What Cannabis Brand Owners Need to Know About the USPTO’s Recent Guidance on Cannabis Trademarks

On May 2, the United States Patent and Trademark Office (USPTO) issued insightful guidance on its procedures for the examination of trademarks for cannabis-related goods and services. This guidance comes months after the passage of the 2018 Farm Bill, which decriminalized industrial hemp and CBD derived from industrial hemp. (You can check out our earlier blog on the Farm Bill here.) This post addresses the key takeaways that any cannabis brand owner needs to know:

The guidance addresses one of the main questions at the core of the trademark examination: whether a cannabis good or service is a lawful use in commerce. While cannabis goods and services may be lawful under state law, the USPTO has previously taken the position that certain uses of cannabis marks in commerce is not lawful and therefore will be denied registration. The guidance unsurprisingly clarifies that the Examiner will refer to the Controlled Substances Act (CSA), the Federal Food Drug and Cosmetic Act (FDCA), and the 2018 Farm Bill to determine whether the use in commerce is lawful.

While we have seen a backlog of the examination of cannabis applications over the past year, this guidance from the USPTO signals that Examiners will likely begin issuing Office Actions to applicants in the near future to address the lawful use in commerce requirement. Be sure to speak with an attorney before responding to any Office Actions or before filing a cannabis application to ensure that your applications are in line with the USPTO’s guidance.

Here are the key takeaways:

Different treatment of applications filed pre- and post-Farm Bill.

The USPTO will refuse the registration if the application identifies goods or services encompassing CBD or other extracts of marijuana as illegal under the CSA, unless:

• For applications filed on or after the 2018 Farm Bill was passed (December 20, 2018), applications may be granted if the application identifies that the CBD is derived from hemp as defined in the Farm Bill. In other words, the identification must specify that the related goods and services involve cannabis that contains less than 0.3% THC.
• For applications filed before the 2018 Farm Bill, the application covering any goods or services involving CBD or other cannabis products will be refused as unlawful under the CSA. However, the Examiner will provide the applicant the option of amending the application to overcome the CSA refusal. If the application is amended, then the Examiner will conduct a new search for conflicting marks based on the later filing date.

Amending pre-Farm Bill applications.

To amend applications filed before December 20, 2018, the applicant will need to change:

• the filing date of the application to December 20, 2018;
• the use basis from use in commerce to an intent to use basis, if applicable; and
• the identification of goods or services to specify that the involved CBD or cannabis products contain0.3% or less of THC.

Options in lieu of amending pre- Farm Bill applications.

In lieu of amending the application, the applicant can:

• abandon the pending application and file a new application; or
• respond to any refusal by submitting evidence and arguments.

Cannabis goods regulated under the FDCA will be refused registration.

Registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will be refused registration as unlawful, even if derived from hemp, as these would be unlawful uses under the FDCA. However, as the FDA is in the process of examining its own regulations over these goods pursuant to the authority granted by the FDCA, we should expect further guidance from the USPTO once the FDA clarifies its position for these types of goods.

Services involving the cultivation or production of hemp will require further responses to office actions.

If the services involve the cultivation or production of “hemp” as defined under the Farm Bill, the Examiner will issue inquiries regarding the applicant’s authorization to produce hemp, and will ask for confirmation from the applicant that the activities meet the requirements under the Farm Bill (i.e., that the hemp is produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the USDA). While the USPTO acknowledges that, to date, the USDA has not promulgated regulations or approved any state or tribal hemp-production plans, states, tribes, and higher education institutions may continue to operate under the 2014 Farm Bill until 12 months after the USDA establishes its regulations under the 2018 Farm Bill.

If you have any questions about this post or any other related matters, please feel free to contact our Cannabis Law Practice Group.