USPTO Issues Cannabis Trademark Guidance, Opens the Door for Some Marks to be Registered
On May 2, 2019, the U.S. Patent and Trademark Office (USPTO) issued "Examination Guide 1-19 - Examination of Marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill" (Guidance), outlining its policies for USPTO Examining Attorneys when reviewing trademark applications for cannabidiol (CBD) and hemp-derived goods and services. The Guidance, which represents a departure from previous USPTO policy, opens the door for some registration of cannabis-related trademarks, including for legal hemp, hemp-derived CBD, other hemp-derived goods (such as hemp oil), and services related to hemp (such as cultivation of hemp and production of hemp-derived goods).
The Guidance comes a little more than four months after Congress passed and President Trump signed into law the Agriculture Improvement Act of 2018 (the 2018 Farm Bill), which, among other things, removed hemp from the definition of “marihuana” (marijuana) in the Controlled Substances Act (CSA), thus taking it out of Schedule I. As we discussed previously, the 2018 Farm Bill makes it clear that: (1) hemp is no longer federally illegal under the CSA; and (2) the term “hemp” encompasses “any part of the plant,” including “the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers.” This definition expansion from that contained in the Agricultural Act of 2014 (2014 Farm Bill) is significant, given its inclusion of hemp-derived cannabinoids (e.g., CBD), and given the already explosive growth of the CBD-infused products market, a trend which will no doubt continue now that hemp is federally legal.
In order to register a trademark, there must be a “lawful use in commerce.” In the hemp context, an application must establish on its face that product or service is derived from or relates to hemp as defined in the 2018 Farm Bill. The recitation of goods or services must specify that any goods included in the application contain no more than 0.3% delta-9 tetrahydrocannabinol (THC), limiting the scope of a resulting registration to only those goods or services compliant with federal law. It is worth noting that the Guidance states that the identification of goods must specify contents of less than 0.3% THC. We believe this is an error, and should be no more than 0.3% THC, as that tracks with the language of the 2018 Farm Bill. Applicants for CBD-related services may be required to provide evidence of compliance with licensing and regulatory standards.
Importantly, even though a product is lawful under the CSA, it might not be lawful under all other applicable statutes. As we discussed previously, in response to the 2018 Farm Bill being signed into law, the U.S. Food and Drug Administration (FDA or the Agency) was quick to remind the public about what the legislation did not change: the Agency’s authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food, Drug, and Cosmetic Act (FD&C Act or the Act) and section 351 of the Public Health Service Act. In short, FDA has taken the position that it is unlawful under the FD&C Act to introduce food containing added CBD or THC into interstate commerce, or to market CBD or THC products as, or in, dietary supplements, regardless of whether the substances are hemp-derived. The Agency’s justification for its position is that, in its view, CBD and THC are active ingredients in FDA-approved drug products and were the subject of substantial clinical investigations before they were marketed as food.
Following FDA’s lead, the USPTO indicated in its Examination Guidance that registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FD&C Act, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.
Despite these restrictions, the Guidance allows the registration of marks in the hemp and hemp-derived CBD spaces. We estimate that hundreds, if not thousands of hemp and hemp-derived CBD companies have already filed trademark applications, and more applications are being filed every day. Trademarks are intangible assets that provide a means for consumers to associate products and services with the source of those products and services, establishing recognition, reputation, and good will in the marketplace. A federal trademark registration provides significant benefits to providers of goods and services offered or sold in interstate commerce, including nationwide exclusivity of use, a presumption of validity of the trademark, and the ability to use the ® symbol. Applications may be based on actual use in commerce or a bona fide intent to use the mark in commerce. The seniority of the trademark is determined as of the filing date or date of first use in commerce, whichever is earlier. To avoid the loss of trademark rights, it is advisable to file an application as soon as a product or service is in the research and development stage.
If you have questions regarding an issue raised in this alert, or you would like to learn how to maximize and protect valuable trademark assets, please contact the authors or the attorney at the firm with whom you are regularly in contact.