There is a common misconception that trademarks for cannabis and related goods and services are not registrable at the U.S. Patent and Trademark Office (PTO). This is simply not the case. By failing to federally register trademarks with the PTO, cannabis professionals are making costly mistakes that could ultimately put their brands at risk.
On December 20, 2018, the Agriculture Improvement Act of 2018 (2018 Farm Bill) became law. The 2018 Farm Bill removed “hemp”, defined as any part of the plant Cannabis sativa L. having not more than 0.3% THC (the principal psychoactive component of cannabis) from the Controlled Substances Act’s (CSA) definition of marijuana. It is important to note, however, that not all “hemp” related goods and services are lawful following the 2018 Farm Bill. A nuanced approach is necessary to successfully register trademarks for cannabis and related goods and services.
Use Must Be Lawful
To qualify for federal trademark registration, the use of a trademark in commerce must be lawful. This means that the goods and services must comply with all applicable federal laws.
Not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Any CBD-containing or hemp-derived food or dietary supplement products may still be considered illegal if they undergo clinical investigation without FDA approval. Thus, registration of federal trademarks for many foods, beverages, dietary supplements, or pet treats containing CBD will still be refused by the USPTO as unlawful, even if derived from hemp.
Trademark Search and Opinion
The 2018 Farm Bill will undoubtedly lead to a flood of new federal trademark applications for cannabis-related goods and services. That said, a quick search of the PTO database is unlikely to find any confusingly similar marks, since before December 20, 2018, all trademarks for cannabis were unlawful, and thus unregistrable, at the PTO.
Rather than seek federal trademark protection, many applicants traditionally either obtained state trademark registrations, or simply used trademarks in states where cannabis is legal. Although the PTO cannot on its own refuse federal registration based upon common law use of an unregistered mark or trade name, the owner of an unregistered mark having priority of use could try to prevent you from federally registering your mark by filing a Notice of Opposition or Petition for Cancellation.
Given this risk, it is best practice to conduct a comprehensive trademark use and registrability search before filing a new federal trademark application with the PTO. This search will uncover any pending and registered marks at the PTO, relevant state trademark registrations, common law usage, and internet domain names.
File Federal Trademark Applications for Legal Cannabis Goods and Services
Cannabis goods and services that comply with all relevant federal laws are potentially registrable at the PTO. Nevertheless, it is likely an application filed for cannabis-related goods or services will receive an inquiry from the PTO regarding whether the goods or services identified comply with the CSA and/or the Federal Food, Drug, and Cosmetic Act (FDCA).
You can maximize your chances of successfully registering a cannabis-related trademark with the PTO and limit the costs associated with refusals by narrowly tailoring the listed goods and services to comply with federal law and PTO guidelines. For example, if your goods are derived from “hemp” as defined in the 2018 Farm Bill, the identification of goods must expressly state that the goods contain less than 0.3% THC. Accordingly, the scope of the registration will be limited to goods that are compliant with federal law.
Likewise, an applicant seeking to register a trademark in connection with “retail store services featuring marijuana” will be refused since the mark cannot be lawfully used in commerce. Specifically, the CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. Such a refusal may potentially be avoided by narrowing the scope of the application (if possible) in the following manner: “retail store services featuring topical analgesic balms; all the foregoing containing hemp extracts derived from Cannabis sativa L. with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.”
File Federal Trademark Applications for Related Goods and Services
A potential alternative approach for cannabis professionals is to file federal trademark applications for related goods and services that are legal. A review of the PTO records reveals that the following goods and services have recently been approved for publication:
- “Oral vaporizers for smoking purposes not containing marijuana or for use with marijuana” in Class 34.
- “Promoting public awareness of the positive effects of medical and recreational marijuana” in Class 35.
- “Providing a website featuring information in the field of scientific research information pertaining to medical marijuana” in Class 42.
- “Providing health information and advice and in the fields of medical marijuana, recreational marijuana, and cannabinol (CBD)” in Class 44.
Obtaining a federal trademark registration provides a registrant with nationwide rights. As such, successfully registering a trademark for related goods and services could be very valuable should cannabis eventually be legalized on the federal level.
In order to prevent refusals and reduce the costs and time associated with procuring federal trademark registrations, we recommend working with an experienced law firm that can draft applications in a manner to avoid the many pitfalls associated with cannabis-related trademark applications.
