Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Since the United States Patent and Trademark Office (USPTO) released its guidelines for examining trademark applications for cannabis and cannabis-related goods and services in May 2019, the legal landscape concerning the types of goods and services for which businesses can obtain trademark protection is constantly evolving. While the USPTO will not allow applicants to register federal trademarks for goods in violation of federal law, it does allow applicants to register trademarks for cannabis and cannabis-related goods and services if their commercial use is lawful. This article examines the types of cannabis-related goods and services that can obtain trademark registration and where they can be registered.
What can be registered federally?
To determine what goods and services involving cannabis can be registered, the USPTO will analyse all federal trademark applications to make sure that they comply with the Controlled Substances Act (CSA) and the Farm Bill 2018. The Farm Bill removed hemp from the CSA's definition of 'marijuana', which allows cannabis plants and derivatives, such as CBD, which contain no more than 0.3% delta-9 THC on a dry-weight basis to no longer be controlled substances under the CSA. If an application for goods relating to cannabis or CBD concerns goods derived from hemp, the application could be granted if it specifies that the goods contain less than 0.3% THC and if the goods or services comply with other federal laws, including the Federal Food, Drug, and Cosmetic Act (FDCA).(1) However, if the identified goods contain more than 0.3% THC, the application will be denied as the goods identified will violate federal law.
Thousands of CBD and THC-related applications involving various classes and goods are pending with the USPTO. The USPTO has granted registrations involving cannabis and cannabis-related goods and services in multiple trademark classes, including the following general types of goods and services.(2)
Accordingly, if a trademark applicant's goods or services fall within the definition of 'hemp' products containing less than 0.3% THC and the goods or services comply with other federal laws, the applicant should seek to file and register its trademarks if it is currently using them or intends to use them in commerce, so that it may obtain federal protection and put others on constructive notice of its trademark rights.
State-specific registration considerations
Even if trademark applicants cannot obtain federal trademark registration for their desired cannabis-related goods or services, they may be able to obtain protection for their trademarks within certain states. Since 2012, various states have individually begun to legalise various forms of marijuana. At present, 11 states (Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, and Washington) and the District of Columbia have legalised recreational marijuana to some extent, while 22 states have legalised medical marijuana use to some extent. The states where various uses of marijuana are legal may provide trademark applicants the opportunity to register state trademark registrations for cannabis-related goods or services that are being rejected, or are likely to be rejected, by the USPTO.
For example, the California secretary of state has accepted trademark registrations for cannabis-related goods, including:
- dry cannabis flowers;
- cannabis wax;
- live cannabis flowers;
- live cannabis;
- dried marijuana;
- dried marijuana flowers; and
- dried marijuana products.
Accordingly, if a cannabis-related good or service fails to meet the requirements to obtain federal trademark registration through the USPTO, applicants may still be able to register their trademark applications in various states, depending upon the individual state's rules and regulations concerning cannabis-related goods and services.
In light of the various legal frameworks for registering cannabis-related trademarks at the federal, state and international levels, businesses and individuals which hope to obtain trademark protection for cannabis-related goods or services should file trademark applications for cannabis-related goods or services where registration is legally obtainable. That is, if an applicant is using a trademark in connection with goods or services that meet the definition of 'hemp' within the Farm Bill, and the requirements of other relevant laws, the applicant should try to apply for federal trademark protection. Applicants should also try to apply for state trademark protection where federal trademark protection is unavailable for certain cannabis-based goods or services.
Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to the trademarks if they are in use. In order to protect their rights, potential trademark applicants for cannabis-related goods should monitor USPTO guidelines relating to federal applications for those products and any applicable state trademark laws.
Endnotes
(1) The US Food and Drug Administration has released further guidelines and information concerning the FDA regulation of cannabis and cannabis-derived products, including CBD. As per the FDA, even if goods meet the definition of 'hemp' under the Farm Bill, they can still violate the law if marketed or sold to the public in ways that fall foul of the FDCA. Accordingly, trademarks for products involving THC or CBD, including dietary supplements and food (including animal food), among other goods, violate federal law and will not be federally registered at this time.
(2) The specific descriptions of goods and services in the trademark registrations specify that the goods and services are involved with a delta-9 THC concentration of no greater than 0.3% on a dry-weight basis.
