While avoiding guidance on cannabis-related trademarks, a few weeks ago, the USPTO issued guidelines to clarify its position on trademarks related to “hemp” products and goods derived therefrom.
To register a trademark with the USPTO, use of the mark in commerce must be lawful under federal law, regardless of whether the underlying goods or services are legal under state law. The Controlled Substances Act (CSA) contained a blanket prohibition on the use of marijuana in interstate commerce, including hemp, CBD, or other extracts of the marijuana plant. As such, the USPTO has consistently refused registration of trademark applications for such goods or related services.
On December 20, 2018, the 2018 Farm Bill changed the landscape by removing “hemp” from the CSA’s definition of marijuana. It defines “hemp” as cannabis plants and any part thereof with a THC concentration of no more than 0.3% on a dry-weight basis.
This means trademark applications for goods encompassing cannabis or CBD derived from “hemp” that are filed on or after December 20, 2018, are no longer unlawful under the CSA and may be eligible for registration at the Trademark Office.
If an application for a hemp-derived product was filed before December 20, 2018, the applicant may request to amend the filing date of the application to December 20, 2018, on an intent-to-use basis with the specification that the goods identified therein adhere to the 0.3% THC limitations. A new search will be conducted by the Trademark Office based on the later filing date of the amended application.
With respect to applications for foods, beverages, dietary supplements, or pet treats containing CBD, registration will still be refused as unlawful because, under the Federal Food Drug and Cosmetic Act (FDCA), CBD is not yet approved by the Food and Drug Administration (FDA), as it is still undergoing clinical investigation.
Similarly, applications for hemp-related services must comply with the CSA, the 2018 Farm Bill, and all other applicable federal laws to be eligible for registration. Under the 2018 Farm Bill, hemp may only be produced under the prescribed license or authorization. Accordingly, prior to the issuance of a trademark registration, the applicant must confirm its compliance with the 2018 Farm Bill requirements.
The USPTO’s recent guidelines remind us that this area of trademark protection for goods and services related to marijuana, CBD, hemp, and other related goods and services requires a thorough analysis of federal laws beyond those with a direct impact on the classification and legalization of cannabis-related goods and services.