USPTO issues Examination Guidelines for Post-Farm Bill Examination of Trademarks for Cannabis and Cannabis-Related Goods and Services

      

After months of uncertainty regarding how the U.S. Patent and Trademark Office (“PTO”) was going to be handling trademark applications that recite cannabis-related goods and services following the enactment of the 2018 Farm Bill, the PTO issued Examination Guide 01-19 on May 2, 2018 to provide some guidance for trademark applicants and trademark attorneys moving forward.

Prior to the enactment of the 2018 Farm Bill, the PTO typically refused registration of any trademark application the basis that use of a mark in connection with anything relating to cannabis was a violation of the federal Controlled Substances Act (CSA), and therefore, the mark was not in lawful use in commerce (nor could the applicant have had a bona-fide intent to use such mark in lawful commerce).

However, on December 20, 2018, 2018 Farm Bill was signed into law and amended the CSA to remove hemp from the definition of marijuana, and thus cannabis plants and derivatives (most notably CBD) that contain no more than 0.3% tetrahydrocannabinol (THC) on a dry-weight basis are no longer controlled substances under the CSA.

For trademark applications filed on or after December 20, 2018 which identify cannabis-related goods (including CBD), the 2018 Farm Bill now removes the CSA as a ground for refusal of registration so long as the goods are derived from “hemp.” Nonetheless, the PTO will require the identification of goods to specify that they contain less than 0.3% THC so that the goods set forth in the trademark application are compliant with federal law.

However, for applications filed before December 20, 2018 that identify goods encompassing cannabis-related products or CBD, registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA on the date the application was filed. The PTO maintains that such pre-Farm Bill applications did not have a valid basis to support registration at the time of filing because the goods violated federal law at the time.

However, because the goods are now potentially lawful if they are derived from “hemp” and contain less than 0.3% THC, the PTO will be allowing applicants the option of amending the filing date and filing basis of the application to overcome the CSA as a ground of refusal.  Applicant’s will have to specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. If the application was originally filed based on Section 1(a) use-in-commerce, then applicants will have to amend the basis to instead be based on Section 1(b) intent to use – presumably followed by a subsequent filing of an amendment to allege use. [Comment – this is what the Examination Guideline states regarding use-in-commerce , but I’ve personally reached out to the PTO regarding this point as it seems that if the applicant is amending the filing date, but the applicant can claim use-in-commerce as of that December 20, 2018 filing date, then why can’t the applicant leave the application basis as Section 1(a) use-in-commerce based on the new filing date … to be continued.]

Applicants will also be required to amend the identification of goods to specify that the CBD or cannabis products contain less than 0.3% THC. The PTO also appears to be recommending that in lieu of amending the filing basis, applicants could simply abandon its old application and file a new one.

However, even though cannabis-related goods may now be legal under the CSA, the PTO notes that not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Most notably, the use of CBD in foods or dietary supplements may still violate the Federal Food Drug and Cosmetic Act on the basis that the use of a drug or substance undergoing clinical investigations (as CBD currently is since it is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations) without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. The 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA. Thus, registration of trademarks 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.