Earlier this month, the United States Patent and Trademark Office (“USPTO”) issued Examination Guide 1-19, intended to “clarify the procedure for examining marks for cannabis and cannabis-derived goods and for services involving cannabis and cannabis production following the 2018 Farm Bill.”
In the guide, the USPTO reminds us that use of a trademark in commerce must be lawful under federal law in order for the mark to be federally registered, regardless of legality under state law. What better/more timely example of the continued dichotomy between federal and state law than cannabis.
According to the USPTO, it has historically refused registration for marks covering cannabis-derived goods/cannabis-related services and will continue to do so for trademark applications pre-dating the signing of the 2018 Farm Bill into law on December 20, 2018 (with the option for amendment). The Bill, which amended the Agricultural Marketing Act of 1946 to remove “hemp” from the Controlled Substance Act’s definition of “marijuana,” means that cannabis plants and derivatives such as cannabidiol (“CBD”) under a certain THC percentage are no longer considered controlled substances. Thus, for new trademark registrations, the USPTO may stop refusing registration for marks covering goods derived from hemp (defined as containing less than 0.3% THC on a dry-weight basis) or services involving the cultivation/production of hemp (which has its own requirements).
The USPTO’s guide also informs us that not all hemp-derived goods are now considered lawful, that the Food & Drug Administration still has the authority to regulate cannabis products under the Federal Food Drug and Cosmetic Act (“FDCA”), and that “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.”