As the cannabis industry grows and professionalizes, especially in the U.S., issues surrounding how to effectively protect intellectual property within the industry are coming to the fore with increased frequency. And in an industry that (generally) remains illegal at the federal level, these issues can be fraught. In this episode of our series, our panelists will walk through Intellectual Property issues specific to the cannabis, hemp, and CBD industry, including how business can (and in some cases cannot) protect their brands, trademarks, and patents. We’ll also discuss notable litigation in the space, and how businesses can best position themselves for success in the future.

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5. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
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6. Meet the Faculty
MODERATOR:
Jack O’Connor - Sugar Felsenthal Grais & Helsinger LLP
PANELISTS:
Joshua Masur - Zuber Lawler & Del Duca LLP
Chelsie Spencer - Ritter Spencer PLLC
Shabnam Malek - Brand & Branch LLP
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7. About This Webinar - Protecting Intellectual
Property in the Cannabis Industry
As the cannabis industry grows and professionalizes, especially in the U.S., issues
surrounding how to effectively protect intellectual property within the industry are coming to
the fore with increased frequency. And in an industry that (generally) remains illegal at the
federal level, these issues can be fraught.
In this episode of our series, our panelists will walk through Intellectual Property issues
specific to the cannabis, hemp, and CBD industry, including how business can (and in some
cases cannot) protect their brands, trademarks, and patents. We’ll also discuss notable
litigation in the space, and how businesses can best position themselves for success in the
future.
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8. About This Series
Cannabis Law 2020
The U.S. cannabis industry has exploded over the past decade. With every emerging industry comes legislation,
rules, investors, and questions. The legalized cannabis industry is no different. And as more states in the U.S.
adopt adult use and medical cannabis laws and regulations, it is incumbent on businesspeople and
professionals to educate themselves about the challenges and opportunities facing the industry, as well as how
to navigate the legal landscape governing cannabis businesses, whether those businesses “touch the plant,” or
not. Thankfully, we’re here to help. In this series, we provide an essential foundation for any businessperson or
professional looking to get smart about the cannabis industry. In our first episode, we present an overview of the
cannabis industry and the competing legal frameworks at state and federal levels. In our second episode, we will
discuss investment strategies for getting involved in the cannabis industry. Our third episode will discuss specific
legal issues surrounding intellectual property rights in the cannabis space. And we’ll conclude with our fourth
episode, focused on legal and business issues for employers and employees in states where cannabis has been
legalized for both medical and adult use.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and
executives without much background in these areas, yet is of primary value to attorneys, accountants, and other
seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that
participants will enhance their knowledge of this area whether they attend one, some, or all episodes.
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9. Episodes in this Series
#1: Cannabis Basics: Getting up to Speed with Current Laws, Legislation, &
Essential Business Issues
Premiere date: 1/29/20
#2: Cannabis Investment: Successes, Failures, & Strategies for the Future
Premiere date: 2/26/20
#3: Protecting Intellectual Property in the Cannabis Industry
Premiere date: 3/25/20
#4: Cannabis Legal & Business Issues for Employers & Employees
Premiere date: 4/22/20
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10. Episode #3
Protecting Intellectual Property in the Cannabis Industry
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11. US Legal Landscape: Federal Prohibition
The Controlled Substances Act (“CSA”), 21 U.S.C. §§ 801-971 criminalize the following with
respect to cannabis:
• Growing;
• Processing;
• Selling;
• Knowingly renting, managing, or using property for the purpose of manufacturing or
distribution;
• Selling or offering to sell drug paraphernalia (including equipment, products, or materials of
any kind which is primarily intended or designed for use in manufacturing cannabis); and
• Deriving profits or proceeds from violations of the CSA
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12. A Brief Glossary
THC (tetrahydrocannabinol)
• Best known & most abundant available cannabinoid in marijuana plants, responsible for
psychoactive effects or the “high,” of cannabis products.
CBD (cannabidiol)
• One of many cannabinoids found in cannabis. CBD has gained support for its use as a
medical treatment as research has shown it effectively treats pain, inflammation,
and anxiety without the psychoactive effects associated with THC.
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13. A Brief Glossary
Hemp/industrial Hemp
• a fibrous product that can be produced from the male cannabis plant (meaning it generally
can’t be used to produce intoxicants), used in the manufacture of rope, paper, clothing,
beauty products, and other goods.
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14. Intellectual Property Overview
Trademark: word, name, symbol or device used in trade with goods to indicate the source of
the goods and distinguish them from the goods of others.
Patent: protects inventions by excluding others from making, using, or selling the invention
without permission for a limited time without permission.
Copyright: protects original works of authorship including literary, dramatic, musical, artistic,
and certain other intellectual works, both published and unpublished.
Trade Secret: information which is sufficiently secret as to derive economic value and subject
to efforts to maintain its secrecy or confidentiality.
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15. Trademarks: Federal Registration
Federal trademarks registered with the U.S. Patent and Trademark Office (“USPTO”) offer
nationwide notice and infringement protection.
Trademark application types:
Use-in-Commerce: currently using mark in commerce to identify source of good or service
Intent-to-Use: bona fide intent to use mark in commerce to identify the source of a good or
service
USPTO requires claimed good or services to be lawful under federal law, and that the mark
used in commerce (or intended to be used) is able to be regulated by Congress.

