The new examination guide will help CBD products legalized by the Farm Bill 2018 to receive a federal trademark registration. However, the rest of the cannabis industry involved in state legal cannabis activities still faces rejection of their applications from the USPTO under the lawful use requirement as it pertains to federal law.
USPTO Issues Guidance on Cannabis Trademarks
This month, the USPTO issued a new examination guide titled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill.” In light of the passage of the 2018 farm bill, the USPTO will now consider registering trademarks for some hemp-based goods and services.
According to the USPTO, marks can be registered as long as the product is not regulated by the U.S. Food and Drug Administration and doesn’t fall under the federal definition of marijuana. The guide breaks down which cannabis and cannabis-derived products will be eligible for protection based on their “lawful use.” The lawful use requirement, as explained by the USPTO, mandates that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” TMEP §907, citing to 37 C.F.R. §2.69 and §§1, 45 of the Lanham Act. In other words, if a product cannot be legally sold in interstate commerce then, according to the USPTO, the mark cannot be used legally in interstate commerce and, lacking trademark use, the trademark cannot be registered.
The USPTO stated that 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 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, the agency said applicants should be allowed to amend their filing date or withdraw their application and submit a new one.
The USPTO noted that it won’t allow registration for marks that cover foods, beverages, dietary supplements and pet treats with hemp-derived CBD, as the FDA is still investigating the ingredient. The farm bill had a specific carveout for products regulated by the FDA, noting that there are concerns falling under the Federal Food, Drug and Cosmetic Act, rather than the Controlled Substances Act.