To date the USPTO has refused to issue registrations for trademarks used in connection with cannabis and cannabis-related goods and services because all such goods and services are deemed illegal on Federal Law. However, the 2018 Farm Bill re-classified some “cannabis-derived” substances (e.g. hemp and derivatives of hemp including CBD) to remove them from the list of controlled substances, therefore making them lawful under the Controlled Substances Act. As a result, the USPTO has revised how trademark application for goods and services related to these declassified substances are reviewed, and will now register marks for these goods and services.
In order to be exempted from the USPTO prohibition against registration for cannabis related goods/services the Applicant must:
- verify that the goods listed in the trademark application are derived from, or the services relate only to, “hemp” as defined in the 2018 Farm Bill; and
- include in the identification that the goods listed, or services recited, involves cannabis that contains less than 0.3% THC on a dry-weight basis.
This new approach is applicable for trademark applications filed after December 20, 2018, the effective date of the effect of the 2018 Farm Bill. For any applications filed prior to this effective date the USPTO will give the applicant the opportunity to amend its application date to December 20, 2018. This new, amended application date will then be the application “priority” date and the USPTO will conduct a new search for possible conflicting marks using the new date. (Caution: Before agreeing to the amended application date, applicants should consider carefully how this new date will affect their rights).
Applicants should also be aware that even if the identified goods are legal under the Controlled Substances Act, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Other Federal Laws may affect whether the use of the goods are lawful. Registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the Federal Food Drug and Cosmetic Act (FDCA). The FDA is holding its first public hearing related to potential regulation of cannabis and cannabis-derived compounds on May 31. More information about the public hearing is found here.
For applications that involve the cultivation or production of “hemp” within the meaning of the 2018 Farm Bill, in addition to the above requirements, USPTO will ask whether the applicant is authorized to produce hemp pursuant the 2018 Farm Bill. Because the U.S. Department of Agriculture has yet to issue regulations under the 2018 Farm Bill and states have differing regulations regarding hemp, applicants should consult an attorney to confirm whether this requirement is met.
This change to the examination process should help some applicants to obtain registration for their marks associated with hemp-related goods and services (including hemp-derived CBD), but applicants should carefully consider how the USPTO requirements will affect their trademark rights before taking advantage of the opportunity to obtain their registrations.
If you have questions about our Cannabis practice please contact our Brand Protection & Enforcement team.
This advisory is a publication of Davis Wright Tremaine LLP. Our purpose in publishing this advisory is to inform our clients and friends of recent legal developments. It is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may only be given in response to inquiries regarding particular situations. Manufacturing, cultivation, distribution and possession of cannabis remains illegal under federal law and under certain state laws, and is strictly regulated in those states which have legalized medical or recreational cannabis.