Trademarks for Cannabis, Hemp & CBD | Attorney Aaron Hall
Minneapolis Business Attorney Aaron Hall, Minnesota

Trademarks for Cannabis, Hemp & CBD

Introduction

In this video, you get answers to thius question:

  • Can you get a trademark for Cannabis related goods and services?

The following provides guidance to business owners who want to obtain a registered trademark for hemp, cannabis, CBD, or related products or services.

In short, as long as cannabis products contain less than 0.3% THC (e.g. CBD and hemp), you may seek federal trademark registration for these cannabis brand names, slogans, logos, and related marks.

2019 Legal Update

The following is the guide used by the USPTO examining attorneys when processing trademark applications for cannabis and cannabis-related goods and services. This guidance is useful for attorneys and others who are seeking to file a federal trademark registration application for cannabis businesses.

Examination Guide 1-19
Examination of Marks for Cannabis and Cannabis-Related Goods and Services
after Enactment of the 2018 Farm Bill
May 2, 2019

I. Introduction

Use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act. See generally Trademark Manual of Examining Procedure (TMEP) § 907. The United States Patent and Trademark Office (USPTO) refuses to register marks for goods and/or services that show a clear violation of federal law, regardless of the legality of the activities under state law. Determining whether commerce involving cannabis and cannabis-related goods and services is lawful requires considering several different federal laws, including the Controlled Substances Act, 21 U.S.C. §§ 801 et seq., the Federal Food Drug and Cosmetic Act, 21 U.S.C. §§ 301 et seq., and the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA). The USPTO issued this examination guide to clarify the procedure for examining marks for cannabis and cannabis-derived goods and for services involving cannabis and cannabis production following the 2018 Farm Bill.

II. Examination of trademarks for cannabis and cannabis-derived goods (e.g. CBD/cannabidiol)

Under the Controlled Substances Act (CSA), the drug class “Marihuana” (commonly referred to as “marijuana”) is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. § 802(16). Cannabidiol (CBD) is a chemical constituent of the cannabis plant that is encompassed within the CSA’s definition of marijuana. See Clarification of the New Drug Code (7350) for Marijuana Extract last accessed April 23, 2019; see also, 21 C.F.R. § 1308.11(d)(58). The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. 21 U.S.C. §§ 812, 841(a)(1), 844(a). Therefore, the USPTO refuses registration when an application identifies goods encompassing CBD or other extracts of marijuana because such goods are unlawful under federal law and do not support valid use of the applied-for mark in commerce.

The 2018 Farm Bill, which was signed into law on December 20, 2018, amends the AMA and changes certain federal authorities relating to the production and marketing of “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.” Section 297A. These changes include removing “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.

For applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are derived from “hemp.” Cannabis and CBD derived from 2 marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) still violate federal law, and applications encompassing such goods will be refused registration regardless of the filing date. If an applicant’s goods are derived from “hemp” as defined in the 2018 Farm Bill, the identification of goods must specify that they contain less than 0.3% THC. Thus, the scope of the resulting registration will be limited to goods compliant with federal law.

For applications filed before December 20, 2018, that identify goods encompassing CBD or other cannabis products, registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA. Such applications did not have a valid basis to support registration at the time of filing because the goods violated federal law. However, because of the enactment of the 2018 Farm Bill, the goods are now potentially lawful if they are derived from “hemp” (i.e., contain less than 0.3% THC). Therefore, the examining attorney will provide such applicants the option of amending the filing date and filing basis of the application to overcome the CSA as a ground of refusal.

Specifically, the examining attorney will advise the applicant that it may request to amend the filing date of the application to December 20, 2018. The applicant must specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. See 37 C.F.R. §§ 2.34 et seq., TMEP §§ 806 et seq. If the application was originally based on use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the applicant will be required to amend the basis to intent to use the mark in commerce under Section 1(b), 15 U.S.C. §1051(b). Because of the new legal definition of “hemp” under the 2018 Farm Bill, the applicant will also be required to amend the identification of goods to specify that the CBD or cannabis products contain less than 0.3% THC. If the applicant elects to amend the application, the examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§ 206.01, 1102.03. The examining attorney will also advise the applicant that, in lieu of amending the application, it may elect to abandon the subject application and file a new application. Alternatively, the applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.

Applicants should be aware that even if the identified goods are legal under the CSA, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Such goods may also raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA). 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. 21 U.S.C. § 331(ll); see also 21 U.S.C. § 321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA). The 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA. CBD is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations. See FDA Regulation of Cannabis and Cannabis Derived Products: Questions and Answers, last accessed April 23, 2019. Therefore, registration of marks for 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. 21 U.S.C. § 331(ll); see also statement of former FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.

