On May 2, 2019, the United States Patent and Trademark Office (USPTO) released Examination Guide 1-19. This guide serves as the USPTO’s new policy for reviewing products and services derived from industrial hemp.
The Examination Guide clarifies the procedures used by the USPTO to examine marks used in connection with cannabis and cannabis-derived goods and services. Additionally, it distinguishes such marks from products and services involving industrial hemp under the 2018 Farm Bill.
In order to qualify for federal trademark registration, an applicant’s use of that mark must abide federal law. The USPTO will reject applications that show a clear violation of federal law, regardless of the legality of the products or services under state law. For the cannabis industry, products and services involving cannabis or cannabis-adjacent use demonstrate clear violations of the Controlled Substances Act (CSA).
The 2018 Farm Bill and Hemp Trademark
The 2018 Farm Bill signed into law on Dec. 20th, 2018. With its passage, “hemp” is removed from the CSA’s definition of marijuana. This allows for the lawful production, processing, and marketing of hemp and hemp derived products. In addition, this includes federally lawful Cannabidiol (CBD) products and services.
As the U.S. hemp industry matures, thousands of new hemp brands will soon flood the market. With more brands competing in this emerging industry, it’s only a matter of time before we see a rise in trademark infringement claims between competing businesses.
Anticipating these changes, the USPTO established guidelines for processing trademark applications concerning hemp goods or services. For any hemp or CBD trademark applications filed on or after Dec. 20th, 2018, the USPTO will not cite the CSA as grounds for registration refusal. However, an application is only eligible if the products at issue are derived from hemp.
Hemp Trademark Registration Refusal
If an applicant can’t demonstrate that the product originates from federally legal sources, their cannabis or CBD trademark application is still subject for rejection based on the CSA. Registration is refused for any pending applications filed before Dec. 20th, 2018.
Up until the 2018 Farm Bill, applicants could not posess bonafide intent to use the mark in lawful commerce. Luckily, if you submitted your application prior to Dec. 20th, the USPTO will allow applicants to amend the application’s filing date to Dec. 20, 2018.
While this is an exciting development for the hemp industry, applicants should know that not all hemp or CBD products/services are lawful under the 2018 Farm Bill. Any products or services seeking federal registration still must comply will all federal laws.
Currently, most CBD products raise several other lawful-use concerns under federal law. For example, using CBD as a dietary supplement or food additive without undergoing a clinical investigation could result in investigation by the U.S. Food and Drug Administration (FDA).
The Future of Industrial Hemp Programs
While the 2018 Farm Bill created a legal path for operators to cultivate industrial hemp, state hemp regulatory programs are currently developing in several states. This will make it difficult for several applicants to demonstrate that their products/services are currently derived from federally legal sources.
If you anticipate developing cannabis or hemp trademark protection for your business, Cannabis Legal Group is here to help. Our experienced attorneys can help you structure your brand strategy to anticipate and develop protection options in this emerging industry.