The path to trademark registration for hemp and CBD-based products may be a little easier now. In response to the enactment of the 2018 Farm Bill that legalized hemp, the United States Patent and Trademark Office (PTO) recently issued Official Guidelines for the examination of marks for cannabis and cannabis-related goods and services. Brand owners who were previously denied federal protection for their marks in this industry may now look to the PTO to protect their brands on a nationwide basis.
Historically, the PTO has refused to register marks for cannabis-related goods and services because for a mark to be eligible for federal registration, the goods or services for which it is used cannot be illegal under federal law. Marijuana is of course an illegal and controlled substance under the Controlled Substances Act (“CSA”) and, up until a few months ago, the definition of marijuana under the CSA included all parts of the cannabis plant. As a result, the PTO would routinely cite the CSA as grounds to refuse registration for cannabis-related goods and services because they are not “lawfully used in commerce.” This may seem straightforward, but the question of what constitutes “unlawful use in commerce” has been repeatedly challenged.
To further complicate the PTO’s strict policy, on Dec. 20, 2018, Congress passed the Farm Bill, which removed hemp from the CSA’s definition of marijuana. This means that hemp (i.e. cannabis plants and derivatives such as CBD that contain less than 0.3% THC) is no longer a controlled substance under the CSA. In addition, the production and marketing of hemp as an agricultural commodity is legal for the first time in the United States since 1970. As a result, federal trademark protection is now available for cannabis-related goods and services as long as the goods are derived from “hemp.” The PTO can no longer cite the CSA as a valid ground to refuse registration of marks for goods simply because they appear to contain cannabis or CBD.
In order to directly address this new law, the PTO has announced that trademark applications for cannabis or CBD-derived goods filed after Dec. 20, 2018 may be approved now as long as the applicant specifies that the goods contain less than 0.3% THC. Applicants who filed before Dec. 20, 2018 will be given the option of amending the filing date to Dec. 20, 2018 to overcome the CSA as a ground of refusal and amend the description of goods to clarify that the cannabis or CBD products contain less than 0.3% THC.
While this is an important departure from the past and will undoubtedly open many new doors for brand owners in this industry, it is important to note that these applications will still be highly scrutinized. They will still be examined for compliance with the new legal definition of hemp under the CSA and the 2018 Farm Bill regulations. The new PTO guidelines also make it clear that it will continue to follow FDA’s lead and refuse registration of marks for CBD-based food, beverages and dietary supplements because CBD is still unlawful under the Federal Food, Drug and Cosmetic Act (FFDCA), even if derived from hemp. Finally, the PTO will of course continue to refuse registration of marks for goods and services that violate federal law, including those marijuana-derived goods and services still prohibited under the CSA.