Since passage of the Farm Bill in 2018, thousands of trademark applications for cannabis-related goods waited for examination by the U.S. Patent and Trademark Office (“USPTO”). This was due to the USPTO’s uncertainty related to the Farm Bill’s impact on federal trademark protection, and in turn caused a great amount of uncertainty in the cannabis industry.
Thankfully, on May 2, 2019, the USPTO issued an Examination Guide setting forth the standards for examining applications directed to trademark applications for cannabis-related goods moving forward.
This article discusses how the USPTO has applied the May 2019 Examination Guide and provides filing strategies for trademarks for cannabis-related goods.
Food and Beverages are Not Registrable
As discussed in the May 2019 Examination Guide, even if the identified goods are legal under the Controlled Substances Act (CSA), not all goods for CBD or hemp-derived products are lawful following the Farm Bill. Specifically, such goods may raise lawful-use issues under the Federal Drug and Cosmetic Act (FDCA). The FDCA prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added certain drug or biological products for which substantial clinical investigations have been instituted and made public. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA).
Over the past two months, the USPTO has consistently refused registration of any mark seeking to register cannabis-related goods for foods and beverages. In fact, a review of the USPTO records reveal that the following goods have been refused registration because they are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA:
International Class 5:
- Candy, medicated;
- Multi-vitamin preparations;
- Dietary supplements;
- Nutritional supplements; and
- Herbal tinctures for medical purposes.
International Class 30:
- Candy; and
International Class 32:
- Energy drinks;
- Non-alcoholic drinks; and
- Sports drinks.
Body Creams, Electronic Cigarette Liquid, and Oral Vaporizers May Be Registrable
To qualify for federal trademark registration, the use of a mark in commerce must be lawful. On December 20, 2018, the CSA was amended to remove “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 definition of marijuana.
Over the past two months, the USPTO has consistently found that body cream, electronic cigarette liquid, and oral vaporizers are potentially registrable at the USPTO if the goods (1) do not consist of foods and beverages; and (2) are derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis.
A review of the USPTO records reveal that the following goods have been approved for publication:
- Skin cream; hand cream; body cream; all of the foregoing CBD-containing goods derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis.
- Electronic cigarette liquid (e-liquid) comprised of essential oils; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; all of the foregoing CBD-containing goods derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis; and
- Oral vaporizers for smokers; oral vaporizers for smokers containing hemp with none of the foregoing derived from industrial hemp with a delta-9 THC concentration of not more than 0.3% on a dry weight basis or comprised of cannabidiol (CBD).
Request for Information
In an effort to permit proper examination of applications, the USPTO has also required applicants to submit additional information. For example, the USPTO has required applicants to provide fact sheets, brochures, advertisements, and/or similar materials relating to the goods. In addition, the USPTO has, on occasion, required applicants provide written responses to some of the following questions:
- Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?
- If the answer to Question 1 is “yes,” does the hemp used or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?
- If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
- If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.
- Do or will the goods include cannabidiol (CBD)?
- If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
- Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?
The failure to respond to a request for information is a ground for refusing registration at the USPTO.
Given the issues discussed above, there are many pitfalls involved with filing trademark applications and responding to office actions for cannabis-related goods. Despite this fact, the USPTO has been fairly consistent in holding that cannabis-related goods are potentially registrable, so long as they (1) fall under the definition of “hemp” as defined by the 2018 Farm Bill and (2) do not consist of foods and beverages.