By: Paula Krasny
Originally published in Cannabis Business Executive.
The US Patent and Trademark Office’s (“USPTO”) May 2, 2019 Trademark Examination Guide 1-19, “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of 2018 Farm Bill” provides new opportunities for obtaining federal trademark registrations for non-ingestible hemp-derived products. However, they do not allow for the federal registration of trademarks for any form of cannabis for human or animal consumption or any cannabis products with THC levels above 0.3%.
USPTO Examination of Cannabis Marks
The USPTO refuses registration of marks that are not lawfully used in US commerce. Up until December 20, 2018, all cannabis was a Schedule 1 substance under the Controlled Substances Act (“CSA”). Because cannabis was not federally legal, trademark examiners were refusing federal registration of marks for cannabis products. Triggered by such indicia as marijuana leaf logos and strain names, examiners would ask specific questions about the goods offered under the mark to determine if they must refuse registration.
By contrast, the USPTO has been registering marks for ancillary goods and services as well as those that specifically exclude cannabis. Examples of “ancillary” registrations include Reg. No. 5643956 for SKUNK DOCTOR for “odor neutralizing sprays for the removal of cannabis smoke odor” and Reg. No. 5165759 for FARM TO FEELING for “providing information pertaining to the benefits of medicinal use of cannabis.” Examples of registrations that specifically exclude cannabis are Reg. No. 5662389 for DOOBIE DIRT for composts, fertilizers and soils “not for use with growing marijuana,” and Reg. No. 5556224 for WILDSEED for essential oils that exclude “goods containing cannabis and/or cannabinoids, such as but not limited to, tetrahydrocannabinols (thc), cannabinols (cbn), and/or cannabidiols (cbd).”
2018 Farm Bill
The Agricultural Improvement Act of 2018 (the “Farm Bill”) brings monumental change by removing hemp from the list of controlled substances under the CSA and legalizing its production as an agricultural commodity (subject to various regulations and licenses to grow). The Farm Bill defines “hemp” as any part of the cannabis sativa L. plant and derivatives with a THC concentration of less than 0.3% on a dry weight basis.
The Farm Bill is a marketer’s dream. The marketplace is now flooded with commercially available hemp-derived CBD products, even in states where cannabis (with higher THC concentrations) is still illegal. Restaurant chains like Protein Bar & Kitchen offer CBD oil in shakes, and CVS and Walgreens announced that they will be selling hemp-derived CBD products nationally. However, major impediments to securing federal trademark registrations for many of these products remain.
New PTO Examination Guides
Here are the most important details of the new Examination Guides:
Strong brands will be crucial in the marketing and sale of cannabis products. In addition to distinguishing products, brands also educate consumers about product quality and features. For example, consumers know that Prius cars are affordable hybrids, and Ferrari cars are expensive and fast. As the market develops, cannabis brands will take on similar attributes and become just as well known.
Obtaining federal trademark protection for brands confers important legal benefits on those seeking to build and enforce their brands. While certain products will continue to be refused registration under the new Examination Guides, opportunities exist. Profitable consumer products, like cosmetics, are noticeably absent from the “no-registration list.” Sellers of cannabis products seeking to build strong brands therefore should monitor USPTO developments, so they can strategically build their trademark portfolios.