16. Trademarks: State and Common Law
Trademarks are also protected by State and common law. Registration on a State or National
level is not required, but alters the scope of notice and protection:
• USPTO: nation-wide exclusive right to use, legal presumption of ownership
• State registration: state-wide exclusive right to use
• Common law: right to use confined to specific area the mark is used in commerce
Trademarks can be registered with Illinois through the Office of the Illinois Secretary of State.
Most states do not permit “Intent to Use” applications

17. Trademarks: USPTO
USPTO refuses to register marks for goods and/or services that show a clear violation of
federal law, regardless of state law. Cannabis and cannabis-related goods and/or services
applications are rejected.
USPTO looks to the following laws to determine registration eligibility:
• Controlled Substances Act (“CSA”)
• Federal Food and Drug and Cosmetic Act (“FDCA”)
• Agriculture Improvement Act of 2018 (“2018 Farm Bill”)
USPTO Examination Guide on Marks for Cannabis (May 2, 2019):
https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf
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18. The 2018 Farm Bill (Hemp Farming Act of 2018)
• The 2018 Farm Bill legalized production of hemp as an agricultural commodity & removed
hemp from the list of controlled substances.
• Also requires Secretary of Agriculture to conduct study of hemp-related agricultural pilot
programs implemented under prior 2014 Farm Bill.
• Does not create a system for producers to grow hemp as freely as other crops: caps THC
content for industrial hemp plants at 0.3%.
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19. 2018 Farm Bill and Trademark Registration
• USPTO applications filed on or after December 20, 2018 for marks of goods derived from
hemp products falling under the 2018 Farm Bill are not immediately rejected.
• Identification of goods must specify that they contain less than 0.3% THC.
• USPTO examining attorneys provide applicates who filed before December 20, 2018 the
option of amending their filing date.
• Not all goods for CBD or hemp-derived products are lawful after the 2018 Farm Bill.
Lawful-use issues are also raised under the FDCA.
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20. Federal Food Drug and Cosmetic Act
• 2018 Farm Bill preserves the FDA’s authority to regulate products containing cannabis or
cannabis-derived compounds.
• Drugs or substances undergoing clinical investigations cannot be use in foods or dietary
supplements of without approval of the FDA.
• CBD is a substance undergoing clinic investigations.
• Trademarks for foods, beverages, dietary supplements, or pet treats containing CBD will
be refused as unlawful under FDCA, even if derived from hemp.
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21. Trademarks: Plant-touching goods
A business that touches the plant or products of the plant is going to have a harder time
registering a trademark than a business that is not directly involved with the plant.
In re JJ206, LLC: US Trademark Trial and Appeal Board (“TTAB”) denied cannabis and
marijuana vaporizers intent-to-use application because the vaporizers qualified as unlawful
drug paraphernalia under the CSA.
A graphic of a cannabis can be trademarked as long as it does not identify cannabis-related
goods and services.
• I.e., Apparel or accessories that are not cannabis-touching

