In Part 2, we cover the key Intellectual Property issues that are emerging in this arena. Read part 1 here.
United States Patent and Trademark Office update
Following the enactment of the Farm Bill, the United States Patent and Trademark Office (USPTO) has officially issued guidelines when reviewing trademark applications for CBS and hemp-derived goods and services.
This is a big step for the cannabis industry as for many years, entities have tried, unsuccessfully, to legally protect their trademarks in connection with commercial cannabis businesses. The USPTO policy for many decades has been rigid in its dealing with cannabis related trademarks; the tolerance level being essentially none.
What is a cannabis-related trademark?
The Examination Guide 1-19 allows for some, but not all, registration of cannabis related trademarks. The “cannabis related trademarks” the USPTO allows businesses to apply and register for are:
- Legal hemp
- Hemp derived CBD
- Hemp oil and other hemp derived goods
- The service of cultivating hemp
- The service of the production of hemp-derived goods
- Other services that relate to hemp
What other requirements are necessary to obtain a trademark for cannabis-related trademarks?
Once it has been established that the trademark being obtained is for cannabis related purposes, the second question to ask is if it is a “lawful use in commerce.” The trademark application must demonstrate that the product or service derives or relates to hemp as defined by the Farm Bill. When listing out the goods or services that the trademark is meant to protect, the applicant must specify that goods contain no more than 0.3 percent delta-9 tetrahydrocannabinol (THC). This complies with the scope of the federal law mentioned in the above section. Furthermore, the applicant of the trademark may be required to submit evidence to the USPTO showing compliance with the licensing and regulatory standards in connection with the Farm Bill.
The U.S. Food and Drug hesitation
Although the Farm Bill has made it clear that many trademarks that were not allowed registration before are now acceptable, the FDA has still barred certain products from being lawful. The FDA has stated that any products or services that 1) introduce food containing added CBD or THC into interstate commerce, or 2) to market or use CBD or THC products in dietary supplements, regardless of whether the substances are hemp-derived, are still unlawful.
The Examination Guide 1-19 took heed of the FDA’s hesitation and does not allow businesses to register trademarks for foods, beverages, dietary supplements, and pet treats containing CBD, even if derived from hemp.
Other developments in trademark services
Following the guidelines from the USPTO, many trademark service databases, have started marketing products that will help prospective applicants search for trademark availability in the commercial cannabis space. One of these databases, Coresearch, is well known in the trademark community in assisting with the protection and screening of trademarks for registration and use with the USPTO and in commerce. Coresearch has created a proprietary tool “Cannabis Industry Search” which will check for existing conflicts, at the state level, with other trademarks for similar services or products, identify possible conflicts with strains and dispensaries, and conduct searching on CBD related utensils such as vapes and edibles.
The Coresearch product also demonstrates the evolution of the cannabis industry in trademarks and how it intends to be a big player in the protection and enforcing Intellectual Property (IP) rights. Coresearch has only offered one other, similar service for an industry along this line, the alcoholic beverage industry, which is recognized as highly competitive and invests millions of dollars in connection with protecting its IP.
Time is of the essence
With the USPTO’s allowance for cannabis related trademarks and the expanding availability of involvement trademark databases, obtaining trademarks in this field will be highly competitive in the months and years to come. The laws surrounding cannabis are evolving and expanding every year and the USPTO anticipates to receive hundreds of applications for trademark protection in the hemp and hemp derived spaces. Against this backdrop, the time to obtain a trademark and to protect your growing cannabis business is right now.