Getting a trademark on marijuana-related goods is out of the question right now, based on cannabis still being federally illegal.
There has been a lot of talk recently about the federal legalization of marijuana, but at the national level, marijuana remains illegal and is a controlled substance under the Controlled Substances Act. Because marijuana is illegal at the federal level, the U.S. Patent and Trademark Office will not issue trademark registrations for goods and services directly related to marijuana. However, in 2018 Congress passed the 2018 Agricultural Improvement Act, also known as the 2018 Farm Bill, which removed hemp — defined as cannabis (Cannabis sativa L.) and derivatives of cannabis with concentrations of delta-9-tetrahydrocannabinol (THC) of no more than 0.3% THC on a dry weight basis — from the definition of marijuana in the Controlled Substances Act.
As a result of the Farm Bill’s passage, the USPTO may issue trademark registration for goods derived from hemp and derivatives of cannabis, as long as they do not contain more than 0.3% THC on a dry-weight basis and meet any other applicable federal regulations, such as those set by the U.S. Food and Drug Administration. Applications that the USPTO suspects to be related to cannabis or cannabis-related goods and/or services will be examined for compliance with the Controlled Substance Act, FDA, and the Farm Bill.
What does this mean for cannabidiol products?
Since the enactment of the Farm Bill, the USPTO now grants trademark registrations for hemp-derived CBD and hemp goods that do not contain more than 0.3% THC on a dry-weight basis and meet all other federal regulations, which include the FDA’s regulatory authority over food and dietary supplements and applies to CBD products falling within those categories. Currently, under the federal Food, Drug, and Cosmetic Act, it is unlawful to introduce any food or dietary supplement products containing CBD into interstate commerce. This is because CBD is currently an active ingredient in an approved drug product or a substance for which substantial clinical investigations have been instituted, and the existence of such investigations has been made public. When a trademark application covers CBD goods that do not comply with the FD&C Act or another federal regulation, the USPTO will refuse registration of the application.
What does this mean for marijuana products?
To be eligible for federal trademark registration from the USPTO, the Trademark Act requires “use in commerce,” which is defined as commerce that can be lawfully regulated and controlled by the United States Congress. The Trademark Act has also been interpreted to require the lawful use of a trademark. Commercial use that violates federal law and regulations is not lawful, resulting in an inability to establish priority for federal trademark rights. Because marijuana is illegal under federal law, federal trademark priority rights cannot be established, and trademark applications directly related to marijuana are refused registration.
If a trademark application is filed and the USPTO questions whether the goods or services are directly related to marijuana, the USPTO will generally request a clarification on the legality of the goods or services and may also require certain questions be answered and/or a written statement be submitted. The failure to properly respond to the USPTO’s requests may cause the USPTO to issue further requests and, ultimately, abandonment of the application.
What can you do to protect your trademarks in the marijuana space?
Currently, federal registration for marijuana-related trademarks and brands is not allowed. However, this does not mean all hope is lost.
Generally, states that have legalized marijuana also allow for state trademark registrations for marijuana products. Although a state trademark registration does not offer the same benefits and protections as a federal trademark registration, it will provide trademark protection within the states the marijuana company is legally allowed to operate.
Marijuana companies can seek federal trademark registration for non-marijuana-derived products like clothing, hats, posters, and lighters. Federal registration can also be received on goods that, in normal lawful business, have been traditionally intended to be used with tobacco products, such as pipes and rolling papers. If the legality of such goods is questioned by the USPTO, you will need to provide documentation that the goods have traditionally been used with tobacco products.
Due to the current state of federal law, companies may want to try building their federal trademark rights and brand with lawful non-marijuana-derived goods which will encompass the marijuana goods.
What to do before using your trademark
Before developing and using a trademark, contact a trademark attorney to, at a minimum, conduct a preliminary trademark search. A preliminary search (or knockout search) is a search of the USPTO trademark database and the internet for identical or near identical trademarks. A knockout search is used to assess the risk to the use and filing for federal registration of a trademark. This is a good starting point to avoid infringing the existing trademarks of others.
It is also advisable to keep cannabis products separate from non-cannabis products in brick-and-mortar stores and on websites. This dividing line between goods shows that the non-cannabis products are not secondary to, nor dependent upon, the cannabis goods. Separating the goods will provide less problematic specimens of use to submit to the USPTO when seeking registration for the non-cannabis goods.
The ever-changing legal landscape of the marijuana industry requires a degree of familiarity not associated with most consumer products. Protecting your intellectual property while remaining in the realm of legality is even more complex. Expect the rules and regulations to continue to evolve — both at the state and federal levels — until a national standard is in place. Until then, an intellectual property firm with strong trademark experience in the cannabis market can help you successfully navigate this dynamic marketplace.
The Spring issue of Marijuana Venture will be the second annual Edibles Issue, focusing on one of the most exciting categories in cannabis and looking at the brands, equipment and trends leading the industry.
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