The use of a mark in commerce must be lawful, so the United States Patent and Trademark Office ("USPTO") will decline to register marks for goods and services that are illegal under federal law. As a result, registration of marks for cannabis-related goods and services was prohibited by the USPTO. However, due to the evolving legal landscape surrounding cannabis, the USPTO has issued a new set of guidelines for the examination of marks for cannabis-related goods and services.
The USPTO issued its new guidelines in the wake of the 2018 Farm Bill, which removes hemp from the Controlled Substances Act's ("CSA") definition of marijuana and dictates that "cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA." USPTO Examination Guide 1-19 (May 2, 2019). Based on these modifications to federal law, the USPTO has concluded that if an applicant's goods are derived from hemp, contain no more than 0.3% THC, and are otherwise legal under federal law, then the marks are eligible for registration. In examining applications that involve the cultivation or production of cannabis that is hemp under the Farm Bill, the USPTO will inquire as to the applicant's authorization to produce hemp and require that the applicant provide information confirming that its hemp-related activities comply with the Farm Bill's requirements.
For applicants who filed an application for goods including CBD or related cannabis products before the December 20, 2018 enactment of the Farm Bill, the applicant has the right to amend the application. Such amendments will modify the application date to December 20, 2018, and will revise the subject matter of the application to indicate that the goods include less than 0.3% THC. However, applicants also have the ability to withdraw their application and re-file. Applicants will also have the option of responding to refusals of registration, presumably citing the Farm Bill for arguments against refusal. Notably, although the Farm Bill has expanded the legality of CBD and hemp-related goods, it has not completely opened the gate for registration of marks pertaining to those goods. The USPTO will still refuse to register marks for foods, beverages, dietary supplements, or pet treats containing CBD, even if derived from hemp because these goods may not be introduced lawfully into interstate commerce. Moreover, the USPTO will continue to refuse registration of marks relating to cannabis-related goods that are still illegal under the CSA, on the grounds that their use in commerce is illegal. With these new guidelines in place, applicants should seek guidance regarding the registrability of their cannabis-related marks.
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