22. Trademarks: First Amendment Protections
Iancu v. Brunetti and Matal v. Tam: The Supreme Court recently held that prohibiting
registration of trademarks deemed immoral, scandalous or disparaging material was
unconstitutional, violating the First Amendment.
Some theorize that these two decisions pave the way for cannabis trademarks, arguing
current USPTO rejections are based on moral judgment prohibitions.
As of this webinar, the USPTO has not changed its position on cannabis-related trademark
registration.

23. Trademarks: Registration & Enforcement
Challenges for cannabis brands include:
• Clearance searching
• Lack of distinctive and unique brands (not unique)
• Federal registration a problem
• Enforcement uncertain
• Similar competing brands can arise and must co-exist
• Differing regulatory schemes (affects licensing/growth, labeling, product dev, and
design/labeling)

24. Trademarks: Registration & Enforcement

25. Patents: USPTO
Like trademarks, patents are registered and maintained federally through the USPTO.
Unlike trademarks, there is no state registration of patents or common law protection.
Patents do not require lawful federal use for approval. Therefore, the USPTO does not
automatically reject cannabis-related patent applications.

26. Patents: Patentability overview
Patents are inventions or discoveries of any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof.
Inventions or discoveries must be new, nonobvious, and useful to be patentable. Laws of
nature, natural phenomena, and abstract ideas are not patentable under the Alice test.
There is a massive lack of prior art documentation due to the history of federal prohibition of
cannabis, making it difficult for USPTO examiners to find evidence that the invention already
exists.
Companies that are granted patents could face heavy litigation from competitors, because
there is a question of validity to new cannabis patents.
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27. Types of Patents: Utility and Design
Utility patents: protects the way an article is used and works; the broadest type of protection
and most common type of patent.
• Decisions on applications publicly available under about 18 months after fling date
• Can be used to cover seeds, cannabis compositions, methods of preparation, methods of
treating diseases with cannaboids, and other complex chemical compositions
Design patents: protects the ornamental design of an article of manufacture

28. Types of Patents: Plant
Plant patents: protects asexual reproductions of any distinct and new variety of plant
• Does not apply to a tuber propagated plant or plant found in an uncultivated state
Only good for legal protection against a competitor growing the same cultivar from a clone.
Plant varieties can also be protected under the Plant Varity Protection Act and Plant Patent
Act, but these provide less protection than utility patents.

29. Patents: Duration
In 2013, the U.S. adopted a first-to-file patent system, meaning that the right to a granted
patent for a given invention lies with the first person to file a patent application directed to that
invention, regardless of the date of actual inventive activity.
Design patents protection runs 15 years from date application was filed.
All other patents, including utility patents, run 20 years from date application was filed.
Patents require public disclosure. After expiration of the patent, anyone can copy the
invention.
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30. Patents: Licensing
As a patent holder, consider licensee’s:
• Financial status
• Ability to manufacture and distribute the licensed product
• Reputation in the industry
As a licensee, consider licensor’s:
• Scientific development capability
• Financial status
• Ability to enforce the licensed patent against infringers
• Track record of successful patent licensing
• Ability to provide support, training, or know-how to help the licensee successfully use or
commercialize the patented technology

31. Patents: Patentability Litigation
United Cannabis Corporation v. Pure Hemp Collective Inc.: addresses the validity of United
Cannabis Corporation’s (“UCANN”) patent on liquid CBD products (Colorado).
• First case on the validity of a cannabis-related patent.
• Pure Hemp Collective, Inc. argues UCANN’s patent is naturally occurring phenomenon,
which is not patentable matter.
• April 2019: District court judge found that UCANN’s patented liquid CBD products are not
naturally occurring phenomena. The patent passed patentability under the Alice test. The
court did not address whether the patent was new, useful, or nonobvious.

