Current Status of Trademark Law & Cannabis

The United States Patent and Trademark Office (USPTO) refuses to register marks for goods and/or services that show a clear violation of federal law, regardless of the legality of the activities under state law. Since cannabis is still a Schedule I listed drug (controlled substance), any use of terms related to cannabis in connection with the use of cannabis or any of its extracts by humans, especially for ingestion, cannot as a matter of law be legal. Thus, until cannabis is removed from the controlled drug schedule, brand owners will not be able to seek federal protection of these marks.

However, on May 2, 2019, the U.S. Trademark Office issued examination guidelines providing a way that certain hemp products, and products made with CBD derived from hemp, can be registered. Under the 2018 Farm Act, the definition for hemp removed it from the controlled substances law, making it legal to grow and use. As long as the trademark application makes it clear that the goods and services are not controlled substances, the mark may be registrable. When filing a trademark application, the identification of goods and services must specify that they are derived from hemp and contain less than 0.3% THC on a dry-weight basis. However, marks used on goods and services for foods, beverages, pet treats or dietary supplements containing CBD or cannabis still remain unprotectible. Trademarks for topicals containing CBD appear to be protectable. If you have a pending trademark application for products using CBD, a new trademark guideline issued May 2, 2019 may provide a path for registration of your mark. You may request to amend the filing date of your application to December 20, 2018.

For applications that recite services involving the cultivation or production of hemp with less than 0.03% THC, the examining attorney will inquire about the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm that their activities are legal and under license or authorization 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.

Insider secret: If your brand is used with food, beverages, nutritional supplements or pet treats, protect your brand with respect to legal products and services (apparel, consulting, website) until cannabis is removed from the controlled substances law. This is a good “plan B” and can be the basis for unfair trade practices, common law trademark, desceptive advertising,  and other cause of action if a competitor usurps your brand.

Consulting an experienced trademark attorney can help you evaluate the data and make informed decisions before adopting your new business name or brand. Undertaking this due diligence can avoid liability for trademark infringement and needless costs for rebranding. With all of the money you are investing in launching a new business, it is a good use of your resources to lay a solid foundation for your business and the name it could have for decades.

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