USPTO Greenlights Some Cannabis Trademarks

The U.S. Patent and Trademark Office (USPTO) Recently Issued New Guidance That Clears the Way for Certain Cannabis Trademarks

The U.S. Patent and Trademark Office (USPTO) recently issued new guidance that clears the way for certain cannabis trademarks. While the USPTO has previously refused to register any cannabis-related goods and services, it has reevaluated its position in the wake of the 2018 Farm Bill.

2018 Farm Bill Legalized Industrial Hemp

The 2018 Farm Bill removed “hemp” from the Controlled Substances Act’s (CSA) definition of marijuana, which means that cannabis plants and derivatives that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.

While hemp production was previously restricted to pilot programs, the 2018 Farm Bill is predicted to foster a rapid expansion of the industrial hemp industry. It authorizes the transfer of hemp-derived products across state lines for commercial or other purposes. In addition, it does not place any limitations on the sale, transport, or possession of hemp-derived products, provided that such products are produced in accordance with the law. Notably, the law does not modify the authority of the Secretary of Health and Human Services or Commissioner of Food and Drugs to regulate hemp under applicable U.S. Food and Drug Administration (FDA) laws.

USPTO’s Prior Position on Cannabis Trademarks

To obtain federal registration for a mark, a mark’s use in commerce must be lawful under federal law. While states are increasingly decriminalizing marijuana, it remains illegal under the CSA. 

Citing the fact that cannabis remains a banned substance under the CSA, the USPTO has refused federal registration of medical marijuana and other cannabis-related trademarks, making it difficult for cannabis businesses to protect their intellectual property.  According to the USPTO, it “refuses registration when an application identifies goods encompassing cannabidiol (CBD) or other extracts of marijuana because such goods are unlawful under federal law and do not support valid use of the applied-for mark in commerce.”

Examination Guide on Trademark Applications for Cannabis and Cannabis-Derived Goods

In its Examination Guide, the USPTO notes that the federal regulation of cannabis has become more complex with the passage of the 2018 Farm Bill. Notably, the determination of whether commerce involving cannabis and cannabis-related goods and services is lawful now requires consultation of the CSA, the Federal Food Drug and Cosmetic Act (FDCA), and the 2018 Farm Bill.

With regard to the examination of marks for cannabis and cannabis-derived goods, such as CBD, the USPTO advises that hemp-derived goods that comply with the 2018 Farm Bill are now eligible for federal trademark protection. However, for a trademark application to be approved, the identification of goods must specify that they contain less than 0.3% THC. In addition, only applications for marks covering hemp-based products and related services filed after December 20, 2018, are eligible for federal registration. 

For applications filed before December 20, 2018, that identify goods encompassing CBD or other cannabis products derived from hemp, registration will still be refused. However, the USPTO examining attorney will provide such applicants the option of amending the filing date and filing basis of the application to overcome the CSA as a ground of refusal. Because of the new legal definition of “hemp” under the 2018 Farm Bill, the applicant will also be required to amend the identification of goods to specify that the CBD or cannabis products contain less than 0.3% THC. Alternatively, applicants may elect to abandon the subject application and file a new application.

The USPTO makes it clear that its new guidance only applies to goods derived from hemp. “Cannabis and CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) still violates federal law, and applications encompassing such goods will be refused registration regardless of the filing date,” the Examination Guide states.

In addition, the USPTO emphasizes that even if the identified goods are legal under the CSA, such goods may still raise lawful-use issues under the FDCA. Accordingly, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, because they may not be introduced lawfully into interstate commerce.

Examination Guide on Trademark Applications for Services Involving Cannabis and Cannabis Production

If the identified services involve hemp, trademark applications will also be examined for compliance with the requirements of the 2018 Farm Bill. Applicants refused registration under the CSA will have the same options, such as requesting amendment of the filing date and basis of their application. As with hemp-derived products, applicants must amend the identification of services to specify that the involved cannabis contains less than 0.3% THC on a dry-weight basis.

The USPTO further advises that, for applications that recite services involving the cultivation or production of hemp, the examining attorney will also issue inquiries concerning the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm that their activities meet the requirements of the 2018 Farm Bill with respect to the production of hemp.

The 2018 Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp. As discussed in a prior article, the USDA has not yet promulgated regulations, established its own hemp-production plan, or approved any state or tribal hemp-production plans. However, the 2018 Farm Bill directs that states, tribes, and institutions of higher education may continue operating under authorities of the 2014 Farm Bill until 12 months after the USDA establishes the plan and regulations required under the 2018 Farm Bill.

Key Takeaway for Cannabis Businesses

The USPTO’s Examination Guide is welcome news for businesses that provide hemp-derived goods and services or are looking to enter the growing hemp industry. Unfortunately, the agency has yet to relax its stance on trademark protection for medical and recreational cannabis, which remain illegal under the CSA. These challenges in IP protection will exist until such a time that federal law decriminalizes or legalizes marijuana.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Giles Davis, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

This article is a part of a series pertaining to cannabis legalization in New Jersey and the United States at large. Prior articles in this series are below:

• Expansion of New Jersey’s Medical Cannabis Industry Is Now Official
• NJ DOH Presses Pause on Medicinal Marijuana Program RFA
• Bill to Expand NJ Medicinal Marijuana Program Heads to Gov. Murphy

Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.