32. Patents: Industrial Hemp
The USPTO is actively reviewing and granting patents related to industrial hemp technology.
The U.S. Department of Health obtained a utility patent relating to potential use of non-
psychoactive properties of the cannabis plant to protect the brain from damage or
degeneration caused by certain diseases.
Charlette’s Web Holdings, Inc (“CWB Holdings”) secured the first-ever patent for hemp
cultivar in the U.S. granted July 2, 2019 (plant patent).

33. Trade Secrets
Product ingredients, recipes, business plans, vendor and customer lists, and manufacturing
processes can all constitute valuable trade secrets if properly maintained and kept
confidential.
Trade secrets can protect non-patentable products and last indefinitely as long as they remain
secret, where patents expire after 20 years (15 if design patents).
Protected under state law
Defend Trade Secrets Act of 2016 created federal right of action
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34. Trade Secrets: Keeping Something Secret
Companies must make reasonable efforts to keep the information secret. Reasonableness
depends on circumstances. More precautions may be necessary to qualify as reasonable for
bigger companies.
Examples:
Written non-disclosure agreements and non-compete agreements with anyone with access to
the secret information.
• Non-disclosures: careful not to allow disclosure after time period, only after publicly
available
Secured serve for digital information
Lock physical files and limit personnel access to secret information

35. Trade Secrets: Cannabis concerns
Inclusion of information in government licensing applications and registrations can result in
protection loss.
companies entering into government contracts must outline whether
information provided through a government partnership will lose trade secret protection,
and, if not, what efforts the government will undertake to either defend the secret, or alert
the company that someone is seeking it.
Disclosing a trade secret in a manner that makes it subject to a public record request, or
public viewing can waive trade secret protection.

36. Trade Secrets: Litigation
Where litigation can occur:
• Employee or group of employees leave one company for a competitor and are alleged to
take its trade secrets
• Company who comes out with a similar product/device/set of information, and is alleged to
have stolen the idea from its competitor
Examples:
Rymedi Inc., a pharmaceutical tech company, accused a consultant and his consultant firm of
violating the Defend Trade Secrets Act by contacting Rymedi’s customers and disparaging
the company.
• The consultant signed a nondisclosure agreement during meetings with Rymedi.

37. Trade Secrets: Litigation
Examples continued:
Healthcare Resources Management Group LLC filed trade secrets claim against Medterra
CBD LLC for stealing their formula for a topical cream (Florida).
• Healthcare Resources accused Medterra of obtaining the formula from two other
companies with whom Healthcare Resources had nondisclosure and confidential
agreements.

38. Copyrights: Overview
To obtain protection, content must be:
• Original to the author
• Have a modicum of creativity
• Be fixed in a tangible medium
Protection includes the right to reproduce, display, distribute, perform, and create derivative
works.
For cannabis brands, federal copyright protection is available to protect most business
creations, as long as those creations are sufficiently original to be copyrightable. Example of
protectable material includes:
• Innovative advertisements, training materials, cannabis product or service descriptions,
compelling photographs, packaging designs and configurations, and logo design.
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39. Copyrights: Federal Registration
Copyright Act contains virtually no prohibitions on what types of work are eligible for copyright
protection, including cannabis-related work.
To date, no cannabis copyright infringement claim has been raised, making it impossible to
determine whether cannabis copyrights are in fact enforceable.
Registration of copyrightable material is not required and there is common law protection.
Registration with the U.S. Copyright Office is required to file any claim of copyright
infringement in federal court.

40. Copyrights: Duration
Works created by individuals are protected for the life of the author, plus 70 years.
Works created anonymously, pseudonymously, and for hire are protected for 95 years from
the date of publication or for 120 years from the date of creation, whichever is shorter.
While the duration of a copyright is not the equivalent of a trademark (which is potentially
indefinite), copyright may provide some alternative protection due to the USPTO’s blanket
rejection of cannabis-related trademarks.

