August 29, 2019

Federal Trademark Protection for Products Containing Hemp-Derived Cannabidiol (CBD)

by Stites & Harbison, PLLC

As more states begin legalizing marijuana, there remains substantial tension with federal law, under which marijuana is illegal. Many trademark applicants have been unable to federally register the brands they use in connection with such goods because they are illegal under federal law and thus are not eligible for federal trademark protection. However, now that the federal government has legalized hemp, the USPTO can issue registrations for marks used with hemp, hemp-derived CBD, and related goods and services within the parameters of the USPTO’s examination guide.

The Controlled Substances Act prohibits the manufacture, distribution, dispensing, or possession of marijuana. The 2018 Farm Bill carved out hemp and hemp-derived CBD from the terms “marihuana” and “tetrahydrocannabinol” in the Controlled Substances Act.

Hemp and hemp derived products are defined in the 2018 Farm Bill as:

the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis

The Farm Bill effectively made growth and possession of hemp legal, when done in compliance with a federally approved State plan.

This prompted the USPTO to issue a new examination guide to clarify the procedure for examining applications for trademarks used in connection with cannabis and cannabis-derived products in the wake of the 2018 Farm Bill. The USPTO will continue to refuse registration of marks for use with cannabis or cannabis-derived products unless those products are hemp or hemp derivatives compliant with federal law. For cannabis-related trademark applications filed before the 2018 Farm Bill was signed into law (December 20, 2018), the USPTO will provide applicants with an opportunity to amend the filing date to no earlier than December 20, 2018, amend the basis of the application (if necessary) to intent-to-use (rather than in-use), and amend the identification of goods and services to be compliant with federal law, if possible. Amending the identification of goods and services to be compliant with federal will most likely mean specifying that such goods contain less than .3% THC. At that point, the examining attorney will conduct a new search in light of the amended filing date. Alternatively, applicants may choose to abandon their original application and file a new application that conforms to the requirements set forth in the examination guide.

While hemp is now legal under the Controlled Substances Act, the use of hemp-derived CBD as a drug, cosmetic, dietary supplement, or in foods, beverages, or pet treats in interstate commerce is subject to FDA regulatory authority. The Farm Bill preserved the FDA’s authority to regulate hemp-derived products. The FDA is of the opinion that a hemp-derived CBD product that may be classified as a drug, dietary supplement, or food/beverage/animal feed in interstate commerce requires pre-market approval from the FDA. Only marks used with such products that have pre-market approval are then lawfully in interstate commerce and thus eligible for federal trademark protection. Therefore, producers of dietary supplement, food/beverage/animal feed products containing hemp-derived CBD are generally unable to avail themselves of the same intellectual property protections afforded to other businesses without going through additional steps. A business with sufficient interest could comply with FDA requirements to obtain pre-market approval where necessary, and subsequently apply for federal trademark protection for the associated mark.

However, purely cosmetic products containing hemp-derived CBD are not required to have pre-market approval and marks used with such goods may be eligible for federal trademark protection. Federal trademark protection may also be available for hemp-derived CBD products outside the scope of the FDA’s regulatory regime.

The present rules could change since the FDA is currently determining how to regulate non-drug uses of hemp-derived CBD. Legal advice should be obtained to help determine if a hemp-derived CBD product falls within the scope of FDA regulated products, how the hemp-derived CBD product may be advertised and sold, and the type of intellectual property strategy best suited to protect the hemp-derived CBD product.