Earlier this month, the United States 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. While the guide didn’t provide any earth-shattering news regarding cannabis-related trademarks, it did clarify the USPTO’s position with respect to trademarks for domestic industrial hemp products.
The USPTO began by reiterating what we have written about extensively: “Use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act.” Even where the goods or services for which protection is sought are legal under state law, if the goods or services violate federal law, including the Controlled Substances Act (CSA), they will not be eligible for trademark protection. The USPTO cites the following laws as applying in the analysis for whether or not a cannabis or hemp-related mark will be eligible for trademark registration:
- The Controlled Substances Act, 21 U.S.C. §§801 et seq
- The Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq (FDCA)
- The Agricultural Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).
The 2018 Farm Bill, as we have written, and which was signed into law in December 2018, removed “hemp” from the CSA’s definition of “marijuana,” meaning that cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.
Because of this, the USPTO states that, “[f]or applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are 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 violate federal law, and applications encompassing such goods will be refused registration regardless of the filing date.”
But don’t get too excited yet. The USPTO also makes note of the elephant in the room when it comes to CBD: the FDA. The guide notes that, “even if the identified goods are legal under the CSA, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Such goods may also raise “lawful use” issues under the Federal Food Drug and Cosmetic Act.”
Because the 2018 Farm Bill explicitly preserved the FDA’s authority to regulate products containing cannabis or cannabis compounds under the FDCA and because CBD is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations, “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, as such goods may not be introduced lawfully into interstate commerce.”
This is a point we’ve been making for quite some time now – the federal lawful use requirements implicate not only the CSA, but also the FDCA, meaning that until we see some movement from the FDA on the issue, trademark registrations for CBD products disallowed by the FDA will not be available.
The guide also notes that for all applicants that reference “hemp” in their specification of goods and services, the examining attorney will issue inquiries concerning the applicant’s authorization to produce hemp and applicants will need to provide additional statements to confirm that their products and activities comport with the 2018 Farm Bill.
So, while the USPTO’s release of this guide certainly isn’t earth-shattering, it does affirm the strategies we have been utilizing to secure trademark protection for our clients. This is a nuanced area of law, and if you are seeking to develop a brand protection strategy for your CBD or hemp products, it would be wise to consult with an attorney well-versed on the subject.