By Aislinn Smalling and Carissa Bouwer

The increasing popularity of cannabis products has led to decriminalization and legalization of marijuana in many states and a proliferation of products containing CBD oil.  But marijuana remains illegal at the federal level.  In order to receive a federal trademark registration, the mark must be used in commerce regulated by the U.S. Congress.  The U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board have consistently refused to register applications that seek to register a trademark for use in connection with marijuana products and services on the ground that the products and services cannot be legally be sold in interstate commerce.  Therefore, such uses cannot serve as the basis for federal registration.

Cannabis is the general name, referring to the overall plant, Cannabis sativa L., from which marijuana and hemp are produced.  The federal Controlled Substances Act identifies marijuana and tetrahydrocannabinols (THC) as controlled substances that are unlawful to possess. 21 U.S.C. §§812(c).  Marijuana is broadly defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” with certain exceptions.  21 U.S.C. § 802(16).  THC is the main psychoactive chemical in cannabis.  In contrast, CBD (Cannabidiol) is a non-psychoactive chemical found in cannabis, although it falls under the Controlled Substances Act’s definition of marijuana.

On December 20, 2018 with the passage of the Agriculture Improvement Act of 2018 (“Farm Bill”), the federal government modified its position by removing “hemp” from the Controlled Substances Act’s definition of marijuana.  Section 297A of the 2018 Farm Bill carves out hemp, defined as the cannabis plant, any of its parts, and derivatives, which contain less than 0.3% THC concentration based on dry weight, from the definition of marijuana.  Hemp products with less than 0.3% THC, including CBD products, are no longer controlled substances under federal law. And these products are generally legal as long as the hemp used to produce the products is grown by a licensed grower consistently with the regulations in the Farm Bill, and other federal, state and local laws and regulations.  CBD products which contain more than 0.3% THC remain illegal under federal law.

In response to this change, in May 2019 the USPTO released guidelines as to how it will examine trademark applications covering CBD products and services (“Cannabis Examination Guide”).  Given the increasing popularity of CBD products in recent years, the Cannabis Examination Guide provides much needed clarification on the registrability and examination of trademarks for cannabis products, including CBD products, containing less than 0.3% THC, which comply with federal, state and local laws and regulations.  For goods or services which meet the definition of marijuana (i.e., 0.3%+ THC), there is no change to the USPTO’s approach, and applications for trademarks covering these goods or services will be rejected.

Trademark applications for permitted CBD goods and services will be treated differently depending on the filing date of the application.  For applications filed after the 2018 Farm Bill was signed into law on December 20, 2018, the USPTO will follow the normal examination procedures and allow registration of marks covering hemp-derived goods and services, including CBD.  However, the scope of registration will only include those products which specify that their THC content is under 0.3%.

The examination procedure for applications filed before December 20, 2018 is more complicated. Because all cannabis products were illegal under federal law prior to the adoption of the 2018 Farm Bill, for any applications filed before December 20, 2018, either the applicant’s use was unlawful or the applicant had no bona fide intent to use the mark in lawful commerce at the time of filing.  However, the USPTO will allow applicants to change the filing date of applications to December 20, 2018 and amend use based applications to an intent to use basis.  If an applicant chooses to amend the filing date, the examining attorney will then examine the application against potentially conflicting marks as of December 20, 2018.  If an applicant does not wish to amend the filing date, the applicant may either abandon the active application and file a new one, or submit a response arguing against the refusal with supporting evidence.

Applicants should also expect to be required to provide additional information about their goods and services.  Applicants applying for trademark registrations related to the production of hemp may need to demonstrate that they have state or tribal government licenses or authorizations under a plan approved by the Department of Agriculture (USDA), as required by the 2018 Farm Bill.  There are currently no regulations by USDA, USDA produced-plans, or USDA-approved state or tribal plans.  However, states, tribes and higher education institutions are allowed to operate under the prior 2014 Farm Bill until one year after the USDA establishes new plans and regulations.

Although the release of the Cannabis Examination Guide provides clarification, there is a large backlog of applications covering CBD products that the USPTO has not examined under the new Cannabis Examination Guide.  In some Office Actions issued under the new Cannabis Examination Guide, the USPTO has asked for goods descriptions to be modified to note “none of the foregoing derived from Cannabis sativa L with a delta-9 tetrahydrocannabinol concentration of more than 0.3 percent on a dry weight basis,” and/or has asked for additional information such as whether applicant’s goods comply with the Controlled Substances Act, the Federal Food Drug and Cosmetic Act, or whether the applicant is seeking approval from the US Food and Drug Administration for the marketing of the goods, depending on the particular application’s goods and services.

In an area that has lacked clarity for years, the Cannabis Examination Guide will provide trademark owners and trademark practitioners clear guidance on what CBD products and services can be covered by a federal trademark registration and the process for obtaining a registration for allowed goods and services.