Selected Developments in Business Law – Agribusiness Committee Issues An eBulletin Discussing Cannabis Registration Guidance By The U.S. Trademark Office

Courtesy of CEB, we are bringing you selected legal developments in areas of California business law that are covered by CEB’s publications.  This month’s feature is from the April 2019 update to Counseling California Corporations.  References are to the book’s section numbers.  See CEB’s BLS Landing Page for special discounts for Business Law Section members. 

On May 2, 2019 the USPTO released its Examination Guide 1-19, Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill, which aims to clarify the procedure for examining marks for cannabis and cannabis-derived goods and for services involving cannabis and cannabis production following the 2018 Farm Bill. The Guide discusses federal trademark office examination of applications for trademarks and services marks for which the claimed goods include cannabis or cannabis-derived goods such as cannabidiol (“CBD”).

The Guide explains that CBD is a constituent of cannabis encompassed within the definition of marijuana under the Controlled Substances Act (CSA), 21 U.S.C. §802(16) and that the USPTO therefore refuses registration when an application identifies goods encompassing CBD or other extracts of marijuana, which are unlawful under federal law and do not support valid use of the applied-for mark in interstate commerce.

However the big news is that, pursuant to the terms of the 2018 Farm Bill which removes hemp (defined as cannabis containing no more than 0.3% THC on a dry-weight basis under Section 297A) from the CSA, the USPTO will no longer refuse registration for applications filed on or after December 20, 2018 for goods derived from “hemp” if the application identification of goods specified that they contain less than 0.3% THC, thus limiting the scope of the resulting registration to goods which are compliant with federal law. For applications filed before December 20, 2018, registration will be refused due to unlawful use or lack of bona fide intent to use in lawful commerce under the CSA (such applications not having valid basis to support registration as of the filing date because the goods violated federal law). Those applications claiming lawful hemp-derived goods containing less than 0.3% THC will be given the option to amend the filing date to December 20, 2018 and filing basis to overcome a CSA refusal.

The Guide points out that CBD or hemp-derived products used in food or dietary supplements is regulated under the Federal Food Drug and Cosmetic Act (FDCA) and 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. 21 U.S.C. §331(ll). Applications covering services involving cannabis or cannabis production must likewise be compliant with the CSA and 2018 Farm Bill, i.e., the services must involve hemp containing less than 0.3% THC and the application filing date and basis must be amended accordingly. Applicants are advised that USPTO Examining Attorneys are authorized to issue informational inquiries regarding applicants’ authorization to produce hemp, and applicants may be required to provide additional statements of record regarding compliance with the 2018 Farm Bill.

This article was prepared by Christopher J. Passarelli (chrisp@dpf-law.com) of Dickenson Peatman & Fogarty, in Napa, CA, and republished by the Agribusiness Committee.