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The A-CBDs of Registering Hemp-Related Trademarks: New Guidance from the USPTO

Brand owners seeking to register cannabis-related trademarks take note: the U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the effects of the 2018 Farm Bill on the registration of trademarks for goods and services involving hemp.

As background, the previous definition of “marijuana” in the federal Controlled Substances Act had a limited exclusion for certain portions of the Cannabis sativa plant. The 2018 Farm Bill, signed into law December 20, 2018, changed this definition, clarifying that Cannabis sativa containing less than 0.3% delta-9 tetrahydrocannabinol (THC) on a dry weight basis is “hemp,” exempt from the Controlled Substances Act’s definition of marijuana, and therefore not a controlled substance.

On the trademark side, the Lanham Act requires that use of a trademark in commerce must be lawful under federal law to receive a federal trademark registration. As a result of the previous federal definition of marijuana, the USPTO had historically refused registration when an application identified goods and services encompassing cannabidiol (CBD) or other extracts of marijuana because such goods and services were unlawful under federal law and could not support valid use in commerce.

In light of the 2018 Farm Bill’s change, the USPTO revised its policy in new examining guidance, stating that the USPTO will permit registration of applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, but only if the goods are derived from “hemp” (i.e., Cannabis sativa with less than 0.3% THC). Applications for goods which contain more than 0.3% THC will continue to be refused because these products still violate federal law.

Regarding prosecution of these applications, the USPTO advises that any identification of goods for “hemp” products must specify that the goods contain less than 0.3% THC and that the USPTO will allow applicants to amend their applications to comply with this requirement. For applications filed before December 20, 2018 that identify goods encompassing CBD or other cannabis products containing less than 0.3% THC, examining attorneys will allow applicants to amend their filing date and filing basis to overcome refusals based on unlawful use or lack of bona fide intent to use in lawful commerce under the Controlled Substances Act.

For applications for services involving the cultivation or production of cannabis that meets the new definition of “hemp,” examining attorneys will issue inquiries concerning an applicant’s authorization to produce hemp. Applicants must then provide additional statements to confirm that their activities satisfy the requirements of the 2018 Farm Bill. Among other things, this law 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. The USDA has not yet promulgated regulations, created its own hemp-production plan, or approved any state or tribal hemp-production plans. However, the 2018 Farm Bill notes that states, tribes, and institutions of higher education may continue operating under the authority of the 2014 Farm Bill until 12 months after the USDA establishes its plan and regulations required under the 2018 Farm Bill.  It is unclear whether the U.S. Food and Drug Administration (FDA), Drug Enforcement Agency (DEA), and USDA interpretation of the 2014 Farm Bill that precludes general commercial activity with hemp will be a factor in the USPTO’s decision to grant trademarks for goods and services involving hemp.

Brand owners of products such as foods, beverages, dietary supplements, or pet treats regulated by the FDA also must be aware of the USPTO’s reminder that not all goods for CBD or hemp-derived products are lawful. The 2018 Farm Bill explicitly preserved the FDA’s authority under the Federal Food, Drug, and Cosmetic Act (FFDCA) to regulate the use of cannabis-derived ingredients, including hemp-derived ingredients, in FDA-regulated products.

While the FDA has not objected to three Generally Recognized as Safe (GRAS) notices for hemp seed-derived ingredients, FDA has taken the position that hemp-derived ingredients containing CBD are precluded from use in foods (for humans and animals) and dietary supplements under the exclusionary clauses of the FFDCA because CBD has been, and is currently, the subject of substantial clinical investigations as a drug. As a result, the USPTO will continue to refuse registration of marks for foods, beverages, dietary supplements, or animal foods containing CBD, even if derived from hemp, as these goods may not be introduced lawfully into interstate commerce under the FFDCA.

The new trademark guidelines offer some clarity, but the reality for brand owners is complex. Registration of cannabis-related trademarks continues to require applicants to navigate a complicated maze of federal regulations and practice rules. While many industry members are optimistic about the success of various lobbies to change these federal laws, a future where cannabis-related trademarks are treated like those for more mundane goods and services is still far off.

The USPTO’s examining guidance, “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” is available here.