Trademark registration related to cannabis products is still problematic

cannabis products

Barney’s high-end head-shop in Beverly Hills

Cannabis is big business in California and other states, but at this point trademark registration is problematic.

In the United States use and trademark registration of cannabis products and services is complicated. Cannabis remains illegal at the federal level, and, consequently, a federal trademark registration is not available. Separately, 33 states allow cannabis for medicinal purposes with 10 states (Alaska, California, Colorado, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, Washington, and Washington DC) also allowing cannabis for recreational use.

US FEDERAL REGISTRATION

The USPTO does not grant federal trademark registrations for marks that violate federal law but does allow registration for ancillary lawful goods/services such as vaping pipes, clothing, and providing online information about cannabis.

USPTO BACKGROUND

The federal government and, consequently the USPTO states: “if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made.” TMEP §907 states in pertinent part that “evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal.

CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. … [R]egardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. … These prohibitions apply with equal force to the distribution and dispensing of medical marijuana.”

This hard stance could be changing. Last September 2018, the DEA removed some CBD/THC products from Schedule I (“drugs including CBD with THC content below 0.1% are now considered Schedule 5 drugs … The action came three months after the FDA approved its first nonsynthetic, cannabis-derived medicine, a CBD preparation for rare types of epilepsy. …”)).

And in December 2018, the President signed the Agriculture Improvement Act of 2018 (“Farm Bill”) that, among other things, removes hemp (containing less than 0.3% THC) from the purview of the CSA. It is unclear at this point whether trademark applications will be accepted for CBD preparations as the FDA is still maintaining control over cannabis products (“we treat products containing cannabis or cannabis-derived compounds as we do any other FDA-regulated products … This is true regardless of the source of the substance, including whether the substance is derived from a plant that is classified as hemp under the Agriculture Improvement Act.”

STATE TRADEMARK REGISTRATIONS

As of January 2018, the State of California is accepting trademark applications for cannabis goods and services with certain caveats (i) classification of goods and services are those adopted by the USPTO (as noted above, the USPTO does not accept applications for cannabis products but does accept applications for ancillary products); (ii) applicant is required to state whether it previously sought to register the mark with the USPTO and, if registration was refused, to disclose the reasons why it was refused at the federal level.”

CONCLUSION

The Cannabis industry is growing, particularly in those states where it is legal for medicinal and recreational purposes (e.g., $2.5 billion in 2018 in California alone) and as shown by an uptick in the luxury retail space (e.g., Barney’s recent opening of a high-end head-shop in Beverly Hills).

However, as long as Cannabis is not legal at the federal level, registration of trademarks on both the federal and state level will be problematic for the product itself but, as shown above, ancillary goods and services can be protected. For example, under the current circumstances, Barney’s could possibly obtain a registration for THE HIGH END covering retail store services including the offering of upscale smoking accessories, French rolling papers and jewelry. Registration would not be available for cannabis products. These circumstances could be changing with the recent decision by the DEA and the passing of the Farm Bill but it is unclear, at this point, how it will play out. To be continued…

Author: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com