uspto guidelines for cbd oil

Approaching 420: cannabis trademark scene one year on from USPTO examination guidelines

Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Since the United States Patent and Trademark Office (USPTO) released its guidelines for examining trademark applications for cannabis and cannabis-related goods and services in May 2019, the legal landscape concerning the types of goods and services for which businesses can obtain trademark protection is constantly evolving. While the USPTO will not allow applicants to register federal trademarks for goods in violation of federal law, it does allow applicants to register trademarks for cannabis and cannabis-related goods and services if their commercial use is lawful. This article examines the types of cannabis-related goods and services that can obtain trademark registration and where they can be registered.

What can be registered federally?

To determine what goods and services involving cannabis can be registered, the USPTO will analyse all federal trademark applications to make sure that they comply with the Controlled Substances Act (CSA) and the Farm Bill 2018. The Farm Bill removed hemp from the CSA's definition of 'marijuana', which allows cannabis plants and derivatives, such as CBD, which contain no more than 0.3% delta-9 THC on a dry-weight basis to no longer be controlled substances under the CSA. If an application for goods relating to cannabis or CBD concerns goods derived from hemp, the application could be granted if it specifies that the goods contain less than 0.3% THC and if the goods or services comply with other federal laws, including the Federal Food, Drug, and Cosmetic Act (FDCA). (1) However, if the identified goods contain more than 0.3% THC, the application will be denied as the goods identified will violate federal law.

Thousands of CBD and THC-related applications involving various classes and goods are pending with the USPTO. The USPTO has granted registrations involving cannabis and cannabis-related goods and services in multiple trademark classes, including the following general types of goods and services. (2)

State-specific registration considerations

Even if trademark applicants cannot obtain federal trademark registration for their desired cannabis-related goods or services, they may be able to obtain protection for their trademarks within certain states. Since 2012, various states have individually begun to legalise various forms of marijuana. At present, 11 states (Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, and Washington) and the District of Columbia have legalised recreational marijuana to some extent, while 22 states have legalised medical marijuana use to some extent. The states where various uses of marijuana are legal may provide trademark applicants the opportunity to register state trademark registrations for cannabis-related goods or services that are being rejected, or are likely to be rejected, by the USPTO.

For example, the California secretary of state has accepted trademark registrations for cannabis-related goods, including:

  • dry cannabis flowers;
  • cannabis wax;
  • live cannabis flowers;
  • live cannabis;
  • dried marijuana;
  • dried marijuana flowers; and
  • dried marijuana products.

Accordingly, if a cannabis-related good or service fails to meet the requirements to obtain federal trademark registration through the USPTO, applicants may still be able to register their trademark applications in various states, depending upon the individual state's rules and regulations concerning cannabis-related goods and services.

Safeguarding trademark rights

In light of the various legal frameworks for registering cannabis-related trademarks at the federal, state and international levels, businesses and individuals which hope to obtain trademark protection for cannabis-related goods or services should file trademark applications for cannabis-related goods or services where registration is legally obtainable. That is, if an applicant is using a trademark in connection with goods or services that meet the definition of 'hemp' within the Farm Bill, and the requirements of other relevant laws, the applicant should try to apply for federal trademark protection. Applicants should also try to apply for state trademark protection where federal trademark protection is unavailable for certain cannabis-based goods or services.

Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to the trademarks if they are in use. In order to protect their rights, potential trademark applicants for cannabis-related goods should monitor USPTO guidelines relating to federal applications for those products and any applicable state trademark laws.

For further information on this topic please contact Marcella Ballard, Kristen Ruisi or Maria Sinatra at Venable LLP by telephone (+1 410 244 7400) or email ([email protected], [email protected] or [email protected]). The Venable LLP website can be accessed at www.venable.com.

Endnotes

(1) The US Food and Drug Administration has released further guidelines and information concerning the FDA regulation of cannabis and cannabis-derived products, including CBD. As per the FDA, even if goods meet the definition of 'hemp' under the Farm Bill, they can still violate the law if marketed or sold to the public in ways that fall foul of the FDCA. Accordingly, trademarks for products involving THC or CBD, including dietary supplements and food (including animal food), among other goods, violate federal law and will not be federally registered at this time.

