Posts Tagged: "cannabis trademarks"

To capture attention in the crowded new field of cannabis-related goods and services, many companies are using other companies’ brands to promote their goods and services, including puns in the edibles space. Not surprisingly, brand owners are responding with lawsuits, alleging trademark infringement, dilution, and unfair competition among other claims. The focus of these lawsuits is generally quick injunctive relief to stop harm to the brand, rather than damages. This makes sense because of the uncertainty of collecting from companies who do not rely on the traditional finance services industry. But injunctive relief is not guaranteed without demonstrating the four preliminary injunction factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities, and (4) the public interest. This article focuses on the first two of these factors.

Recent case law demonstrates that judicial bodies in the European Union and Russia have taken the stance that cannabis signs and slogans are not acceptable as trademarks as they are contrary to public interest. While the EU Courts are likely to evolve more rapidly on this issue in the near future, for now the position in both the EU and Russia is clear. The interests of the business community must be protected by governments in all countries, and business initiatives should be welcomed. But when weighing the physical and mental health of society on the one hand and business interests on the other, the priority must be the former.

This week in other IP news, recently released data shows that worldwide revenues for music copyright exceeded $28 billion in 2017, up $2 billion over 2016; reports surface about the  “reverse patent trolling” issue in China; Google retains Williams & Connolly for Supreme Court battle with Oracle despite Shanmugam exit; the Copyright Office holds roundtable discussions on detecting online copyright infringement; Twitter takes down a tweet from President Donald Trump after a copyright complaint; “KINKEDIN” trademark for computer dating site successfully opposed in the UK by LinkedIn; EU antitrust regulators are petitioned to look into Nokia patent licensing practices; and loss of patent exclusivity leads to major job cuts at Gilead Sciences. 

In most industries, federal trademark registration is seen as an attractive form of protection, because federal registration converts what would normally be localized common law trademark rights into national rights covering all 50 states. However, businesses in which the products or services involve the manufacture, distribution or consumption of cannabis—aka “plant-touching” businesses—face an uphill battle seeking to build and protect their brands. This is because all “plant-touching” products and services are still considered illegal at the federal level under the Controlled Substances Act (CSA), which prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including cannabis and cannabis-based preparations, and makes it unlawful to sell drug paraphernalia. Accordingly, the USPTO’s current policy is to refuse all trademark applications for cannabis-based goods and services as illegal under the CSA.