After passage of the Agricultural Improvement Act of 2018 (“The Farm Bill”), many professionals in the cannabis industry wondered how the new law would affect the U.S. Patent and Trademark Office’s (USPTO) stance on trade and service marks for cannabis sativa L species (hemp) and hemp-related goods and services.
In May 2019, the USPTO issued Examination Guide 1-19 confirming its commencement of review of federal mark protection for goods and services that encompass products or cannabidiol (CBD) derived from hemp. The examination guide clarifies the procedure to examine such marks for registration.
The USPTO typically drafts examination guides to clarify standards of application review by the office’s examining attorneys who may encounter issues during their review of applications not previously addressed within the Trademark Manual of Examining Procedure.
The Guide first reminds examiners to refuse registration of marks that show a clear violation of federal law. This includes any products or services related to marijuana, which remains a Schedule I prohibited controlled substance. That said, the Farm Bill amended federal law and removed hemp from the Controlled Substances Act’s definition of “marijuana.” This means that cannabis plants and derivatives, such as CBD containing no more than .3% THC on a dry-weight basis, are no longer controlled substances under the CSA and therefore no longer illegal under federal law.
Next, the USPTO clarified that for applications filed on or after December 20, 2018 (the date the Farm Bill was signed into law), the bill potentially removes the CSA as a ground for refusal of registration of goods encompassing cannabis ingredients or CBD, but only if the goods are derived from “hemp.”
Products and CBD derived from marijuana would still violate federal law and applications for such goods would still fail under the prohibition against goods and services unlawful under federal law. The application must specify that the goods in question are derived/sourced from hemp and contain less than .3% THC.
For applicants who filed before December 20, 2018, the examining attorney at the USPTO would provide them the option to amend the filing date and basis of the application to overcome the CSA as a ground for refusal. Alternatively, applicants could also abandon their applications and refile new ones. If any application was filed before the date as an actual use of the mark in commerce, the applicant would have to amend the filing basis from an actual use mark to an intent to use the mark in commerce. Once applications are amended or refiled, the examining attorney would conduct a new search of the USPTO records for conflicting applications based on the later application filing date.
Additionally, the USPTO carefully reminded applicants that CBD or hemp-derived products not only have to comply with the 2018 Farm Bill, but also with other federal laws, including the Federal Food Drug and Cosmetic Act and the Federal Drug Administration (“FDA”), which prohibits the use of CBD in foods or as a dietary supplement.
CBD is currently undergoing clinical investigations. Therefore, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD would still be refused as unlawful under the FDCA. Even if derived from hemp, such goods cannot be lawfully introduced into interstate commerce just yet.
Any applicants referencing “hemp” in their application will need to provide documentation confirming their ability to meet 2018 Farm Bill hemp production requirements. Although the US Department of Agriculture (USDA) has yet to enact regulations or create its own hemp-production plan, the Bill directed states, tribes, and institutions of higher education to operate under authority given to them under the 2014 Farm Bill for up to 12 months after the USDA administers a plan and regulations.
While the examination guide does not contain any shocking resolutions, it certainly provides clarity for hemp breeders, growers, processors, manufacturers, distributors, and retailers seeking registration of a mark related to domestic industrial hemp products. The guide does reiterate that many CBD products (food, beverages, dietary supplements, and pet treats) still cannot be sold legally in the U.S. without approval by the FDA. Until the FDA issues regulations and rules, trademark registrations for CBD products disallowed by the FDA will not be available.
Therefore, registration for CBD-related products is likely limited to unadulterated CBD extracts, ancillary goods and services as well as those that specifically exclude cannabis, such as “SKUNK DOCTOR” for “odor neutralizing sprays for the removal of cannabis smoke odor” or “CANNATRAC” for “use in connection with business consultation in the medical and recreational marijuana industry.”