Despite still being classified as a Schedule I controlled substance, federal law in the United States no longer wholly prohibits cannabis trademarks. An exception has been carved out for industrial hemp and its derivative products, in light of the 2018 Farm Bill. The USPTO, the federal agency that handles patents and trademarks, has updated its guidelines and released a memo to reflect the change.
TRADEMARKING A SCHEDULE I DRUG
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. TMEP § 907. Federal law currently classifies marijuana as a Schedule I controlled substance. Thus, at the federal level, it is technically still illegal to possess, distribute, or cultivate any form of the drug, and the USPTO had historically refused registration for trademarks that cover the cannabis plant or derivative products, excepting ancillary products and services, such as clothing, lighters, ashtrays, rolling papers, and websites.
On December 20, 2018, the Farm Bill removed hemp from the Controlled Substances List, and the USPTO issued Examination Guide 1-19 on May 2, 2019 to clarify the examination procedure for marks covering cannabis, cannabis-derived goods, and services involving cannabis and cannabis production.
EXAMINATION OF MARKS FOR CANNABIS AND CANNABIS-DERIVED GOODS
For trademark applications filed on or after December 20, 2018, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration if the goods are derived from hemp (cannabis plants and derivatives that contain no more than 0.3% THC on a dry-weight basis). If an applicant's goods are derived from hemp, the identification of goods must specify that they contain less than 0.3% THC.
For trademark applications filed before December 20, 2018 covering goods that are derived from hemp, the examining attorney will provide the applicant with the option of amending the filing date to December 20, 2018 and amending the filing basis to overcome refusal based on the CSA. If the application was originally based on use 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 under Section 1(b), 15 U.S.C. §1051(b). The examining attorney will conduct a search of the USPTO database for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03. Note that even if the identified goods are now legal under the CSA, not all hemp-derived products are lawful following the 2018 Farm Bill. For example, such goods may still raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA), 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff).
EXAMINATION OF MARKS FOR SERVICES INVOLVING CANNABIS AND CANNABIS PRODUCTION
The USPTO will continue to refuse registration when the identified services in an application involve marijuana (i.e., cannabis sativa L. with more than 0.3% THC on a dry-weight basis) and encompass activities prohibited under the CSA that still violate federal law. If the identified services involve hemp, the applications will be examined for compliance with the 2018 Farm Bill. Applicants refused registration under the CSA will have the same options outlined above (amendment of filing date and filing basis, specification on record that the involved goods contain less than 0.3% THC on a dry-weight basis, option to file new application, or option to submit arguments against refusal).
For trademark applications for services involving cultivation and production of hemp, the Examining attorney will issue inquiries concerning the applicant's authorization to produce hemp. The 2018 Farm Bill requires commercial production of hemp to be regulated under license or authorization of a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA).
STATE TRADEMARK REGISTRATION FOR CANNABIS MARKS
Registration of cannabis-related trademarks is allowed in states where cannabis is recreationally legal, and in most states where cannabis is medically permitted. Some benefits of state-based registrations include providing notice of the mark holder's rights in that state and protecting against confusingly similar marks. In such states, trademark owners may sue for infringement in state court under state law.
To acquire trademark and/or service mark registration at the state level, applicants must file an application with the trademark office of the specific state in which protection is sought. For information about state registration requirements, applicants must contact the individual state trademark office. Click here to find out more information for your state.
GET HELP WITH YOUR CANNABIS TRADEMARKS
It is important to understand that the nuances involved in securing a cannabis trademark. Your chances of securing a registration Notice of Allowance are greater when you hire an experienced attorney to handle your application. Contact the attorneys at Leaf Legal, P.C. today to request a consultation and learn about how we can help you protect your cannabis-related creations.