III. Examination of marks for services involving cannabis and cannabis production

When applications recite services involving cannabis-related activities, they will be examined for compliance with the CSA and the 2018 Farm Bill. As discussed above, the CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. Therefore, the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because such services still violate federal law, regardless of the application filing date. If the identified services involve cannabis that is “hemp” (i.e., contains less than 0.3% THC), the applications will also be examined for compliance with the requirements of the 2018 Farm Bill. Applicants refused registration under the CSA will have the same options outlined in section II above of overcoming the refusal by requesting amendment of the filing date and basis of their application and amending the identification of services to specify that the involved cannabis contains less than 0.3% THC on a dry-weight basis. In lieu of amending the application, an applicant may elect to abandon the subject application and file a new application. Alternatively, the applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.

For applications that recite services involving the cultivation or production of cannabis that is “hemp” within the meaning of the 2018 Farm Bill, the examining attorney will also issue inquiries concerning the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm 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 in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp. To date, the USDA has not promulgated regulations, created its own hemp-production plan, or approved any state or tribal hemp-production plans. However, the 2018 Farm Bill directs that states, tribes, and institutions of higher education may continue operating under authorities of the 2014 Farm Bill until 12 months after the USDA establishes the plan and regulations required under the 2018 Farm Bill.

2015 Legal Update

The following was written in 2015. It is preserved here as a reference.

An Initiative To Legalize Marijuana In California To Appear On Nov. BallotMedical Marijuana Companies and the USPTO: No Trademarks for Cannabis

In what is yet another clash between state law and federal prohibition of marijuana under the Controlled Substances Act, the United States Patent and Trademark Office (“USPTO”) has held steadfast in its refusal to register trademarks for marijuana-based products.

Naturally, business owners in the medical (and recreational) marijuana want to protect their business and brand names and take advantage of the protections afforded by federal registration. Federal registration benefits include constructive notice nationwide of the trademark owner’s claim; evidence of ownership of the mark; jurisdiction of federal courts and obtain treble damages and attorney’s fees; U.S. registration can be used as a basis for obtaining registration in foreign countries; registration may be used as a basis to prevent importation of infringing foreign goods; use of ® symbol; and entitles the trademark owner to certain statutory damages in cases of counterfeiting.

Back in 2010, it appeared that perhaps the USPTO was ready to start trademarking medical marijuana commerce, when on April 1st of that year it added a new trademark category, “[p]rocessed plan matter for medicinal purposes, namely medical marijuana.” This new category was posted on the USPTO’s website. However, this new category did not last long. After the USPTO was bombarded with questions about the new category, a spokesperson for the patent-office stated the new classification would be removed.

The reasoning behind the USPTO’s refusal to trademark marijuana-related brands and products is because the trademark applicant cannot show that the goods or services are being lawfully used in “commerce” because the Controlled Substances Act (“CSA”) considered marijuana a Schedule I illegal drug. And the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, for examples, “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.” 21 U.S.C. § 863(d).

Since 2010, the USPTO has refused to register trademarks that are related to marijuana. Not all hope is lost, however, because a company can still get trademark protections. First, a marijuana business owner can get trademark protection for its products that are not related to the production and dissemination of marijuana. For example, many dispensaries and manufacturers sell other products within their stores, such as non-marijuana infused candies or food, that would be eligible for trademark protection.

Secondly, common law trademark protection exists even if a person or company never files a federal registration. However, this only applies if the mark is not confusingly similar and not already in use. But, common law trademark protection has its limits. It only provides protection within the geographical area of the trademark’s use.

Lastly, state trademark registration is available. Through most secretary of state websites, including Minnesota, one can register a trademark at a state level. However, state trademark registration is usually not a good idea.

Video Transcript

I’m Aaron Hall, an attorney in Minneapolis, Minnesota. It used to be that even though at the state level, cannabis-related products may be legal, they’re not legal at the federal level, and so you couldn’t get a federal trademark registration for cannabis-related products. However, that has now changed. The U.S. Patent and Trademark Office has issued a decision that it will permit trademarks for cannabis-related goods and services as long as the product has less than 0.3% THC. So, what that means is a CBD manufacturer who wants to trademark their brand name or their process can do it as long as the CBD has 0.3%. I’m sorry, less than 0.3% THC. In other words, it’s not active. It’s not hot. So, that’s good news for CBD growers, distributors, and those other companies who have similar cannabis-related products that qualify.

Next Steps

To learn more visit my website at aaronhall.com

1 comment
malcolm kyle says November 14, 2016

Which is why many of the licensed producers in Canada are laughing all the way to the bank. Check out how Cannabis Growth Corporation is doing since it was listed on the Toronto stock exchange. Why do we always shoot ourselves in both feet?

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