By Jessica F. Gonzalez, Esq., Partner, Moyeno Gonzalez & Associates
The United States Patent and Trademark Office (the “USPTO”) has finally broken its silence on the examination of marks for hemp and hemp related goods and services post the 2018 Farm Bill. Earlier this month, on May 2, 2019, the USPTO released Examination Guide 1-19 providing clarity on the type of cannabis applications the USPTO will accept following the passage of the 2018 Farm Bill on December 20, 2018, which removed Hemp from the Controlled Substance Act’s (“CSA”) definition of marijuana. What does the passage of the 2018 Farm Bill mean for your trademark?
Lawful Use of a Mark in Commerce
In the United States, ownership of a mark is predicated on lawful in commerce which essentially means comporting with federal law when selling your goods and services.
With regards to the cannabis industry, the USPTO relies on the following federal laws when making their determination as to whether a mark complies with the “lawful use in commerce” requirement:
- Controlled Substances Act, 21U.S.C. §§801 et seq.,
- Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq., and
- Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).
Under the CSA, “marijuana” is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin.” Prior to the 2018 Farm Bill, hemp was included in the CSA’s definition of marijuana making hemp and its derivatives an illegal schedule 1 drug. The passage of the 2018 Farm Bill removed Hemp from the CSA’s definition of marijuana meaning hemp plants and its derivatives such as Cannabidiol (CBD) that contain no more than 0.3% of THC on a dry-weight basis are no longer considered a schedule 1 drug under the CSA.
Before 2018 Farm Bill: Prior to the 2018 Farm Bill, use of a trademark in connection with hemp/hemp derivative goods/services were considered unlawful use in commerce and therefore the USPTO rejected trademark registrations for same.
After 2018 Farm Bill: Fast forward to the current day and use of a trademark in connection with Hemp/Hemp derivative goods/services are considered lawful use in commerce and the USPTO is now accepting the application for same, with some caveats discussed below.
Examination of Applications Filed Pre And Post Farm Bill.
For applications filed on or after December 20, 2018 trademark applications may be granted only if the application explicitly identifies that the hemp derivative goods stated in the description of goods/services is derived from hemp and contains less than .3% of THC as defined in the 2018 Farm Bill.
For applications filed before the 2018 Farm Bill that identify goods/services encompassing hemp or hemp derivatives, registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA. However, the USPTO will provide the applicant with the option of amending the filing date and filing basis of the application to overcome the CSA refusal.
Options for Amending Your Application (Pre 2018 Farm Bill Applications)
If you had filed a trademark application prior to December 20, 2018, for Hemp/Hemp derivative goods, you will have the following options to amend your application to overcome a CSA refusal:
- Amend the filing date of the application to December 20, 2018.
- If the application was originally based on the use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), you will be required to amend the basis to intent to use the mark in commerce under Section 1(b), 15 U.S.C. §1051(b).
- Amend the identification of goods to specify that the CBD or hemp products contain less than 0.3% THC.
Please note that should you choose to amend your application the examining attorney will need to conduct a new search of the USPTO records for conflicting marks based on the later application filing date.
In lieu of amending the application, you will also have the following options:
- Abandon your trademark application and file a new application or
- Respond to the refusal by submitting evidence and arguments against the refusal.
Hemp/Hemp Derivative Marks That Will Be Refused Registration
Not so fast—not all trademarks encompassing hemp/hemp derivative goods/services will be able to move forward with federal trademark registration. While we’ve discussed two very important federal laws and amendments—the CSA and the 2018 Farm Bill, we cannot forget the other federal law the USPTO must comply with, the Federal Food Drug and Cosmetic Act (FDCA). The 2018 Farm Bill explicitly preserved the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA. CBD is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations. Therefore, registration for the following goods containing CBD will be refused registration pursuant to the FDCA even if derived from hemp: Foods, Beverages, Dietary supplements, Pet Treats.
How About Hemp/Hemp Derivative Services?
For applications that recite services involving the cultivation or production of cannabis that is “Hemp” within the meaning of the 2018 Farm Bill, the examining attorney will also issue inquiries concerning the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm that their activities meet the requirements of the 2018 Farm Bill with respect to the production of hemp. The 2018 Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of Hemp.
Looking to the Future: “Marijuana” (as defined in the CSA)
The guidance issued by the USPTO is important not only for owners of hemp goods and services but also for owners of marijuana goods and services. Prior to May 2, 2019, there was little to no insight as to how the USPTO would treat trademark applications for marijuana goods and services should marijuana become federally legal. Once marijuana is removed from the CSA, the USPTO will have to recognize trademark applications for marijuana goods and services. The USPTO’s treatment of hemp and hemp derivative trademark applications gives owners a glimpse as to how the trademark process would roll out, i.e. date of first use would be the day marijuana became federally legal, applications would require amendments and changes to the application filing basis. I predict however, the USPTO will generally have a tough time reconciling marijuana trademark applications for a multitude of reasons to be discussed in the next article.
In her current role as Partner at Moyeno Gonzalez, Jessica F. Gonzalez, Esq. assists cannabis clients navigate the legal cannabis industry in both New Jersey and New York. She, along with her partner, Rosemarie Moyeno Matos, provide counsel to cannabis clients from the start-up stage through the cannabis license application stage and beyond. Interested parties can contact Jessica at email@example.com.
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