Although marijuana has become legal in many states, either medical and/or recreational, it is still illegal under federal law. According to case law and the rules of the United States Patent and Trademark Office, to be able to receive federal trademark registration the use of the mark in commerce must be lawful. Under the Controlled Substances Act (CSA), marijuana, or the cannabis plant, is a Schedule I controlled substance and therefore cannot be sold interstate. To summarize, interstate marijuana sales are illegal and federal trademark protection for cannabis derived products has not previously been possible.
However, the 2018 Farm Bill, recently signed into law on December 20, 2018, has made significant changes in regulations that deal with cannabis sales – specifically the sale of products made from or derived from “hemp”. Originally, the 2014 bill defined all parts of the Cannabis sativa L. whether growing or not, the seeds thereof […] as a Schedule I controlled substance, which included hemp. See Federal Statute 21 U.S.C. §802(16). Now, with the new laws being implemented hemp is no longer a controlled substance under the Controlled Substance Act. Hemp and marijuana, though often confused as the same thing are in fact different. Marijuana is still a Schedule I controlled substance, but hemp has been removed from that Schedule 1. This means that cannabis plants and derivatives such as CBD products that are derived from “hemp” and contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA, and product related federal trademarks are now a possibility.
On May 2, 2019, the United States Patent and Trademark Office released an updated examination guide for USPTO examining attorney’s to use when looking at the application of a hemp derived cannabis-related good or service. The USPTO has now amended the guidelines in accordance with the recent changes in federal law. The examining attorney will now look at the application to ensure the goods or services comply with both the CSA and the 2018 Farm Bill. Applications for qualifying hemp derived cannabis and cannabis-derived goods filed before December 20, 2018, regarding hemp will be offered the opportunity to amend their application filing date and basis to support their qualifying under these new guidelines..
Any and all trademarks must still comply with basic trademark requirements in order to be approved.
To sum it up, some hemp derived cannabis and cannabis-derived good trade names can now be federally trademarked. Applicants will want to make sure their goods are identified on packaging and advertising as derived from hemp and specifying that they contain less than 0.3% THC.
There are still some restrictions blocking federal trademarks as to Cannabidiol (CBD) products, because these items are regulated by the FDA (Food and Drug Administration) and/or the FDCA (Federal Food and Cosmetic Act). Therefore, even though qualifying CBD products may now be legal under the CSA (meaning the CSA will no longer be grounds for denying their trademark), the CBD trademarks may still be denied due to lawful-use issues under the FDCA. According to the May 2, 2019, USPTO guidelines “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…”. These CBD product producers will have to wait for the day that the FDA completes its undergoing clinical investigations and approves CBD pursuant to FDA regulations. A CBD product that is not a food or dietary supplement may not be subject to these restrictions.
A trademark is a name, image, logo, sound or any other identifiable mark that a consumer can use to indicate a specific source of a product or service. There are three main different types of trademark protection. There is common law, state registration and federal registration.
Under common law trademark all an owner needs to do is be the first person to use a trademark in commerce. Sounds easy, well it is, however common law protection gives users only protection in the geographic area where it is identifiable. Basically, it’s the lowest amount of protection available.
Next level of protection is registering a trademark with the state in which the product is distributed. This doesn’t necessarily expand the area of protection, but may provide some more legal remedies to the company in the case of infringement. State trademark laws vary, so certain states have specific requirements, but all states will allow a company to register.
The highest, most coveted and most difficult trademark protection to attain is federal registration. This allows for trademark protection across the United States. We generally recommend our clients look at protecting their trademark on a multi-state or national level to try and federally register their mark with the United State Patent and Trademark Office, when possible.
Now, qualifying hemp derived products and services that meet basic trademarks and are approved by the USPTO are eligible for not only common law and state law protection, but federal protection as well.
Marijuana or devices creating or facilitating the smoking of marijuana still cannot receive federal trademark protection. That doesn’t mean that they cannot receive common law or state law protection. Registering within the state and the geographical area that the marijuana is being sold will allow a company to at least protect their mark in that area. This will allow the mark owner to use the mark in commerce and create brand recognition of their name or logo in preparation for that day in the future that federal trademark protection might become available.
As of right now there is no concrete evidence that CBD, and marijuana products and services, will one day be federally trademarkable, but this particular change in the CSA shows progress is being made in this ever growing – no pun intended – area of agriculture. Laws are often changing so be sure to follow this blog to stay up to date on all changes in this area of the law.
For more information on how to properly protect your company and hemp derived product trademarks, or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.