In a recently issued “Examination Guide” – which is issued to clarify standards of application review by the USPTO’s examining attorneys and to assist practitioners when new issues relating to trademark prosecution arise that are not necessarily yet covered in the periodically updated “Trademark Manual of Examining Procedure” – the USPTO stated: “For applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, the 2018 Farm Bill potentially removed [the U.S. Controlled Substance Act (the CSA)] as a ground for refusal of registration, but only if the goods are derived from ‘hemp.’”
Additionally, the USPTO announced that applicants who previously submitted trademark applications and/or had their applications rejected based on the legal status of CBD prior to December 20, 2018 will be able to refile or amend their applications.
Under 15 U.S.C. § 1052, trademarks and service marks must involve “lawful use in commerce” to be eligible for federal registration. As explained in the just-issued Examination Guide 1-19 “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” (dated May 2, 2019), the 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.”
The CSA makes it unlawful for, among other conduct, “any person knowingly or intentionally … to manufacture, distribute, or dispense, or possess with intent to manufacture, distribute, or dispense, a controlled substance.” “The term ‘controlled substance’ means a drug or other substance, or immediate precursor, included in schedule I, II, III, IV, or V” of the CSA. Marijuana is a schedule I drug. As such, it is difficult, if not impossible, to register a marijuana-related trademark.
The 2018 Farm Bill amended federal law and, as explained in Examination Guide 1-19, “change[d] certain federal authorities relating to the production and marketing of ‘hemp,’ defined as ‘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 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.’” Most notably, as the Examination Guide also explained, the Farm Bill “remov[ed] ‘hemp’ from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain no more than 0.3 percent THC on a dry-weight basis are no longer controlled substances under the CSA.”
As such, hemp-derived CBD products and services are now eligible for trademark protection. And, as the USPTO explained, it issued Examination Guide 1-19 “to clarify the procedure for examining marks for cannabis and cannabis-derived goods and for services involving cannabis and cannabis protection following the 2018 Farm Bill.”