The United States Patent and Trademark Office (“USPTO”) has long refused to register trademarks and service marks for goods and/or services that violated federal law, regardless of the legality of the activities under state law. (See generally Trademark Manual of Examining Procedure (TMEP) §907.) As many cannabis and hemp brands know, this restriction made securing federal trademark protection a challenging and uncertain process. Due to the scheduling of cannabis as a controlled substance, there was little hope of registering cannabis or hemp goods and plant-touching services as trademarks. Recently, however, Agriculture Improvement Act of 2018 (the “Farm Bill”) de-listed hemp from the controlled substances act. This led to a slew of questions around whether the USPTO would start issuing trademark registrations for hemp-related goods and services. Thankfully, we finally have clarity on a new USPTO approach.
New Trademark Guide for Hemp-based CBD Goods
On May 2, 2019, the USPTO released an “Examination Guide” to “clarify the procedure for examining marks for cannabis and cannabis-derived goods and for services involving cannabis and cannabis production following the 2018 Farm Bill.” A key provision in this guide provides:
“For applications… 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.”
This finally provides an opening for companies to obtain federal trademark registrations for their CBD brands. With a USPTO registration in hand, CBD businesses gain the following benefits:
- Nation-wide public notice of the registrant’s claim of ownership of the mark;
- Legal presumption of ownership nationwide;
- Exclusive right to use the mark on or in connection with the goods/services listed in the registration; and
- The right to affix the ® symbol next to the mark.
The Examination Guide does not, however, provide a universal green-light to register all hemp-derived CBD products and services. The USPTO made clear that certain CBD or hemp-derived products “may also raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA). The use in foods or dietary supplements of a drug or substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA).” This, unfortunately, means that the USPTO remains unwilling to approve registration of marks for a wide swath of goods containing CBD, including foods, beverages, dietary supplements and pet treats. The approach to hemp-related services is more permissive, with the USPTO expressing willingness to issue registrations for the cultivation or production of hemp, so long as the applicant provides confirmation that the activities fall within the scope of the 2018 Farm Bill.
Despite its restrictions and limitations, the Examination Guide remains great news for any cannabis or hemp business seeking trademark protection for goods and services related to hemp-derived CBD. A path to obtaining federal trademark registrations finally appears available for many CBD brands. Companies seeking this protection, however, face a landscape of rapidly evolving law and regulation. The intellectual property experts at Rogoway Law Group have much experience counseling cannabis and hemp industry clients through the federal trademark registration process and are available to help navigate this new opportunity.