Trademark filings related to cannabis and cannabidiol (CBD) in the United States Patent and Trademark Office (USPTO) have experienced tsunami-like growth over the course of multiple years due to a combination of factors, including the dramatic rise of states formally legalizing cannabis goods and services, and a greater understanding of the many products and services that have beneficial utility with cannabis/CBD ingredients.

On the federal level, full legalization remains elusive, but there is a steady march toward allowance of certain goods and services in the general field of cannabis, as additional research is conducted overall on the potential impact cannabis/CBDderived ingredients may have in certain uses. The most recent federal law to address potential legal uses of cannabis/CBDderived goods is the Agriculture Improvement Act of 2018, colloquially known as the 2018 Farm Bill. Signed into law on December 20, 2018, the 2018 Farm Bill formally acknowledges that hemp, defined 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,” is removed from the Controlled Substances Act (CSA) definition of marijuana. The impact of removing hemp (with these precise terms) from the CSA definition of marijuana is that it becomes legal under federal law.

USPTO Examination Guide 1−19

With newly legal product definitions to address and a vast sea of pending applications in the field of cannabis on file at the USPTO, the USPTO issued Examination Guide 1-19 (the Guide) to provide some guidance and clarity on the examination of marks used to identify cannabis and cannabis-related goods and services in light of changes to federal law enacted through the 2018 Farm Bill.

In terms of providing guidance, the Guide plainly acknowledges the change in legal status of hemp and hemp-derived products under the 2018 Farm Bill. The Guide also affirms the USPTO’s position that it will not allow the federal registration of trademarks or service marks for use in connection with goods and/or services that are not lawful under federal law, even if the goods and/or services are lawful under some state laws. See Exam Guide 1-19 Introduction; see also Trademark Manual of Examining Procedure (TMEP) Section 907.

In terms of providing clarity however, the Guide leaves room for interpretation. The Guide does shed light on how the USPTO will treat an applicant’s federal trademark application, depending on (1) when the applicant filed, (2) the goods and services recited in the application, and (3) the current or intended scope of use of the mark. However, there is still some gray area. A thorough understanding of what an applicant can and cannot do in the context of the Guide and general USPTO rules helps to address the gray space.

For cannabis marks, the following factors must be considered in light of the Guide.

Are the Goods Derived from “Hemp” and Otherwise Federally Lawful?

For applications that identify goods encompassing cannabis/CBD filed on or after the enactment of the 2018 Farm Bill, the Guide indicates that the CSA may be removed as a ground for refusal if the goods are derived from hemp (i.e., Cannabis sativa L. with no more than 0.3 percent THC on a dry weight basis). Accordingly, if the goods contain cannabis or CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3 percent THC on a dry weight basis), then the goods are still unlawful under the CSA and the application will be refused.

It should be noted that cannabis/CBD goods that are not compliant with the Federal Food, Drug and Cosmetic Act (FDCA) and other federal laws and regulations still may not be allowed registration in the USPTO despite the enactment of the 2018 Farm Bill. Specifically, the Guide states that “the use in foods or dietary supplements of a drug or substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA.” The 2018 Farm Bill explicitly preserves the FDA’s regulatory authority in the context of goods containing cannabis and CBD. Accordingly, “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.” See Examination Guide 1-19 Section II.

One must ask, are my goods (in use or intended to be put into use) above or below the 0.3 percent THC dividing line? Are my hemp-derived goods also foods, beverages, dietary supplements, pet treats, or other products that fall under scrutiny by the FDA? The answers will inevitably impact an applicant’s ability to obtain registration in the USPTO

Is an Amendment of the Identification Needed?

Under the Guide, the Identification (ID) must specify that the hemp-derived goods contain no more than 0.3 percent THC on a dry-weight basis to be allowed to continue in the registration process. Pursuant to Trademark Manual of Examining Procedure (TMEP) Section 1402.07(b), allowance of amendments to the ID have been a standard practice in the USPTO, provided the ID amendment does not go beyond the scope of the original ID language as filed, and it is otherwise sufficiently definite.

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Originally Published by DRI: In-House Defense Quarterly

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