Navigating Cannabis Trademarks: Federal and State Considerations
Despite cannabis still being classified as a Schedule I controlled substance under federal law, recent legislative changes have paved the way for limited cannabis trademarks in the United States. With the passage of the 2018 Farm Bill, industrial hemp and its derivatives have been removed from the Controlled Substances List, leading to significant updates in the trademark landscape. Below, we explore the intricacies of trademarking cannabis-related goods and services, the impact of the Farm Bill, and how businesses can secure intellectual property rights in this evolving space.
Trademarking a Schedule I Drug: Historical Context
Federal law requires that a trademark be used lawfully in commerce to qualify for federal registration under the U.S. Trademark Act TMEP § 907. Historically, this has been a barrier for cannabis trademarks, as marijuana remains a Schedule I controlled substance, making its possession, distribution, and cultivation illegal under federal law.
As a result, the United States Patent and Trademark Office historically refused registration for trademarks associated with marijuana and its derivatives, except for ancillary products and services, such as clothing, lighters, and websites. However, the 2018 Farm Bill changed the game by removing hemp (cannabis with no more than 0.3% THC on a dry-weight basis) from the Controlled Substances List. In response, the USPTO issued Examination Guide 1-19 in May 2019, providing guidelines for evaluating trademarks for hemp-derived goods and services.
Examination of Cannabis and Cannabis-Derived Goods
Post-2018 Farm Bill Applications
For trademark applications filed on or after December 20, 2018, the Farm Bill potentially removes the Controlled Substances Act (“CSA”) as a ground for refusal if the goods are derived from hemp. However, applicants must explicitly state that the goods contain no more than 0.3% THC on a dry-weight basis.
Pre-2018 Applications
Trademark applications filed before December 20, 2018, covering hemp-derived goods, can be amended to align with the Farm Bill. This may involve changing the filing date to December 20, 2018, and amending the basis from “use in commerce” to “intent to use” under the Trademark Act. Despite these options, not all hemp-derived products are lawful; the Federal Food, Drug, and Cosmetic Act (“FDCA”) continues to regulate goods containing hemp, which may present additional hurdles.
Goods Compliance
While the CSA may no longer bar registration for certain hemp products, compliance with other federal laws, such as the FDCA, remains critical. Businesses must ensure their goods meet all legal requirements before pursuing federal trademark protection.
Services Involving Cannabis and Cannabis Production
The USPTO maintains a strict stance on services involving marijuana (cannabis with more than 0.3% THC), refusing registration for activities that violate the CSA. For services involving hemp, applications must demonstrate compliance with the 2018 Farm Bill and regulations established by the U.S. Department of Agriculture (“USDA”). Applicants may be required to provide proof of state or tribal authorization for hemp cultivation and production.
State Trademark Registration for Cannabis Marks
In states where cannabis is recreationally legal or medically permitted, cannabis-related trademarks can often be registered at the state level. State registrations offer several benefits, including:
– Public Notice: Establishing the mark holder’s rights within the state.
– Legal Remedies: Providing a basis for infringement lawsuits under state law.
State-specific trademark applications must be filed with the relevant state trademark office. Each state has unique requirements, so it’s essential to consult the appropriate state resources. [Find information about your state’s trademark office here.
The Importance of Expert Guidance
Securing a cannabis trademark requires navigating complex legal frameworks, including federal and state laws, the Farm Bill, and the FDCA. The process is intricate, and errors can delay or jeopardize registration. Working with an experienced attorney increases your chances of obtaining a successful trademark registration.
At Holon Law Partners, we specialize in cannabis trademarks and intellectual property protection. Contact us today to schedule a consultation and learn how we can help you secure your cannabis-related brand.
Jay Kotzker is the firm’s Intellectual Property Practice Group lead. He regularly counsels clients on nationwide brand development and protection strategies in the cannabis, hemp, and consumer products categories. Jay can be reached at jkotzker@holonlaw.com
