Unlike patents and copyrights, obtaining a federally registered trademark requires (among other things) that applicants abide by the “lawful” use in commerce requirement. In other words, the United States Patent and Trademark Office ("USPTO") will refuse to register trademarks used in connection with goods or services that are illegal under federal law. This requirement has been a longstanding problem for trademark owners trying to federally protect their cannabis or cannabis-related trademarks and enjoy the benefits of federal registration.
The USPTO’s New Examination Guide for Cannabis and Cannabis-Related Goods and Services
The ability to federally register trademarks identifying certain types of cannabis or cannabis-related goods and services got a little easier recently following the USPTO’s Examination Guide 1-19 issued on May 2, 2019 (“Guide”). The Guide starts by summarizing the lawful use in commerce requirement and noting that determining whether any cannabis or cannabis-related trademark is lawful “requires consultation of several different federal laws.” These include the Controlled Substances Act (“CSA”), 21 U.S.C. §§ 801 et seq., the Federal Food Drug and Cosmetic Act (“FDCA”), 21 U.S.C. §§ 301 et seq., and the Agriculture Improvement Act of 2018, Pub. L. 115-334 (aka the 2018 Farm Bill), which amended the Agricultural Marketing Act of 1946.
Prior to passage of the 2018 Farm Bill, the CSA’s definition of “marihuana” included “all parts” of the Cannabis sativa L. plant and made no exclusions for hemp or any hemp derived products. See 21 U.S.C. §802(16). Now, this definition excludes “hemp” which Section 297A of the 2018 Farm Bill defines as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [“THC”] concentration of not more than 0.3 percent on a dry weight basis.” This means that cannabis plants and their derivatives containing less than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.
The 2018 Farm Bill Only Helps Certain Types of Trademark Applications
The Guide states that “the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are derived from ‘hemp.’” However, certain hemp-derived products such as those containing Cannabidiols (“CBD”) will continue to face other obstacles.
Cannabis and CBD products containing more than 0.3% THC on a dry-weight basis will still fall within the CSA and violate federal law and trademark applications encompassing these products will still be refused. The 2018 Farm Bill also doesn’t help trademark applications that identify cannabis or CBD products or services that remain unlawful under the FDCA. For example, because CBD is an active ingredient in certain FDA-approved drugs and is undergoing clinical investigations, the USPTO says it will still refuse to register trademarks “for foods, beverages, dietary supplements, or pet treats containing CBD” because CBD remains “unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.”
New USPTO Examination Procedures
For cannabis and cannabis-related trademark applications filed on or after December 20, 2018 that fall outside the CSA and don’t violate other federal laws such as the FDCA, the Guide discusses new procedures used by USPTO examining attorneys when evaluating them. If a trademark applicant’s identified goods derive from “hemp” as defined in the 2018 Farm Bill, the applicant will now have to specify that those goods contain less than 0.3% THC. For example, an application identifying a topical gel containing hemp oil for pain relief would need to specify the gel as “hemp oil gel for therapeutic use derived from Industrial Hemp which does not contain a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis.” This new requirement also applies to applications that “recite services involving cannabis-related activities.”
For cannabis and cannabis-related trademark applications filed before December 20, 2018 (i.e., the date the 2018 Farm Bill was signed into law), the Guide says the USPTO will still refuse registration “due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA.” However, USPTO examiners will allow applicants to amend these applications to claim a later filing date of December 20, 2018 to overcome a CSA based refusal. Examiners will also allow applicants claiming that a cannabis and cannabis-related trademark was already in use prior to December 20, 2018 to amend the original filing basis to an “intent-to-use” basis. If an applicant agrees to these changes, the examiner will conduct a new search of the USPTO’s records for any conflicting trademarks based on the later December 20, 2018 filing date. Examiners will also advise these applicants that instead of amending their application, they can instead elect to abandon it and file a new one or else respond to the examiner’s refusal with evidence and arguments against it. Examiners evaluating applications for services filed before December 20, 2018 will offer these same options.
Finally, USPTO examiners evaluating applications for “services involving the cultivation or production” of “hemp” as defined in the 2018 Farm Bill will also inquire about the applicant’s legal ability to cultivate and produce it. 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.” However, the Guide states that the USDA has yet to promulgate regulations or approve any tribal or state hemp production plans. This means that unless the hemp cultivation or production was already authorized under the 2014 Farm Bill (in which case it may continue until 12 months after the USDA promulgates regulations and plans required under the 2018 Farm Bill), a trademark application for services involving hemp cultivation or production could still be refused despite the passage of the 2018 Farm Bill.
As with all trademark applications, the best strategy to get a cannabis or cannabis-related trademark federally registered will depend on each applicant’s specific trademarks and how they are used. As such, applicants should always discuss their particular situation with an experienced trademark attorney before investing the time and money to apply.