Registering a trademark with the federal government is prohibited if the mark is being used on goods or services that violate federal law. This is a significant hurdle to obtaining the valuable legal protections from owning a trademark registration. Recent guidance from the United States Patent and Trademark Office (the “USPTO”), however, clarifies that—in light of recent legislation—trademarks for some hemp-based goods and services may now be registered. Though this change represents a narrow exception to the outright bar on registering hemp- or cannabis-related goods or services, the Examination Guide provides insight into how the USPTO may handle the prosecution of cannabis marks if the federal drug laws are liberalized further.
On May 2, 2019, the USPTO issued Examination Guide 1-19, which notes that the 2018 Farm Bill, signed into law in late 2018, removed “hemp” from the definition of “Marihuana” (aka marijuana) in the Controlled Substances Act (the “CSA”), making it no longer illegal under the CSA. Therefore, a trademark applicant may now apply to register a mark for most hemp-based goods or services, provided those products contain less than 0.3% THC.
In addition, for applications covering hemp-related services, an applicant must confirm to the USPTO that its activities follow the 2018 Farm Bill requirements that hemp be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (the “USDA”). As of this post, the USDA has yet to issue the relevant hemp-production plan, but the 2018 Farm Bill provides that states, tribes, and institutions of higher education may continue to operate under authority from the 2014 Farm Bill until one year after the USDA establishes the plan and regulations required by the 2018 Farm Bill.
This change in practice opens the door to federal registration for most—but not all—marks used on hemp-based goods and services. The USPTO has maintained the absolute bar on the registration of trademarks covering foods, beverages, dietary supplements, or pet treats containing CBD because the Food, Drug, and Cosmetic Act prohibits the use of a drug or substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration.
The vast majority of businesses offering cannabis, hemp, or CBD products or services are not affected by this rule change. Those businesses should continue to explore alternative strategies to obtain registered protection, such as selling non-cannabis products or filing state trademark applications in states where cannabis is legal. The Examination Guide does, however, provide insight into how the USPTO may treat further legalization of federal marijuana laws. For example, under the Examination Guide, applications for hemp-based products that were filed prior to the rule change will not be held invalid simply because they were filed prior to the 2018 Farm Bill. Rather, the USPTO will allow applicants an opportunity to amend the filing date to December 20, 2018—the date the 2018 Farm Bill passed. The USPTO may treat applications for cannabis products in a similar manner, provided that Congress changes federal law before the application is finally refused.