The cannabis business is booming as states continue to legalize marijuana for both medical and recreational use. However, when it comes to trademark registration, the U.S. Patent & Trademark Office (USPTO) can only register marks used in lawful interstate commerce under federal law.
Determination of registration for marks for cannabis and cannabis-related goods and services is affected by multiple federal laws prohibiting the production and sale of marijuana, including the Controlled Substances Act (CSA), Federal Food Drug and Cosmetic Act (FDCA), and the 2018 Farm Bill.
Due to the popularity of trademark applications for cannabis-related goods and services, the USPTO issued an Examination Guide regarding the registration of cannabis trademarks in May 2019. Currently, the USPTO will refuse an application to register a mark identifying goods encompassing CBD and cannabis derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) as such goods are unlawful under federal law under the CSA.
The USPTO will also refuse to register marks covering cannabis-related paraphernalia. For example, the Trademark Trial and Appeal Board recently issued a decision rejecting registration of the mark JUJURX for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purpose” denied on the grounds that the identified goods constitute “unlawful drug paraphernalia” under the CSA. In re Canopy Growth Corp., Serial Nos. 86/475,885 & 86/475,899 (TTAB July 16, 2019).
Notably, Applications filed on or after December 20, 2018 identifying goods encompassing cannabis or CBD will not be refused under the CSA if the goods are derived from “hemp” (as defined in the 2018 Farm Bill) and the identification of goods specifies that they contain less than 0.3% THC. Applications filed before December 20, 2018 will be rejected because the goods violated federal law when the application was filed, but applicants will be provided an opportunity to change the filing date of their application to December 20, 2018.
While hemp-derived goods may be legal under the CSA, goods that are regulated by the FDCA and FDA such as foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA.
Trademark applications covering services involving the cultivation or production of “hemp” products per the 2018 Farm Bill (i.e. contains less than 0.3% THC) will be flagged by the examining attorney, and applicants will need to provide additional information confirming 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 under a plan approved by the USDA for the commercial production of hemp. On October 31, 2019, USDA has published guidelines (the Interim Final Rule/IFR) on basic provisions that States/Tribes need to implement in order to get their plan approved by USDA. The IFR also provides for a federal USDA Hemp Program for states that neither prohibit hemp production nor administer a hemp production program. As of January 7, 2020, the USDA has approved the plans of three states (Louisiana, New Jersey, and Ohio) and three tribes have been approved.