May 3, 2019

USPTO Issues New Guidance Regarding Cannabis Related Trademarks

On May 2, 2019, the United States Patent and Trademark Office released an examination guide entitled “Examination of Marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill.” This guide provides important points for applicants for certain cannabis related goods and services.

Cannabis related trademark applications have typically been tripped up by the “use in commerce” requirement. The USPTO has stated that “use in commerce” means use in lawful commerce.  Aside from some rare exceptions, the Controlled Substances Act generally prohibits interstate commerce of marijuana and marijuana related goods, including all parts of the plant Cannabis sativa L. Due to the federal prohibition, the Trademark Office has refused to register marks that are intended to be used on marijuana related goods and services on the basis that this is not a valid use in lawful commerce.

Hemp is a cannabis related product that has been cultivated for industrial use, including as a fiber in the textile industry. In part, the 2018 Farm Bill endeavored to allow production of hemp products that otherwise would have been prohibited under the CSA’s definition of marijuana. To this end, the 2018 Farm Bill defined hemp as any part of the Cannabis sativa L. plant and any derivatives thereof, that do not contain more than 0.3% of THC on a dry weight basis. The Farm Bill also removes hemp from the CSA definition of marijuana.

To accommodate this change in the law, the Trademark Office is providing the following guidance for trademark applications for hemp goods and services:

For hemp related goods:

  • Applications filed on or after December 20, 2018:  Trademark applications for hemp and hemp related products will likely be allowed, provided the identification of goods specifies that the goods contain less than 0.3% of THC.
  • Applications before December 20, 2018:  Trademark applications for hemp and hemp related products will be given the option to modify the filing date of the application to December 20, 2018. Applications that identify an in-use basis under Section 1(a) will be given the option to amend the basis to intent-to-use under Section 1(b). Applicants will also have to amend the identification of goods to specify that the goods contain less than 0.3% of THC.
  • Importantly, the USPTO reminds applicants that despite these changes, not all “hemp” products will be allowed. Specifically, the Farm Bill did not remove hemp from the Food, Drug and Cosmetic Act. Thus, applications for hemp related food and beverage or supplements will also be examined for compliance with FDA regulations.

For hemp related services:

  • Applicants will be given the options regarding amending the service mark application as discussed above.
  • For applications related to hemp cultivation or production, Applicants will need to provide evidence regarding their authorization to cultivate hemp (e.g., governmental license and approval).

Finally, hemp may now be a lawful use in commerce, but other forms of cannabis or cannabis related goods are still prohibited under the CSA and will not satisfy the “lawful use in commerce” standard.

It is advisable that Applicants for hemp related goods and service should discuss the specific nature of their business with a trademark attorney and see whether an application can be maintained in light of the new guidance.

The examination guide can be found on the USPTO website.