As of May 3, 2019, over 600 pending trademark applications were in limbo while the U.S. Patent & Trademark Office (USPTO) issued refusals on otherwise registrable trademarks because they claimed cannibis or cannabis-derived goods such as cannabidiol (CBD). The basis for the refusals stemmed from the requirement that the trademark use must be legal. However, under the Controlled Substances Act (CSA), marijuana is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16). Cannabidiol (CBD) is a chemical constituent of the cannabis plant that is encompassed within the CSA’s definition of marijuana.The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a). Therefore, the USPTO refuses registration when an application identifies goods encompassing CBD or other extracts of marijuana because such goods are unlawful under federal law and do not support valid use of the applied-for mark in commerce.
The 2018 Farm Bill Exception
The 2018 Farm Bill, which was signed into law on December 20, 2018, amends the Agricultural Marketing Act of 1946 (AMA) and changes certain federal authorities relating to the production and marketing of “hemp,” defined as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” Section 297A. These changes include removing “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.
What Products are Available to Trademark?
Because the 2018 Farm Bill became law on December 20, 2018, trademark applicants that filed on or after that date could have had a legal bona-fide intent to use cannibis or CBD in commerce provided they are derived from hemp and contain less than 0.3% THC. However, there are more restrictions. Cannabis compounds are undergoing clinical investigations and therefore under the FDA's oversight. Registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the Federal Food Drug and Cosmetic Act (FDCA), even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce. Unfortunately, everything that entreprenuerial companies want to do with CBD (introduction into the body for theurapuetic benefit) appears unavailable for trademark protection.
What Services are Available to Trademark?
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. Therefore, the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because such services still violate federal law, regardless of the application filing date. So, the alternative is cultivation of hemp.
Production of Hemp Requries License or Authorization
For applications that recite services involving the cultivation or production of cannabis that is “hemp” within the meaning of the 2018 Farm Bill, the examining attorney will also issue inquiries concerning the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm that their activities meet the requirements of the 2018 Farm Bill with respect to the production of hemp.
While the guidelines provide much-needed instruction to USPTO trademark examining attorneys, the restrictions on cannabis and CBD products is relatively severe.
Much of the interest and commercial value of cannabis and CBD come from its therapeutic effect by internal administration in the body. USPTO guidelines note this violates the Federal Food Drug and Cosmetic Act (FDCA). Furthermore, the THC levels must be below 0.3% under the Controlled Substances Act which further limits the availability of trademark protection for therapeutic compounds using THC as an active ingredient.
We anticipate strong legislative pressure under the current Congress to moderate the restrictions under the CSA and FDCA to enabled at least limited federal authorization of cannabis and CBD including internal administration into the body. Trademark protection serves the public interest by insuring consistency and origin of products. With the rapid legalization of cannabis products on a state-wide level, federal legislators should start feeling some pressure to align federal law with state.