High Risk, High Reward: An Overview of
Navigating IP Rights in the Green Rush
By George “Trey” Lyons,
III, Nicole E. Grimm,
Brett W. Scott and
Margot M. Wilson
The legal U.S. cannabis
market, which includes
medicinal and recreational
sales, is booming. Last
year alone, the industry
accumulated an estimated
$7.2 billion in revenue, and
that number is projected
to grow to $21.2 billion by
2021.1 Currently, twenty-
nine states and D.C. have
medical cannabis laws
in place, eight of which
(and D.C.) have legalized
recreational use as well.2
With cannabis policy reform and legalization
continuing to gain momentum nationwide
and internationally, the “Green Rush” is well
underway. For companies and entrepreneurs
entering this industry, comprehensive
intellectual property (“IP”) protection is
vital for their developing cannabis brands
and inventions.
However, because cannabis remains
illegal under federal law,3 companies seeking
federal IP protection (namely under copyright,
trademark, and patent laws) face challenges
and amorphous legal boundaries that are
unique to this industry. For example, despite
the current federal prohibition and criminality
of cannabis, the U.S. federal government,
through the U.S. Patent and Trademark
Office (“USPTO”) and the Copyright Office,
has granted cannabis-related trademarks,
copyrights, and patents in the past. However,
determining what IP protection exists currently
for those seeking to ride the tides of the Green
Rush presents a fundamentally different and
challenging set of questions. Thus, here we will
discuss the status of federal and state IP laws
and enforcement options available for these
pioneer canna-businesses.
Current Canna-Trademark Rights
A trademark is a word, phrase, symbol, or
design that distinguishes the source of goods
of one company from another company; and a
service mark is the same as applied to services
instead of goods.4 Building a strong brand is
critical to any company, and federal trademark
registration provides potentially the broadest,
and most long-term, protection.5 And, like many
other industries, the cannabis industry relies
on brand names to promote and distinguish
their goods and services from other companies
emerging in the same spaces.6 However, under
current U.S. federal trademark law, the USPTO
has refused to register trademarks on cannabis
goods or services, particularly those in the
context of the cannabis product itself (e.g.,
a particular strain of leafy cannabis). That said,
some further details surrounding the path to
this USPTO policy are worth noting.
First, in the context of federal trademark
A review of developments in Intellectual Property LawSummer 2017 Vol. 15, Issue 3
(continued on page 2)
Page 4
Back to “Normal”?: Patent
Venue After TC Heartland
Page 10
Charting the Waters of International
Service Requirements in the Wake of
Water Splash v. Menon
Page 6
The DTSA After One Year:
Has the Federal Trade Secrets
Law Met Expectations?
