U.S. Trademark Registration Update
There are many questions—and strong opinions—surrounding cannabis trademarks and use. With the recent elections, more states have approved recreational marijuana and medical marijuana. Yet, such use may still be illegal at the federal level. The Supremacy Clause to the U.S. Constitution states that federal law controls to the extent there is conflict with state law.
Under the Controlled Substances Act (CSA), cannabis is classified as a Schedule I substance and thus it prohibits the manufacture, distribution, dispensation, and possession of marijuana. Does that surprise you?
The U.S. federal government could interfere with state licenses for use of cannabis, but the federal government has limited interference in recent times.
One of the biggest issues for new cannabis companies is branding and the protection of a brand. While the industry grows and competition increases, branding becomes vitally important. So how can a cannabis company brand and protect their brands?
The U.S. Patent and Trademark Office (USPTO) Examination Guide still refuses registration of trademarks for foods, beverages, dietary supplements, or pet treat containing hemp-derived CBD because such are not yet approved by the U.S. Food and Drug Administration (FDA). Thus, it seems that the USPTO is not approving ingestibles?
A recent case before the Trademark Trial and Appeal Board (TTAB – a federal venue for legal actions as to registrability of marks, cancellations, and objections) is In re: Stanley Brothers Social Enterprises, LLC, Serial Number 86568478 (TTAB June 16, 2020). This was a Colorado case for “dietary and nutritional supplements.” In this application, the Examining Attorney refused registration on the basis that applicant’s goods were unlawful per the Federal Food, Drug & Cosmetics Act (FDCA). The applicant appealed and the TTAB affirmed the decision of the Examining Attorney. The basic rule is that one cannot register a U.S. trademark for an unlawful use.
Yes, there are lots of laws and regulations that cannabis advocates cite. On December 18, 2018, the 2018 Farm Bill excluded “hemp” from the definition of illegal “marijuana.” Case closed? No. The FDCA has continued to prohibit the distribution or sale of any food containing a drug or biological product that is subject to substantial clinical investigations. CBD, even if derived from hemp, is still the subject of such clinical investigations.
The applicant argued that the product was dietary supplements and not food. This was rejected.
It is interesting that the FDCA has not approved the use of hemp-derived CBD in food or food supplements. Therefore, such products are considered to be illegal under federal law and no U.S. registrations can be granted for such uses. We note that the FDA has not prohibited other products like cosmetics (subject to some restrictions on labeling, etc.).
In summary, at the current time, the USPTO will not approve a registration for a U.S. trademark for products containing hemp-derived CBD for foods, beverages, dietary supplements, or pet treats.
What to do?
Some applicants are utilizing a legal product (not containing hemp-derived CBD) and filing for a trademark. Then, when hemp-derived CBD is legalized, the strategy would be to file for an expanded federal registration using the same name. However, there is no guaranty that the new filing can be expanded to include the hemp-derived CBD goods. Some applicants are not truthful and simply describe their product as candy or whatever and do not disclose the use of hemp-derived CBD. This is obviously not an ethical approach.
One can still apply for state trademarks if the use is legal in that state. The protection is limited to the state where it is registered.
If the product is hemp-derived CBD, it can be used for other products and you will see those products on the shelves of most stores. These products generally must contain no more that 0.3 percent concentration of delta-9 THC. The USPTO will register marks for other goods with applications submitted after December 20, 2018, the date of the 2018 Farm Bill. The USPTO will ask many questions and require compliance with FDA and the FDCA requirements.
Currently, the USPTO will still not register a mark containing hemp-derived CBD for foods, beverages, dietary supplements, or pet treats since these uses are still considered illegal at the federal level. Stay tuned.