Jackson Kelly PLLC

Public Law Monitor

A New High for Cannabis-Related Trade and Service Marks

May 2, 2019

By: Joshua A. Claybourn

Following enactment of the 2018 Farm Bill, the United States Patent and Trademark Office (USPTO) released a new Trademark Examination Guide for marks covering cannabis and cannabis-related goods and services. Specifically, the Examination Guide addresses the availability of federal registration for products containing hemp-derived CBD, which were recently removed from the list of controlled substances under the Controlled Substances Act. Some key takeaways:

Goods/Services Now Registrable:

  • Products derived from hemp (containing less than 0.3% THC, with some exceptions noted below); and
  • Services involving cannabis derived from hemp (containing less than 0.3% THC).

The new regulations apply to trademark applications filed on or after December 20, 2018 for goods that include cannabis or cannabidiol (CBD) that are derived from hemp and do not violate the Federal Food Drug and Cosmetic Act (FDCA). When filing an application for these goods, applicants should specify that the goods are derived from hemp and contain less than 0.3% THC.

Any trademark applications for these goods/services filed prior to December 20, 2018 will be initially refused registration, because applicants did not have a valid basis for registration at the time of filing. However, the USPTO will provide applicants with the option to amend the filing date to December 20, 2018.

Goods/Services Still Not Registrable:

  • Products containing cannabis and CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis);
  • Foods, beverages, dietary supplements, or pet treats containing CBD – even if derived from hemp; and
  • Services that include cultivation or production of cannabis that is hemp within the meaning of the 2018 Farm Bill will be investigated further through inquiries issued by the PTO.

As 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, any trademark applications including these goods will be refused registration regardless of the filing date.

Additionally, as the 2018 Farm Bill explicitly preserves the U.S. Food and Drug Administration’s (FDA) authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA, not all CBD or hemp-derived goods are lawful. Products undergoing clinical investigation with the FDA, that contain cannabis or cannabis derived-compounds, and are not approved by the FDA, violate the FDCA. Thus, even if derived from hemp, any applications for registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD that cannot legally travel in interstate commerce will be refused registration under the FDCA.

Joshua A. Claybourn is a member focusing primarily on state and local government, intellectual property, utility regulation, and commercial transactions. His intellectual property law practice focuses on trademarks, copyrights, trade secrets, and licenses. He helps clients develop and implement strategies to promote and foster new intellectual property, protect and maintain existing intellectual property, and avoid intellectual property infringement litigation.

 

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