41. About the Faculty
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42. About The Faculty
Jack O’Connor - joconnor@sfgh.com
Jack is partner in the Chicago office of Sugar Felsenthal Grais & Helsinger LLP. Jack’s practice covers a
range of healthy and distress business engagements. Jack leads Sugar Felsenthal’s “Vice,” practice,
working with business clients in the Beer, Spirits, and Cannabis industries.
Jack is also widely recognized for his excellent work as a restructuring attorney including recognition by
various organizations for his strategic thinking and tactical expertise, including SuperLawyers Magazine,
Leading Lawyers Magazine, and the Turnaround Management Association.
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43. About The Faculty
Joshua Masur - jmasur@zuberlawler.com
Joshua Masur, head of Zuber Lawler’s Intellectual Property Practice Group, focuses his practice on
patent, copyright, trademark, and trade secret litigation. For nearly two decades, Mr. Masur has
represented technology and emerging industry companies in courts, administrative agencies, and in
private dispute resolution procedures. His experience spans such disparate technologies as computer
displays, online marketplaces, semiconductor chip design, cannabis, streaming online video, police
protective equipment, user interfaces, WiFi, encryption and authentication, and automotive pollution
controls. Mr. Masur is a past president of the San Francisco Bay Area Intellectual Property American Inn
of Court, the premier organization in Northern California dedicated to fostering skills, professionalism,
collegiality, and ethics among the intellectual property bench and bar. He was a member of the American
Intellectual Property Law Association, and served on several of its committees, including the Committee
on Patent Litigation and its subcommittees on the Model Patent Jury instructions, Confidentiality in
Litigation, and Pleading Standards. He has been selected for inclusion in THE BEST LAWYERS IN
AMERICA® since 2017, and in Northern California SuperLawyers since 2011.
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44. About The Faculty
Chelsie Spencer - cspencer@ritterspencer.com
Chelsie Spencer’s practice focuses on transactional and litigation work in intellectual property and complex
commercial matters. Chelsie has secured registration of numerous federal trademarks and copyrights for her
clients. She has negotiated and drafted trademark and copyright licensing, consent, coexistence, and
assignment agreements for a variety of industries, including record labels, publishing companies, authors, and
other content owners. ​Chelsie also practices in the areas of medical marijuana, cannabidiol, and industrial hemp
and represents clients within those industries for business law and compliance issues. She represents many
businesses in the industrial hemp industry for their trademark registrations and trademark portfolios containing
goods including cannabidiol as an ingredient. She is very active in lobbying and legislative activity in these fields
and frequently writes, speaks, and presents on issues affecting these industries across the United
States. ​Chelsie’s litigation experience includes enforcing and defending claims of copyright infringement,
trademark infringement, patent infringement, false designation of origin, trade secret misappropriation, breach of
contract, and tortious interference with contract, among others. She is licensed in both Texas and Florida and
has represented clients in federal and state litigation throughout the nation, at both the trial and appellate level.
She has tried numerous cases to verdict in both state and federal courts.
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45. About The Faculty
Shabnam Malek - shabnam@brandandbranch.com
Shabnam Malek is a partner at Brand & Branch LLP and founding President of the International Cannabis
Bar Association. Shabnam's practice is diverse and touches various industries and practice areas, but
her true passion is in bringing her brand protection and trademark law expertise to regulated industries.
Shabnam represents large, global companies as well as smaller startups and local companies in
developing strong intellectual property portfolios, defending their rights, and expanding their presence
through agreements nationally and globally.
During the launch of Brand & Branch, Shabnam and her law partner, Amanda R. Conley, founded the
National Cannabis Bar Association, which recently expanded its reach to become the International
Cannabis Bar Association (INCBA). Today, INCBA boasts a membership base of over 600 individual
attorney members and a strong international presence. Shabnam and Amanda's vision for the
organization was realized in the organization's flagship annual two-day legal educational event, the
Cannabis Law Institute.
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46. Questions or Comments?
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IMPORTANT NOTE: The material in this presentation is for general educational purposes
only. It has been prepared primarily for attorneys and accountants for use in the pursuit of
their continuing legal education and continuing professional education.
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