Federal trademark registrations are now possible to obtain for some hemp-related trademarks. The U.S. Patent and Trademark Office’s (USPTO) recent guidance, Examination Guide 1-19 “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” issued on May 2, 2019 (Guide 1-19), clarifies the procedure for examining applications for marks covering cannabis and cannabis-derived goods and services in light of the Agriculture Improvement Act of 2018, Pub. L. 115-334 (also known as the “2018 Farm Bill”). Guide 1-19 does not change the requirements for obtaining a trademark registration, but instead explains that hemp-related federal trademark registrations (in certain instances) are not barred as a matter of law.
Until recently, the USPTO categorically denied registration of trademarks covering cannabis-related products or services deemed unlawful under the Controlled Substances Act (CSA). (See our articles discussing the same here, here, and here.) The 2018 Farm Bill has since legalized the production and marketing of “hemp.” Hemp is defined as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” 2018 Farm Bill, § 297A. Guide 1-19 explains that the 2018 Farm Bill removed “hemp” as a controlled substance under the CSA.
The 2018 Farm Bill does not legalize hemp-related products across the board. As Guide 1-19 explains, other statutes, such as the Federal Food Drug and Cosmetic Act (FDCA) and federal agencies such as the U.S. Food and Drug Administration (FDA), may limit the legal use of hemp-related products. Guide 1-19 makes clear that registration of marks for “foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.” (Emphasis added) (citing 21 U.S.C. §331(II)).
The USPTO has provided certain requirements that must be met for a hemp-related trademark to be eligible for federal trademark registration. The USPTO is allowing applicants the ability to amend earlier filed trademark applications to meet these requirements.
Requirements for eligibility
Derived from “hemp.” The USPTO clarified that the 2018 Farm Bill potentially removed the CSA as a ground for refusal of registration, but only for goods that are derived from hemp (less than 0.3 percent THC on a dry weight basis).
December 20, 2018. Hemp-related trademarks are eligible for federal trademark protection if they have a filing date and date of first use on or after December 20, 2018. December 20, 2018, the day that the 2018 Farm Bill became public law, is the first date that the USPTO recognizes legal use of hemp and hemp-derived products.
Contains less than 0.3% THC. Identification of goods and services for hemp-related products must explicitly state that the products “contain less than .3% THC on a dry-weight basis.”
Not illegal for other reasons. The USPTO is not claiming that everything falling within the definition of hemp is legal. Instead, Guide 1-19 explains simply, that one ground for refusal of hemp-related trademarks, i.e., the CSA, has potentially been removed by the 2018 Farm Bill. Thus, the identified goods and services may still be barred from federal trademark eligibility for other reasons. For example, the FDCA stands in the way of registration of marks for goods containing CBD.
Meet the requirements of the 2018 Farm Bill (Services). For applications that identify services involving cultivation or production of hemp, the applicant will be required to provide affirmative statements that their activities meet the requirement of the 2018 Farm Bill. For example, the 2018 Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government.
Applications filed before December 20, 2018
The USPTO has offered three options for applications filed before December 20, 2018.
Amend. The USPTO is allowing applicants the ability to amend their applications to conform with the requirements laid out in Guide 1-19.
- Applicants may request to amend the filing date of their application to December 20, 2018. The applicant must specifically state for the record that the change is being authorized. Of course, this would result in a later filing date.
- For applications based on use in commerce under § 1(a) of the Trademark Act, the applicant will be required to amend the basis to intent to use under § 1(b) of the Trademark Act.
- Applicants will be required to amend the identification of goods and services to state that the products “contain less than .3% THC on a dry-weight basis.”
Abandon and refile: As an alternative, an applicant can abandon their application and refile. This, however, would provide the application an even later filing date. Such a later filing date may present issues for trademark applicants.
Respond: Always an option, an applicant can respond to the stated refusal. This, of course, may be fruitless if the application covers goods or services that are unlawful for other reasons. Not all cannabis-related (i.e., non-hemp) trademarks are unregistrable, however. For example, services that are tangential to the cannabis industry and do not “touch the plant” may be eligible for registration. (See here, for our discussion of U.S. WEED CHANNEL and registrations related to Weed Maps.)
The USPTO is likely to see a flood of hemp-related trademark applications. Those operating in the hemp field should think and act quickly if they want to file trademark applications in order to obtain the earliest priority date and avoid potential headaches down the road.