalid because they are directed to patent ineligible subject matter ("natural

phenomena, namely cannabinoids and terpenes found naturally in the cannabis plant”)

o Claims are invalid because they are anticipated by or obvious over references describing substantially pure liquid CBD and THC products; known to the public for at least 50 years before the filing date of the ’911 patent

Patenting in the Emerging Cannabis Industry-

strategic considerations

• Patent term is 20 years in US

o businesses seeking patent protection now in anticipation of federal

legalization and ability to enforce patent rights in federal court

o businesses with strong patent portfolios now may be at a

competitive advantage as the industry matures and consolidates

• Value of patent landscape analyses

• Global industry

o cannabis legalized in other countries; international filings

IP Protection of Cannabis Plants

Dale Hunt, PhD, JD-Plant & Planet Law Firm, San Diego

PlantAndPlanet.com

Cannabis IP Protection: 3 forms in U.S.

US: 2 Federal Agencies – 3 Forms of Protection United States Department of Agriculture (USDA)

1. Plant Variety Protection (PVP) Certificate United States Patent & Trademark Office (USPTO)

2. Plant Patent 3. Utility Patent

ROW

UPOV ~75 Countries and Regional Authorities

Plant Breeder’s Rights (same approach as USDA PVP)

1. USDA PVP

• Only available for “industrial hemp” (below 0.3% THC) • Protection also for clones – USDA still working on details • Requires seed deposit • Must be filed within one year of first public access or commercial

sale

• Requires testing for Distinctness, Uniformity, and Stability • Important exemptions – these things do NOT infringe a PVP

• Using the protected cultivar in a breeding program to develop other, distinct cultivars

• Saving seed from one harvest to replant the same acreage

2. USPTO Plant Patent

• Available for any form of Cannabis, regardless of THC level • Only protects asexual propagation • No seed deposit or DNA information required* • Must be filed within one year of first public access or commercial

sale

• Strictly “paper” examination • Breeding history and comparison with parents and similar

cultivars • Description of asexual propagation and selection, stability • Detailed botanical description

3. USPTO Utility Patent

• Available for any form of Cannabis, regardless of THC level • Treats the cultivar as an invention – flexible claiming

• can claim seeds, extracts, breeding with the cultivar as a parent

• Requires seed deposit or other biological deposit • Must be filed within one year of first public access or commercial

sale

• Only option for protecting seeds of high THC cultivars • Only option for controlling breeding with protected cultivar

Plant IP THC Level Seed Deposit Doesn’t Cover

USDA PVP

Below 0.3% THC

YES

Breeding

Saving seed for replanting

USPTO Plant Patent

Any

NO

Seeds

Breeding

Non-clonal similars

USPTO Utility Patent

Any

YES

(or other biological deposit)

Flexible coverage

4. International Plant IP - UPOV

• ~75 member countries • Protection for seeds or clones • Requires seed deposit or “witness plants” • Must be filed within one year of first public access or commercial

sale locally or within four years of first public access anywhere

• Requires testing for Distinctness, Uniformity, and Stability • Same exemptions as USDA PVP – breeding, saving seed

THANK YOU!

Dale Hunt, PhD, JD

dhunt@pnplf.com

Plant & Planet Law Firm

PlantAndPlanet.com