By: Stephen Thomas
The continuing internal tension between various agencies and offices of the U.S. federal government over how to address the (seemingly) unstoppable growth of the marijuana industry in light of current federal law has been a bit like watching the earth’s tectonic plates in action. It may not seem like much is happening, but occasionally there is movement, albeit small, that belies and relieves some of the tension. One such movement occurred on May 2, 2019, when the United States Patent and Trademark Office (USPTO) issued new guidance for registration of certain CBD products as result of the 2018 Farm Bill.
The use of a mark in commerce must be lawful under federal law in order to be the basis for federal registration under the U.S. Trademark Act. Accordingly, the USPTO has consistently refused to register trademarks for products comprising marijuana products, since the drug class “marijuana” falls within the list of controlled substances for which manufacturing, distributing, dispensing, or possession is unlawful.
Then came the 2018 Farm Bill, and the tectonic plates moved a bit. Why? Because the 2018 Farm Bill amended certain aspects of the Agricultural Marketing Act of 1946 (AMA), removing “hemp” products from the “marijuana” category under the Controlled Substances Act (CSA). “Hemp” is now defined, generally speaking, as Cannabis products that contain no more than .3% THC by dry weight.
Under the May 2, 2019 USPTO Examination Guide 1-19, trademarks for CBD will continue to be refused registration unless:
- The CBD product contains no more than .3% THC by dry weight (putting it into the “hemp” category and taking it out of the “marijuana” category, as marijuana products are still unlawful under the CSA); and
- The CBD product is not for foods, beverages, dietary supplements or pet treats, as it is unlawful for these products to contain CBD under the Federal Food Drug and Cosmetic Act (FDCA).
I.e., marks for products meeting the above requirements may now be federally registered.
In filing for a federal trademark registration under the new examination guidelines, it would behoove the applicant to set out in the federal trademark application that the CBD product contains no more than .3% THC by dry weight, and to make it clear that the product is not one of the prohibited products under the FDCA. The examiner is also under guidance to seek assurance from the applicant that all license requirements have been met, so the applicant should expect a request for information confirming this during prosecution.
Any other CBD product remains unlawful under federal law and therefore the USPTO will continue to refuse trademark registration.
At least for now, until the pressure builds and the plates move again.