On May 2, 2019, the United States Patent and Trademark Office (“USPTO”) released Examination Guide 1-19, providing guidance related to its handling and examination of trademarks for cannabis and cannabis-related goods and services. This procedural clarification comes in the wake of the Agricultural Improvement Act of 2018, more commonly referred to as the 2018 Farm Bill. Notably, the 2018 Farm Bill deleted “hemp” from the Controlled Substances Act’s (“CSA”) definition of marijuana. This move has created an opportunity for businesses to obtain trademarks for hemp-derived goods and services, so long as businesses meet certain conditions.
In order for the USPTO to register a trademark in commerce, the commerce involving use of the mark must be lawful under federal law. If the goods or services are derived from an unlawful use, the application will be rejected.
The CSA prohibits manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. Accordingly, the USPTO will not register a trademark application for goods that are derived from marijuana because such goods are unlawful under federal law. The legalization of cannabis for certain medical purposes, like in Maryland and in other states, as well as legalization for recreational use in other states, is irrelevant to trademark registration because trademark registration is governed by federal law.
Included within the revamped Farm Bill is a notable distinction for “hemp” based products. Hemp has been removed from the CSA’s definition of marijuana, which means that products derived from hemp (i.e., contain no more than 0.3% THC on a dry-weight basis) are no longer considered unlawful under the CSA. This provides an avenue for trademark registration.
The USPTO will consider trademark applications for goods derived from hemp or cannabis plants and derivatives, including hemp-derived CBD, that contain no more than 0.3% THC on a dry-weight basis, if the application is filed on or after December 20, 2018.
If an application was filed prior to December 20, 2018, the USPTO examining attorney can issue a refusal since, at the time the application was filed, the use in commerce, or the bona fide intent to use, was unlawful. However, the guidance also provides a back-up plan. The examining attorney may advise applicants filing prior to December 20, 2018 that they can: (1) amend the filing date to December 20, 2018, (2) change the filing basis for the applications from 1(a) (i.e., the goods are already offered in commerce in connection with the marks) to 1(b) (i.e., the goods are not yet offered in commerce in connection with the marks, but the applicants have the bona fide intent to do so in the near future) and (3) amend the identification of goods to specify that the CBD or cannabis-derived products contain less than 0.3% THC.
Although this guidance demonstrates some movement by the USPTO regarding trademark registration for cannabis-derived goods, the 2018 Farm Bill preserves the FDA’s authority to regulate products that fall within the Federal Food Drug and Cosmetic Act. Goods that fall within the scope of the FDA’s authority will require additional FDA pre-market approval steps prior to becoming eligible for trademark protection. In short, registration will be refused for goods that fall within the FDA’s scope of authority (e.g., food, beverages, dietary supplements, and pet treats containing CBD, even if derived from hemp) on the basis that the goods contained in the application, if not approved by the FDA, cannot legally be transported in interstate commerce, and, therefore, are not eligible for trademark registration.
The USPTO will also refuse registration for applications for services that involve cannabis if the cannabis involved in the “services” falls under the definition of marijuana, and if the services include activities that are prohibited under the CSA. If the “services” identified in the application involve cannabis that is considered hemp, then the USPTO will consider the application, but will seek further clarification from the applicant as to whether the cultivation and production is in compliance with the Farm Bill and state law.
For more information about this or other health care laws, contact Lauren Ellison or any member of the Tydings health care practice group.
This alert has been prepared by Tydings for informational purposes only and does not constitute legal advice.