The U.S. Patent and Trademark Office (“PTO”) issued new guidelines on May 2, 2019, clarifying that trademarks for certain cannabis and cannabis-derived goods and services are now eligible for federal trademark protection. The PTO issued the guidelines to clarify the procedure for examining marks for these goods and services following passage of the 2018 Farm Bill, which Congress enacted on December 20, 2018.
The legislation removed “hemp” from the definition of marijuana under the federal Controlled Substances Act (“CSA”). This means that cannabis plants and derivatives – such as Cannabidiol – that contain no more than 0.3% THC on a dry-weight basis, and related services, are no longer prohibited under federal law. However, because the Food and Drug Administration (“FDA”) is still conducting clinical investigations on Cannabidiol in certain types of products – including foods, beverages, dietary supplements, and pet treats – the types of goods for which applicants may presently register Cannabidiol trademarks is limited.
At this time, trademarks for cannabis related goods and services will be eligible for registration as long as the applied for goods and services: (1) are not regulated by the FDA, and (2) do not fall under the CSA’s definition of “marijuana.”
The following is required for trademark registration:
- The description of goods or services must explicitly pertain to hemp, which contains no more than 0.3% THC. Marijuana is still prohibited from U.S. trademark registration.
- For applications that seek to register services involving the cultivation or production of hemp, the applicant will be required to confirm that it is licensed or authorized by a government authority to produce hemp.
- The application must have been filed after December 20, 2018, the date that the 2018 Farm Bill became law. For applications filed before December 20, 2018, applicants will have the option to amend their filing date, filing basis, and description of goods and services to overcome any refusal based on violation of the CSA.
The following trademarks are still not registrable:
- Trademarks for foods, beverages, dietary supplements, or pet treats containing CBD, even if it is derived from hemp, since CBD is undergoing clinical investigation by the FDA.
- Trademarks for goods or services derived from marijuana, which contains more than 0.3% THC on a dry-weight basis, still violate federal law and are not registrable in any category.
So what does it really mean?
- The PTO appears to be allowing hemp trademarks for textiles and topicals.
- The PTO will not allow trademarks for dietary supplements or edibles.
- The PTO will not allow trademarks on anything containing more than 0.3% THC or any cannabis product that was not derived from hemp.
- It is unclear whether the PTO will allow trademarks on hemp production yet.
It is important to keep in mind that a determination of whether commerce involving cannabis and cannabis-related goods and services is lawful requires reference to several different federal laws, including the Controlled Substances Act, Federal Food Drug and Cosmetic Act, and the Agriculture Improvement Act of 2018 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946.
Given the interplay of several federal statutes and the rapidly changing nature of this field, it is best to consult your trademark counsel upfront about a specific brand protection strategy for cannabis-related trademarks.