Primer on Cannabis Trademark Law and How Rescheduling Could Change the State of the Law

Originally published at LexBlog

With more individuals and businesses entering the cannabis sector, there has been an increased interest in what kind of trademark protections a cannabis business can obtain. This article seeks to briefly cover what in the cannabis industry can and cannot be federally trademarked and where the laws are heading.

General Overview

Although more and more states have legalized adult-use recreational cannabis, cannabis remains federally illegal and considered a controlled substance under the Controlled Substances Act. Because cannabis is not legal on a federal level, the United States Patent and Trademark Office will not accept trademark applications for goods and services that are directly related to cannabis. Put another way, goods and services that are directly related to cannabis cannot obtain federal trademark protection.

That being said, in 2018 congress passed the 2018 Agricultural Improvement Act, otherwise known as the “2018 Farm Bill.” As a result, the USPTO may consider trademark applications for goods derived from hemp and cannabis plants and derivatives, as long as they do not contain over .3% THC on a dry-weigh basis.

What can be registered with the USPTO

CBD products that fall under the 2018 Farm Bill can be registered with the USPTO. One important caveat, however, is that the USPTO will not consider applications for CBD products that are ingestible, such as food or dietary supplements.

The following CBD or hemp-derived products are examples of goods that could obtain federal trademark protection:

  • CBD Lotion
  • CBD Sunscreen
  • CBD Skincare products
  • CBD Cosmetics
  • CBD Candles
  • Fertilizer for cannabis and hemp
  • Packaging materials
  • Humidors
  • Hemp-based clothing

What cannot be registered with the USPTO

Simply put, any products that directly relate to cannabis, have above .3% of THC on a dry-weight basis, or can be ingested currently cannot be registered with the USPTO.

Common law or state trademark rights.

There are other ways, however, that a cannabis business owner can obtain trademark rights for its cannabis-related products. One option is by seeking to file a trademark with the state in which the owner operates. The specific requirements depend on the state, but further state specific information can typically be found on the relevant state’s secretary of state website.

Another option is to obtain common law trademark rights. Generally speaking, common law trademark rights can be given to a word, phrase, or image that a business uses in commerce to identify itself, its goods, or its services. Broadly speaking, common law trademarks are established through consistent use of a unique mark in connection with a busienss in a particular geographic area.

How Potential Rescheduling Could Affect Cannabis Trademark Law

On August 30, 2023, the U.S. Department of Health and Human Services announced that it would be recommending moving marijuana from a Schedule I controlled substance to a Schedule III controlled substance. This rescheduling will likely have major implications for the cannabis industry, and cannabis trademarks will likewise be affected.

Schedule III substances are those “with a moderate to low potential for physical and psychological dependence” and have lower “abuse potential” than Schedule I or II substances. Some examples of these include Tylenol with codeine and buprenorphine, both of which have registered trademarks attached to products directly related to those substances.

That being said, regardless of the potential rescheduling, cannabis will still be considered illegal on a federal level and there is yet to be clarity on how the USPTO would handle the substance of rescheduled to Schedule III. Either way, the possibility for a cannabis brand to obtain a federally registered trademark is likely to increase in the near future. Stay tuned for further updates.

Source:  https://www.lexblog.com/2023/09/29/primer-on-cannabis-trademark-law-and-how-rescheduling-could-change-the-state-of-the-law/

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