Apologies for the cannabis puns in the title, but they are required by law. Okay, you are correct. That is not true. But it is true that trademark protection is important for individuals in the cannabis industry. Earlier this month, Ohio became the 24th state in the U.S. to legalize recreational marijuana. As more states pass laws to legalize marijuana, the conversation returns to the likelihood that Americans might see a law with nationwide reach. A federally applicable law (or lack thereof) becomes significant in the context of obtaining a trademark registration for cannabis products and services. Even if the products or services are legal under state law, the U.S. Patent and Trademark Office (USPTO), which oversees the registration of federal trademarks, requires that use of the mark be federally lawful before it will issue a federal trademark registration.
The lack of federal regulations legalizing marijuana, disparities among state laws, and abundant nuances to trademark rights in cannabis goods and services have deterred trademark owners from pursuing trademark protection altogether. This is troubling because federal trademark registration provides its owner with several legal benefits, such as nationwide rights and protection in its trademark, a legal presumption of validity and ownership, and the right to use the ® symbol. Without a federal registration, a trademark owner’s rights are geographically limited and do not carry the same legal presumptions. Still, we have developed tips and strategies for obtaining trademark protection for cannabis goods and services, permitting those who operate in the cannabis space to protect one of their most valuable assets: their trademarks.
Tip #1: Using your business name to obtain a license and/or authorization to produce hemp does not replace the protection of your trademarks.
If you are producing hemp, the 2018 Farm Bill requires the hemp production to be subject to a state, territory, or tribe’s license or authorization, which must occur in accordance with a plan approved by the U.S. Department of Agriculture (USDA). Obtaining such a license or authorization does not establish trademark rights. Even filing articles of incorporation or articles of organization do not provide trademark rights and will not stop others from using your name as a brand or a mark. Common law trademark rights are acquired by using a mark in commerce. However, a federal trademark carries with it the important procedural and rights presumptions that are why so many trademark owners secure them.
Tip #2: You can get a federal trademark registration for cannabis-related goods.
Certain products derived from hemp and containing less than 0.3% THC on a dry-weight basis are eligible for a federal trademark registration. The USPTO will determine whether sales in commerce of cannabis-related goods is lawful by considering the Controlled Substances Act (CSA), Federal Food, Drug, and Cosmetic Act (FDCA), and the 2018 Farm Bill. The 2018 Farm Bill removed “hemp” from the CSA’s definition of marijuana. As a result, cannabis and its derivatives (i.e., CBD), which contain no more than 0.3% Delta-9 THC on a dry-weight basis are no longer controlled substances under the CSA and may be eligible for a federal trademark registration. Unfortunately, although other cannabis products and related services are not federally legal at this time, and thus ineligible for federal trademark registration, the legal structure governing the cannabis industry is constantly evolving future. We continue to monitor this and other trademark issues closely to keep our clients ready to quickly secure the protections they need if and when the landscape changes.
Tip #3: You can get a federal trademark registration for cannabis-related services.
Certain services are eligible for federal trademark protection if they are services related to the production of products derived from hemp containing less than 0.3% Delta-9 THC on a dry-weight basis and are in compliance with the CSA and the 2018 Farm Bill. Similar to cannabis goods, the USPTO will confirm compliance with the CSA and the 2018 Farm Bill.
Tip #4: Even if you tell the USPTO your product contains less than 0.3% THC on a dry-weight basis, the USPTO may require additional information.
The USPTO may require the applicant to answer certain questions about the goods and services, prospective consumers, and the channels of trade, among other inquires. Proof of the THC amount on a dry-weight basis may be required in some instances. Furthermore, if the services provided in the application include the cultivation or production of cannabis, the USPTO will request information about the applicant’s permission to produce hemp under license or authorization by a state, territory, or tribal government.
Tip #5: Even if your product contains less than 0.3% Delta-9 THC on a dry-weight basis, the USPTO may not grant a trademark registration.
While the CSA will no longer serve as the basis for an objection for such products, the USPTO will still refuse registrations for foods, beverages, dietary supplements, and pet treats containing CBD, even if less than 0.3% THC on a dry-weight basis, because such goods are subject to the FDCA and may not be lawfully sold or transported through interstate commerce. This means other strategies must be used to get trademark protection for these products.
Tip #6: Even though your product is ingestible, you should still seek federal trademark registrations if you also offer non ingestible products.
If you produce non ingestible products for use in connection with goods containing less than 0.3% Delta-9 THC on a dry-weight basis, obtaining a trademark registration can establish your brand in the Trademark Office’s database for those non ingestible products, even if you also sell ingestible products. As discussed above, if you use the mark in connection with goods ingested by humans or pets, you will not be able to obtain a federal trademark registration at this time because sales of such products in commerce are not currently federally legal. However, trademarks for non ingestible products containing less than 0.3% Delta-9 THC on a dry-weight basis are eligible for trademark protection at the USPTO. A registration for such non ingestible products will establish your presence in the marketplace and may allow you to rely on the registration for non ingestible products to pursue a registration for ingestible products if they do become federally legal.
Tip #7: You may be able to protect your trademark rights in cannabis-related goods and services through a state trademark registration and/or common law trademark rights in lieu of, or in addition to federal trademark protection.
Certain states that have legalized marijuana permit state trademark registrations for marijuana- and cannabis-related goods and services. If federal laws prevent federal trademark protection at this time, you may be able to pursue a state trademark registration. The requirements for state trademark registrations vary state-by-state, but generally, a state trademark applicant must file the application with the state’s secretary of state or similar governing organization. Oftentimes, the application requires that the applicant show use of the mark in connection with the goods or services identified in the application. In general, a state trademark registrant must continue using the mark in commerce and file maintenance documents, usually every five to 10 years, depending on the state, to maintain a state trademark registration.
Additionally, use in commerce establishes common law rights in the mark in connection with the goods and services with which you use the mark in the geographic areas where you use the mark in commerce.
Tip #8: Marijuana being rescheduled to a Schedule III drug may be in flux, but that does not mean you should wait to take action in protecting your trademark rights in cannabis goods and services.
As the Department of Health and Human Services determines how it will classify cannabis, you can still pursue federal trademark registrations for goods and services containing less than 0.3% Delta-9 THC on a dry-weight basis that are not ingestible by humans or pets. You can also pursue state trademark registrations in states where cannabis is legal. Waiting may allow others to get state trademark registrations now that could be used to oppose federal registrations in the future if marijuana is no longer a Schedule III drug.
Bonus Tip #9: Even if your cannabis product is not eligible for federal trademark registration, a strategic approach to trademarks can still obtain meaningful trademark protection for your business.
While current U.S. federal law prohibits federal trademark registrations for goods and services containing more than 0.3% Delta-9 THC on a dry-weight basis, a strong trademark plan can still provide meaningful trademark protection for your cannabis products and services. These would include selecting a strong trademark. Common law trademark rights can be difficult to obtain for descriptive marks and may be refused in the future by the USPTO. Get clearance searches run for all new marks. A state trademark or common law owner can still bring a trademark infringement claim. If your business provides a website that offers information and education on marijuana, or apparel, or smoking paraphernalia, a trademark owner may file a federal trademark application in the USPTO for those legal goods and services. A registration for ancillary goods or services gets your trademark on the federal trademark register, prevents the subsequent registration of a similar trademark for related goods or services, and can provide the other presumptions and advantages afforded federal trademark owners, including against other marijuana companies.