(2) The specific descriptions of goods and services in the trademark registrations specify that the goods and services are involved with a delta-9 THC concentration of no greater than 0.3% on a dry-weight basis.

Registering Trademarks for CBD, Full Spectrum Hemp Oil, and Other Cannabinoids

The demand for cannabidiol, or CBD, has skyrocketed in the last few years and with it, a huge boom in CBD brands. However, there are still significant challenges to registering CBD brands with the United States Patent and Trademark Office.

A few highlights as you read below:

  • USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are currently (Nov. 9, 2020) being rejected by the USPTO for foods, supplements, and drugs. With some exceptions, if it is ingestible or claims to cure a medical ailment, it will likely be denied.
  • USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are assigned to a special task force within the USPTO, causing significant delays to examination.
  • Cosmetics containing CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are generally being accepted, as long as the product is derived from hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.
  • Strategies: Create a cosmetic product or create a non-CBD version of your edible product to secure trademark rights. Also, consider using the branding on a blog, informational website, and/or as an apparel/lifestyle brand and protecting those items with the USPTO.
  • Be diligent: Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.

CBD companies know that a registered trademark is a huge benefit but many encounter common issues when applying for a federal registration. The law (and the interpretation of it) is always in flux, but here are some tips when registering your CBD (and other cannabinoids or hemp-derived) products.

The Food Drug and Cosmetic Act Makes the Interstate Sale of Drugs or Foods Containing CBD Illegal

You’ve likely heard of drugs that have undergone “clinical trials” to test the medical claims being made. Under the Food Drug and Cosmetic Act (the “FDCA”), new drugs that have the same chemical make-up as drugs that have undergone clinical trials cannot be sold without first undergoing clinical trials themselves, or until the Food & Drug Administrations recognizes the drug as “safe” (often using the short-hand GRAS, or “generally recognized as safe.”)

On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved Epidiolex, a prescription formula containing CBD used for the treatment of two rare forms of epilepsy. Under the FDCA, any product intended to have a therapeutic or medical use and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals is a drug. An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA).

The FDA has further clarified that the inclusion of CBD into foods, drinks, or products that make medical claims are in violation of the FDCA and have taken actions against the sellers of the products. However, despite the FDA’s actions, there are thousands of growing CBD brands and the marketplace is prime for trademark confusion.

The USPTO has followed the FDA’s guidance and is currently denying trademark applications under Sections 1 and 45 of the Lanham Act, which requires lawful interstate commerce to qualify for federal trademark registration.

What about CBG, Full Spectrum Hemp Oil, or other Cannabinoids?

The CBD oil that most consumers think of is CBD-isolate, where a hemp plant is processed into hemp oil, and then further refined into pure, isolated CBD oil. However, there are hundreds of cannabinoids found in the hemp plant, including CBN, CBG, CBDA, and more. While CBD-isolate is the most popular, “full spectrum” and “broad spectrum” hemp oils are becoming increasingly popular. “Full spectrum” and “broad spectrum” are names for hemp oils that contain CBD, but also a variety of other cannabinoids, as opposed to just pure CBD.

Unfortunately, while these oils have not specifically been subject to clinical trials like CBD-isolate, they are still subject to the FDCA’s rule and generally regarded as illegal to sell as drugs or foods on the federal level. CBG and other cannabinoids are not “generally recognized as safe” and therefore cannot be lawfully sold in interstate commerce (a requirement for registering a trademark).

Cosmetics and Topical Applications Are Generally Allowed

In 2018, Congress passed the 2018 Farm Bill which took hemp products under 0.3% THC off the list of scheduled drugs with the Controlled Substances Act. As a result, skincare products, cosmetics, and other topical applications that contain CBD and other cannabinoids can be registered with the USPTO and enjoy nationwide federal protection.

