USPTO Issues Examination Guide for CBD and Hemp-Related Trademarks

On May 2, 2019 the United States Patent and Trademark Office (USPTO) issued a Cannabis Trademark Examination Guide which addresses the examination of trademarks for cannabis, cannabidiol (CBD), and hemp-related products and services.  The USPTO was prompted to publish the Examination Guide after the enactment of the 2018 Farm Bill and the significant increase in trademark applications seeking to register trademarks covering cannabis, CBD, and hemp-related products and services.

The USPTO Examination Guide, titled Examination of Marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill, begins by reiterating the general rule that use of a trademark must be lawful under federal law to be the basis for federal registration under the US Trademark Act.  In other words, the US Trademark Office refuses to register trademarks for goods and/or services that show a clear violation of federal law, regardless of the legality of the activities under state law.  A determination of whether commerce involving cannabis and cannabis-related goods and services, such as CBD and industrial hemp, is lawful requires review of several different federal laws, including:

  • The Controlled Substances Act, 21 USC §§ 801 et seq.
  • The Federal Food Drug and Cosmetic Act, 21 USC §§ 301 et seq.
  • The Agriculture Improvement Act of 2018 (the 2018 Farm Bill)

The 2018 Farm Bill, which was signed into law on December 20, 2018, modifies certain federal laws in connection with the production and marketing of hemp-related products.  These changes include removing hemp from the Controlled Substances Act’s (CSA) definition of marijuana.  The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. This means that cannabis plants and derivatives, such as CBD, that contain no more than 0.3% THC are no longer controlled substances under the CSA.

For federal trademark applications filed with the USPTO on or after December 20, 2018 covering cannabis an CBD products, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are derived from hemp and contain no more than 0.3% THC.  Thus, the scope of the trademark application must be limited to products that are compliant with federal law or the USPTO examining attorney will refuse registration.

The USPTO states that applicants should be aware that even if the identified products (such as CBD products containing no more than 0.3% THC) are legal under the CSA, not all products for CBD or hemp-derived products are lawful under the 2019 Farm Bill.  Such products may also raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA).  For example, the use in foods or dietary supplements of a drug or substances undergoing clinical investigation without approval of the US Food and Drug Administration violates the FDCA.  The 2018 Farm Bill explicitly preserved the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA.  CBD is an active ingredient in FDA approved drugs and is a substance undergoing clinical investigations.

Therefore, the USPTO states that registration of trademarks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be marketed or sold in interstate commerce.  We are awaiting movement from the FDA on this issue as trademark applications for certain CBD products will continue to be refused registration by the USPTO. The Examination Guide also states that for all applicants that reference “hemp” in their identification of products and/or services, the USPTO examining attorney will issue office actions that inquire about the applicants authority to produce or manufacture hemp-derived or CBD products.  Thus, applicants will be required to provide additional statements to the USPTO (under oath) to confirm that their product and/or services are of lawful-use under the 2018 Farm Bill.

Cannabis and cannabis-related products and services has become a unique area of trademark law and if you or your business is seeking brand protection for CBD or other hemp products, please contact our trademark attorneys to see how we can provide assistance.

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