I. Introduction
As noted in the April 23, 2019 blog, US trademark applications that “identified goods or services involv[ing] the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”) … would be a basis for issuing an inquiry or refusal.” TMEP §907. Cannabis products have been considered to contain a controlled substance.
The 2018 Farm Bill (“Farm Bill”) removes “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain < 0.3% THC on a dry-weight basis are no longer considered to be controlled substances under the CSA (“hemp derived CBD/THC goods”). The USPTO issued an examination guide on May 2, 2019 to clarify the procedure for examining marks identifying hemp derived CBD/THC goods and services.
II. Examination of marks for goods containing cannabis
The Farm Bill potentially removes the CSA as a grounds for refusal of registration, but only if the goods are derived from “hemp.”
December 20, 2018 and Onward:
- Cannabis and CBD derived from marijuana still violate federal law, and such applications will still be refused registration regardless of the filing date.
- For applications covering hemp derived CBD/THC goods, the identification of goods must specify that the goods contain < 0.3% THC.
Pre-December 20, 2018: Applicants will have the option of amending the application as follows:
- Request to amend the filing date of the application to December 20, 2018. The request must specifically state that the change is authorized and there is a valid filing basis.
- Applications originally based on use of the mark are required to be amended to intent-to-use.
- Goods must be amended to specify that the CBD or cannabis products contain < 0.3% THC.
Caveat: Even if the goods in the application are legal under the CSA, not all are lawful following the Farm Bill. The Farm Bill explicitly preserves the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (“FDCA”). Products such as CBD and hemp derived products undergoing clinical investigations without approval by the FDA violates the FDCA. Therefore, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD, even if derived from hemp, will still be refused as unlawful under the FDCA.
III. Examination of marks for services involving cannabis production
If the services involve cannabis that is “hemp” containing < 0.3% THC (“hemp derived services”), the applications will be examined for compliance with the Farm Bill. Applicants refused registration under the CSA will have the same options outlined in Section II., above.
For applications that recite hemp derived services involving the cultivation or production of cannabis, the examining attorney will also issue inquiries about the applicant’s authorization to produce hemp.
The Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the US Department of Agriculture (“USDA”) for the commercial production of hemp. Until a new plan and regulations are approved by the USDA, the Farm Bill directs that states, tribes, and institutions of higher education may continue operating under authority of the 2014 Farm Bill until 12 months after the USDA establishes the new plan and regulations.
IV. Conclusion
The good news is that the USPTO has a mechanism for handling hemp derived CBD/THC goods and services pre and post December 20, 2018. This will allow certain applicants to salvage applications that meet the requirements of the Farm Bill, in particular, goods and services involving CBD or cannabis products containing <0.3% THC.
On the flip side, the FDA still retains authority to regulate products containing cannabis or cannabis-derived compounds undergoing clinical investigation. Consequently, registration of marks for foods, beverages, dietary supplements and pet treats containing CBD, even if derived from hemp, will still be refused registration.
Author: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
