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Guest Blog: Protecting Cannabis Strains with Plant Patents

In this post, guest author Jeremy Kapteyn, Ph.D., from Rose Law Group, discusses using plant patents to protect new & distinct strains. Evoke Law has also written about protecting strains: “Branding a Cannabis Strain: Don’t Reinvent the Wheel” in mg Magazine’s April/May 2018 special branding issue. Cannabis breeders, cultivators and others developing cannabis genetic resources are almost invariably surprised to learn that cannabis plants are protectable under U.S. patent laws, notwithstanding their illegal status under the Controlled Substances Act (CSA). While the interplay between the CSA and federal trademark laws effectively prohibits federal registration of marks covering goods and services directly related to cannabis products, since registration requires use in commerce, which is unlawful under the CSA, the patent laws have no such use requirement. Thus, the CSA does not preclude the availability of patent protection for cannabis-related inventions, including cannabis plants themselves. Not only can cannabis plants be patented, but they are eligible for two different types of protection: utility patents and plant patents. This article focuses on plant patent protection and provides practical insights into how plant patents can be commercially valuable to cannabis breeders and cultivators. Plant Patent Eligibility Requirements 1. Asexual Propagation A key element of eligibility for plant patent protection is the ability for the plant to be asexually propagated (i.e., multiplied without using seeds). This includes any non-seed methods of propagation, such as by rooted cuttings (a propagation method routinely used for cannabis), as well as tissue culture propagation, which is of increasing interest in the industry. 2. “Distinct” & “New” The other key elements of plant patent eligibility are that the subject...

Branding a Cannabis Strain: Don’t Reinvent the Wheel

Originally published in the April/May 2018 edition of mg Magazine.  Before you name a strain, you need to know the strain name and the brand name are not the same. A brand name or trademark does not communicate “what” the product is, but rather “who” is providing it, meaning, a trademark doesn’t tell you about a product, but instead communicates the source or origin. When selecting a trademark, always aim to choose a term or phrase that is both distinctive and exclusive, staying away from names that are descriptive, deceptively misdescriptive, or confusingly similar to state or federally registered marks, an applied-for mark, and common-law (unregistered) marks that are used for related goods or services, as well as famous trademarks, which enjoy an even broader scope of protection. If you select a trademark that is also the name of a strain used in your products, the selected mark would be considered merely descriptive of the product and not protectable for such cannabis products. For example, if an edible product named “Blue Dream” incorporates the Blue Dream strain, the manufacturer would not be able to protect the product name because it is merely descriptive of a product feature. Alternatively, if your cannabis product shares a name with a strain but the product does not contain that strain, the selected mark may be found deceptively misdescriptive if consumers would assume (albeit incorrectly) your product contains the particular strain. Marks comprising strain names such as OG Kush, Hardcore OG, and Charlotte’s Web are examples of popular strains the United States Patent and Trademark Office has found potentially descriptive or deceptively misdescriptive. Unique...

Guest Blog: Opportunities in Canada: Intellectual Property Protections

By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad. Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.” With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use. The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in...

Guest Blog: Insurance Challenges for Cannabis Businesses

As the cannabis industry grows and business challenges proliferate, there are a variety of legal issues that are increasingly of interest to cannabis operators. Evoke Law specializes in trademark protection and brand licensing for the cannabis industry, and also offers a wide range of consumer protection legal services, including packaging and labeling compliance, recall plans, and counseling to avoid making impermissible product health claims. We also leverage our extensive network of diverse legal specialists to offer our clients information and resources that will bring additional overall value. Our first Guest Blog is by Jason Horst, Esq., Principle at Horst Counsel, on the topic of insurance. Cannabis companies keep hearing that they need to “cover up.” However, California’s regulations only require those holding distributor licenses to carry general liability insurance, and those regulations do not require non-distributor licensees to carry any liability insurance at all.  Nevertheless, many California cannabis operators are finding themselves subject to other requirements that they carry liability insurance. For example, some local jurisdictions have begun establishing their own insurance requirements. In November 2017, Los Angeles rolled out an ordinance requiring that every permitted cannabis operator in the City carry products liability insurance. Complying with these cannabis insurance requirements is both trickier and more fraught than it might appear, so it is critical for operators to be diligent on multiple levels. When it comes to local cannabis insurance provisions, it is important to understand that these requirements tend to vary significantly from jurisdiction to jurisdiction. Los Angeles requires all operators to carry products liability insurance, while Long Beach requires public liability insurance. The City of Coalinga has gone so...

California Trademarks Division Accepting Applications for Cannabis Goods & Services

It was initially announced that licensed California cannabis companies may file service mark applications to register marks for licensed cannabis-related services beginning January 1, 2018. But, in an unexpected shift in position, this changed on January 12. As of January 12, 2018, the California Secretary of State’s Office now accepts trademark applications for cannabis products (in addition to service mark applications). A state registration has a valuable defensive effect as they are public and can be found by others conducting a nationwide search for state registrations. In order to obtain protection for cannabis goods and services, an applicant must (1) be offering the goods or services in California commerce; (2) classify the goods and services in accordance with the same classification system used by the USPTO (the Nice Classification System); (3) have been issued a temporary license or have a trademark license with a license holder; and, for goods; and (4) be fully compliant with MAUCRSA and the emergency regulations, including packaging and labeling requirements. Additionally, while manufacturing, cultivating, or distributing your own branded products is not a protectable service, distributing someone else’s branded products does not preclude you from also distributing your own branded products and manufacturing someone else’s branded products does not preclude you from also manufacturing your own branded products. Similarly, cultivating flower under your own brand and then selling the flower to a retailer who sells it to the consumer under a different brand name would constitute a protectable service. As priority is an issue in any trademark dispute, filing applications sooner rather than later is important for marks for cannabis goods and services that are currently provided to California patients and/or consumers.  ...

Product Recall Plans for California Cannabis Manufacturers

Cannabis products are certainly not immune from a recall, as we have already seen in Colorado, Oregon, and Washington. In most industries, state and/or federal law dictate product recall protocol. Since cannabis remains federally unlawful, neither the Food and Drug Administration or other federal agency has regulations specifically concerning cannabis recalls. For California manufacturers, the California Department of Health’s (DPH) emergency regulations (see Section 40268) provides general parameters for cannabis recall policies. Various circumstances may trigger a cannabis product recall, such as detection of unlawful levels of pesticides, mold, or rot, reports of illness, mislabeled or improperly packaged products, or the product itself being unsafe (e.g., exploding vape battery). How a business conducts itself during a recall can either convey a high level of professionalism or expose inexperienced operational capability. Without a well-thought out and comprehensive product recall plan to help guide a company’s actions, recalls can be unnecessarily stressful and chaotic. If tragedy strikes, businesses must be able to act quickly, efficiently, and confidently to prevent or mitigate personal injury, as well as to limit damage to the brand’s goodwill and bottom line. As a condition of licensure, most states with commercial cannabis regimes require licensees to establish a product recall plan, but few states actually provide substantive guidance on what a recall plan should entail. California requires that manufacturers of cannabis products establish and implement written recall procedures for products determined to be misbranded or adulterated. At minimum, the DPH specifies such written recall procedures must: Identify factors that may necessitate a recall Designate personnel responsible for implementing the recall procedure and notifying the required state authorities...