Currently, more than 10 states have legalized marijuana for recreational use and more than 15 have decriminalized recreational marijuana. It all started with Colorado and Washington in 2012.
However, at the federal level, the Controlled Substance Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.
Unfortunately, since the United States Patent and Trademark Office (USPTO) is a federal agency and as such must follow federal law and regulations, you cannot obtain a federal trademark registration for goods or services that are not lawful pursuant to federal law. This because use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act.
For example, if the mark in question include or involve the sale, distribution, delivery or dispensing of marijuana, marijuana-based preparations, marijuana extracts, or the like, regardless of whether is legal in your state, the mark will be rejected.
The 2018 Farm Bill, signed into law on December 20, 2018, amended the Agricultural Marketing Act of 1946 (AMA) and changed certain federal authorities relating to the production and marketing of “hemp,”. “These changes include removing “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.” Cannabis and CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) still violate federal law.
On May 2, 2019 the USPTO issued new examination guidelines for marks for cannabis and cannabis-related goods and services.
For applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are derived from “hemp.”
However, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Such goods may also raise lawful-use issues under the Federal Food Drug and Cosmetic Act (FDCA). For example, the use in foods or dietary supplements of a drug or 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.Therefore, registration of marks 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.
In the case of service marks, when applications recite services involving cannabis-related activities, they will be examined for compliance with the CSA and the 2018 Farm Bill. Such service marks for companies involved in manufacturing, distributing, dispensing, or possessing cannabis “the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because such services still violate federal law”.
For trademark 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.”
Again, if the items or activities that the mark is intended to be used in connection with are unlawful, actual lawful use in commerce is not possible and there can be no bona fide intent to lawfully use the mark in commerce. Thus, the USPTO will refuse registration of your mark.
Another option is to file for trademark protection at the state level. However, such venue of protection will be limited to states where to states that have legalized marijuana whether for recreational or medicinal use.
I’d like to help by advising you on how to better protect your marijuana brand and other intellectual property rights in the U.S. and overseas.
Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney
Augusto Perera, P.A.
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Coral Gables, FL 33134
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E: ap@tmmiami.com
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