Until recently, federal registration with the United States Patent and Trademark Office (USPTO) of trademarks connected with the offering of #cannabis or cannabis-derived goods—or service marks connected with services involving cannabis or cannabis production—was a legal impossibility. An application for such goods or services was futile due to the illegal use in commerce doctrine, which refers to the fact that use of a trademark or service mark must be lawful under federal law in order to be the basis for federal registration of that mark. If the goods or services with which the mark is used do not comply with applicable federal laws, then the applicant’s use of the mark cannot create rights that a federal registration would recognize. Because the USPTO is a federal agency, within the U.S. Department of Commerce, the fact that the goods or services may be lawful under one or more state laws is irrelevant.
However, the 2018 Farm Bill—which was signed into law on December 20, 2018 as the Agriculture Improvement Act of 2018—has helped to open up a narrow path toward obtaining a federal registration for trademarks and/or service marks used in connection with hemp or hemp-derived goods and services involving hemp or hemp production. It has done so by removing “hemp” from the definition of marijuana within the Controlled Substances Act (CSA), 21 U.S.C. §§ 801, et seq. (the “CSA”). The term “hemp” is, per the Act, defined to mean: “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 tetrahydorcannabinol concentration of not more than 0.3 percent on a dry weight basis.” AMA, Section 297A (as amended). As a result, cannabis plants and derivatives such as cannabidiol (commonly referred to as “CBD”) that contain no more than 0.30% THC on a dry-weight basis are no longer deemed to be controlled substances under the CSA.
Consequently, for any trademark applications filed with the USPTO on or after the effective date of the 2018 Farm Bill (i.e., December 20, 2018), that identify goods encompassing cannabis or CBD, the marks are potentially registrable if the goods are derived from hemp and the application specifies that the goods contain less than 0.3% THC. Notably, however, not all types of hemp-derived goods or services are lawful as a result of the 2018 Farm Bill. This is because the 2018 Farm Bill expressly preserved the U.S. Food and Drug Administration’s (FDA’s) authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (FDCA). Therefore, an application to register marks for goods such as food, beverages, dietary supplements and/or pet treats that contain cannabis or CBD will still be refused as unlawful—even if derived from hemp.
If the application seeks to register a mark for services that involve the cultivation or production of hemp, the examining attorney will inquire as to the applicant’s authorization to produce hemp. Thus, applicants will be required to confirm, through statements for the record, that their activities comply with the requirements of the 2018 Farm Bill regarding hemp production, including the requirement of a license or authorization issued by a state, territory or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp.
Should it be that your trademark or service mark is not eligible for federal registration, the prospect of registering your mark with states wherein your goods and/or services are lawful should not be overlooked.
If this seems complex, TRAILBLAZER would be pleased to help you. Should you desire assistance with respect to any trademarks or service marks, please do not hesitate to contact us at 305-222-7851.