Protection of intellectual property is a key element in any company’s efforts to secure a competitive advantage. For companies in the cannabis space, efforts to secure intellectual property protection play out against a background of conflicting federal and state regulations. Cannabis continues to be a Schedule I drug under the Controlled Substances Act, and possession of cannabis is prohibited by federal law. However, 29 U.S. states and the District of Columbia have legalized medical cannabis, and eight U.S. states have legalized recreational cannabis. This article will address various IP strategies, including trademarks and branding, patents and trade secrets, for protection of cannabis and cannabis-related products and services. The article will also discuss trends in the industry as well as contrasting protections available on the state and federal levels.

Trademark Protection in the Cannabis Space

Obtaining a federal registration for cannabis-related goods and/or services does not come without challenges. Protecting a brand by registering a trademark with the U.S. Patent and Trademark Office (USPTO) is contingent upon use of the trademark in commerce, and such use must be lawful. Therefore, before federal registration can issue, lawful use must be declared and proven. The lawful use rule is violated when the applicant’s application-relevant activities involve a per se violation of federal law. See Trademark Act Sections 1 and 45. The potential violations that arise here center around the Controlled Substances Act (CSA) and the Food, Drug and Cosmetic Act (FDCA).