NON INGESTIBLE CBD PRODUCTS MAY BE ELIGIBLE FOR FEDERAL TRADEMARK REGISTRATION
On May 2, 2019 the USPTO issued Examination Guide 1-19: Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill (“Guide”). Though the Guide does little to nothing for those involved in the cannabis industry whose trademark applications have been rejected under the lawful use requirement in relation to marijuana, it does provide some direction for those whose goods and/or services relate primary to Cannabidiol (“CBD”).
The long and the short of it is, applicants whose goods and/or services involve CBD may be able to obtain successful federal registration of their marks if the goods are not food, beverages, dietary supplements, or pet treats containing CBD and if the hemp from which the CBD was derived was lawfully produced. In the event the applicant’s mark doesn’t fit within the narrow confines defined by the United States Patent and Trademark Office (“USPTO”), the marks remain subject to lawful use refusals.
A general tenant of U.S. trademark law is that in order to obtain a federal trademark registration the use of the mark in commerce must be lawful under federal law. See generally Trademark Manual of Examining Procedure (TEMP) §907. The USPTO refuses to register goods and/or services that show a clear violation of federal law, regardless of the legality of activities under state law. When determining whether a product and/or service is registerable in relation to cannabis and cannabis-derived goods, the USPTO examiner must take into consideration the Controlled Substances Act, 21 U.S.C. §§801 et seq., the Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq., and the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the “2018 Farm Bill”), which amends the Agricultural Marketing Act of 1946 (AMA). All of which contain particular regulations as it relates to cannabis.
Unfortunately for those in the marijuana industry, the Guide further cements the USPTO’s position on marijuana related products and/or services.
Under the Controlled Substances Act (CSA), the drug class “Marihuana” (“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). The CSA prohibits the manufacturing, distributing, dispensing, or processing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a).
Therefore, the USPTO will continue to refuse trademark registration to marks that include in their application, goods which encompass marijuana or its extracts. Such goods remain unlawful under federal law, and thus do not support valid use of the applied-for mark in commerce.
Cannabidiol (“CBD”) products/services
However, the Guide does not contain all bad news for those in the marijuana or related industry. As it pertains to CBD, the Guide does provide a bit of clarification and forward movement.
The 2018 Farm Bill, which was signed into law on December 20, 2018, amends the AMA, and changes certain regulations in relation to the production and marketing of “hemp”. Hemp is defined as “the plant of 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. As a result, the Farm Bill removes “hemp” from the CSA’s definition of marijuana, so 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.
Thus, those trademark applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, may not be refused under the CSA if the goods are derived from “hemp”, i.e. the goods must specify that they contain less than 0.3% THC.
However, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Such goods may also raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA). The use in foods or dietary supplements of a drug or substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA). The 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA. As CBD is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce. 21 U.S.C. §331(ll).
Furthermore, for applicants involved in the service industry, whose applications include services involving the cultivation or production of cannabis that is “hemp”, 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.
Thus, if your mark is for goods and/or services that contain CBD derived from hemp, which are not food, beverages, dietary supplements, or pet treats, and the hemp was lawfully produced, your mark is eligible for federal trademark registration.
Should you have any questions at all regarding your trademarks please contact O'Neill Tran Law today.