The guidelines caution, however, that despite changes to the CSA, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill.
On May 2, 2019, the United States Patent and Trademark Office (USPTO) made available a new examination guide aimed at clarifying the examination procedure for trademarks used in connection with cannabis and cannabis-derived goods and services.
These guidelines are a direct response to the signing of the Agricultural Improvement Act of 2018 (2018 Farm Bill) into law on December 20, 2018. The 2018 Farm Bill changes 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.” These changes include removing hemp from the Controlled Substance Act’s (CSA) definition of marijuana, which means that cannabis plants and derivatives such as cannabidiol (CBD) that contain no more than 0.3 percent THC are no longer controlled substances under the CSA. The USPTO refuses to register marks for goods and/or services that show a clear violation of federal law. However, following the 2018 Farm Bill, what is considered a violation of federal law (i.e., the CSA) has changed.
Under the new guidelines, applications filed before December 20, 2018, that identify goods and/or services encompassing CBD or other cannabis products will be issued a refusal based on unlawful use or lack of bona fide intent to use in lawful commerce under the CSA. Following the issuance of the refusal, an applicant will be allowed to: (1) abandon the application and file a new one; (2) respond by submitting evidence and arguments against the refusal; or (3) amend the filing date of the application to December 20, 2018. Those applicants that choose to amend the filing date of the application will also be required to:
- Amend the basis of applications originally filed based on use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a) to intent to use the mark in commerce under Section 1(b), 15 U.S.C. §1051(b).
- Amend the identification of goods/services to specify that the CBD or cannabis products offered or involved contain less than 0.3 percent THC.
- Specifically for those applications covering services involving the cultivation or production of hemp, respond to inquiries concerning the applicant’s authorization under the 2018 Farm Bill to produce hemp.
Following amendment to the application, the examining attorney will then conduct a new search of the USPTO records for conflicting marks based on the later amended filing date.
The guidelines caution, however, that despite changes to the CSA, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. The 2018 Farm Bill explicitly preserved U.S. Food and Drug Administration’s (FDA) authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (FDCA). Therefore, registration of marks for foods, beverages, dietary supplements or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.
It remains unclear how soon the USPTO will begin issuing refusals to applications filed earlier than December 20, 2018. Furthermore, it is uncertain to what extent these amendment requirements will detrimentally affect the examination of earlier filed marks due to applicants having to forego their earlier filing dates.