By Shannon Nolley
Protection of trademark rights in the United States is only given to those products and services that are considered legal at the federal or state level. While individual states are allowing broader protection of cannabis and cannabidiol (CBD) products, protection at the federal level remains limited.
The 2018 Farm Bill allowed for some goods containing “hemp” to be given protection. Hemp are cannabis plants that generally contain very little tetrahydrocannabinol (THC), the mind-altering chemical found in marijuana. The Farm Bill specified that industrial hemp products would be considered legal as long as they contain no more than 0.3% THC.
As a result, the United States Patent and Trademark Office (USPTO) held that it will accept trademark applications for goods derived from hemp or cannabis plants and derivatives, including hemp-derived CBD, that contain no more than 0.3% THC on a dry-weight basis.
However, there’s a wrinkle to this story for trademark owners. The federal government’s Food and Drug Administration (FDA) has a ruling that complicates matters. Under its Food Drug & Cosmetic Act (FDCA), the FDA holds CBD to be an active ingredient in an approved drug, namely Epidiolex® (a cannabidiol) to treat epilepsy. This renders CBD to be a “drug” under the Act. As such, it becomes a violation of federal law to add this “drug” to a “food” (e.g. edibles) — even if the CBD ingredient was lawfully derived from industrial hemp under the Farm Bill’s definition.
Therefore, with these two acts considered together, while the USPTO will allow protection for certain hemp derived products, it will refuse to register trademarks for products such as CBD edibles derived from hemp because the FDA considers them to be unlawful.
Recent cases demonstrate that any trademark application for goods that are marketed as foods, dietary supplements, or nutritional supplements containing any amount of the chemical composition of CBD will be refused registration by the USPTO. This can also extend to products such as creams or oils if the PTO finds the products to be used for medicinal or therapeutic applications.
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For companies entering the developing markets of CBD and cannabis products, this poses unique – and often frustrating – issues. Applications for CBD goods are strictly scrutinized by the PTO, so it becomes even more important for trademark owners to carefully consider their products and what protections will be afforded to them in light of these regulations.
Until the federal laws related to cannabis and CBD products change, trademark owners are encouraged to build and protect their brands through use on additional products that comply with the USPTO guidelines. Items such as water bottles or apparel are common examples. Registration of marks on those products will provide some ancillary protection as brand recognition is established.
Additionally, trademark owners should consider registering their marks used with cannabis products at a state level if located in a state where those products are legal. This will at least provide some statutory protection until broader federal protection can be acquired.
It should be noted that filing a trademark application with the USPTO in anticipation of legislative changes is not recommended. A mark must be used for “lawful” purposes (with allowed goods/services) when the application is filed. If not, it will be rejected by the PTO. Several cannabis companies filed applications in anticipation of the 2018 Farm Bill, only to have them refused later. They had to refile those applications after the enactment of the Bill to maintain protection.
Gesmer’s trademark attorneys can help counsel you on the best way to protect your cannabis brand.
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