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How has the U.S. Patent and Trademark Office Applied New Examination Guidelines for Cannabis-Related Goods?

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:

Class 3:

  • 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.

Class 34:

  • 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.

Joshua Goldberg

Joshua Goldberg

Joshua B. Goldberg is the Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer and works extensively with the firm’s Trademark department. Mr. Goldberg’s practice involves portfolio management and analysis, including the preparation, prosecution, and acquisition of U.S. and foreign patents across a wide range of technology areas. Mr. Goldberg has had a recent focus on patent and trademark issues related to cannabis products and has helped navigate clients through the options available for protecting the same.

Howard W. Kline is the Trademark Department Manager at Nath, Goldberg, and Meyer. Mr. Kline’s practice involves all aspects of trademark, unfair competition, and copyright law. He counsels clients on the availability and registration of trademarks and secures trademark registrations in the U.S. and throughout the world. Mr. Kline also represents clients in matters before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

Practice Areas

Mr. Goldberg’s practice areas include:

Patent Estate Development, both in the U.S. and Internationally
U.S. and International Patent Application Drafting and Prosecution for Chemical, Pharmaceutical, and Biotechnology Innovations
Technology Evaluation and Positioning
Legal and Scientific Research and Analysis regarding Patentability, Patent Validity, Enforceability, and Freedom to Operate
Licensing, Acquisitions, Divestitures, and Joint Ventures
The Preparation, Filing, and Management of Oppositions Before the European Patent Office

Professional Profile

Mr. Goldberg received his practical scientific experience while performing research and development for Particle & Coating Technologies, Inc. During this stage of his career, Mr. Goldberg was responsible for the development, design, and experimental creation of various pharmaceutical delivery systems.

While in law school, Mr. Goldberg commenced his career in Intellectual Property law as a law clerk at NGM. Mr. Goldberg earned his U.S. Patent and Trademark Office Registration Number in 1998, and was admitted to the Bar of the Commonwealth of Virginia in 1999.

Mr. Goldberg has been actively practicing patent law at NGM since 1997. He has prepared and prosecuted numerous patent applications for both international and domestic clients in a wide variety of technology areas. His current practice places a particular emphasis on the chemical, pharmaceutical, biotechnology, and mechanical art areas. He also advises corporate, university, and independent clients in such areas as the development of offensive and defensive patent portfolios, the preparation of patent enforceability and invalidity opinions, and in freedom to operate searches and analysis

Mr. Goldberg is an elected Manager of the Chemical Society of Washington chapter of the American Chemical Society. He is also a member of the American Intellectual Property Law Association (AIPLA) and the Chemical Practice Subcommittee of AIPLA, the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), the Jewish Federation, the U.S. Patent Office’s Chemical and Biotechnology Customer Partnership, and other professional organizations.

Mr. Goldberg received his J.D. degree from The George Washington University (1999) and his B.S. degree in Chemical Engineering with a minor in Environmental Engineering from Washington University in St. Louis (1996). Mr. Goldberg is registered to practice before the U.S. Patent and Trademark Office and is admitted to practice before the Bars of the Commonwealth of Virginia and the District of Columbia. Mr. Goldberg is also admitted to practice before the Court of Appeals for the Fourth Circuit, and the Superior and Inferior Courts of the Commonwealth of Virginia.

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