There is an important distinction that these products cannot make medical claims – otherwise, they would be treated as a drug by the FDA under the FDCA. For some products, there is a thin line between medical claims and cosmetic claims, such as claims to prevent specific skin diseases versus treating generally “dry skin.” Each claim should be carefully reviewed by an attorney to assess the impact on a trademark application before applying.

Strategies for Registering CBD and Full Spectrum Products

In light of these restrictions, many CBD companies find themselves in uncomfortable legal limbo. There are thousands of brands all competing in the marketplace, but no clear method of preventing nationwide consumer confusion. Here are a few strategies to consider:

  • A brand owner might create a cosmetic product line alongside its ingestible CBD foods or supplements with the same name. Ultimately, the brand could then gain limited rights in those cosmetic products which may help stop a competitor from using a confusingly-similar name.
  • Create a non-CBD version of an edible product or supplement. A trademark owner might release a line of vitamins alongside their CBD supplements. If the trademark owner sells CBD brownies, perhaps they could produce a non-CBD line of brownies as well.
  • Create a blog or informational website about the benefits of CBD (that is not merely an advertisement for the products, but a functional blog). This would allow further protection of the trademark.
  • Finally, create an apparel/lifestyle brand using the trademark and protecting those items with the USPTO.

Finally, it is important to be diligent and know what your competitors are doing. Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.

New USPTO Guidance on CBD Trademarks

Feeling like you’ve seen and heard about “CBD oil” more in 2019 than ever before? That’s likely due to the passage of the Agricultural Improvement Act of 2018 (known as the 2018 Farm Act), which became law on December 20, 2018. The Farm Act removed hemp from the Controlled Substances Act’s (CSA’s) definition of marijuana . Consequently, hemp plants and their derivatives such as cannabidiol (CBD) that contain no more than .3 percent tetrahydrocannabinol ( THC) are no longer controlled substances under the CSA.

LET THE BROWNIES BAKE! Oh, wait, we’re just talking about CBD. But that’s not so bad! Business is booming in CBD, where apparently a whole bunch of anxious people are pushing a $1b industry.

All this leads us to…the U.S. Patent and Trademark Office? Exactly, because every trademark examiner is now officially a mini drug czar tasked with tracking new marijuana slang and decoding bottle and advertising references for excessive THC content. I’m not making this stuff up. The USPTO released on May 2 the Examination Guide 1-19 , which outlines how examiners will evaluate trademark applications for hemp and hemp-derived extracts and products.

Big (but not exactly clear) Picture:
  • Since hemp is no longer considered a “controlled substance,” some cannabis-related marks will be allowed to register under certain conditions.
  • Not all trademarks for CBD products will be allowed; marks for goods or services that show a clear violation of federal law will still be rejected.
How the USPTO Will Review Applications:

For trademark applications filed on or after December 20, 2018, the CSA will not be cited as grounds for refusal, but only if the goods are derived from hemp as defined under the 2018 Farm Act. In other words, if the applicant’s goods are derived from hemp, the identification of the goods must specify that they contain less than .3 percent THC.

For applications filed before December 20, 2018 and that identify goods encompassing CBD or other cannabis products, registration will be refused due to unlawful use or lack of bona fide intent to use in lawful commerce under the CSA. Basically, because the goods violated federal law at the time, those applications did not have a lawful basis to support registration at the time they were filed. Bummer.

[Note: A TESS search for “time machine” returns at least 200 files, and yet there are no time machines. What’s up with that?]

BUT, there is still a pathway for these applications to proceed. Since hemp-derived goods are now lawful, an examining attorney will provide an applicant with the option to amend its application by:

  • Abandoning the application and filing a new one;
  • Arguing against the refusal; or
  • Amending the filing date of the application to December 20, 2018.

The Rejects

The following rejected applications would still seemingly miss the mark (pun intended) under the new rules.

THC Tea — “but it’s Tea Honey Care…”

The PTO refused to register the applied-for-mark “THCTea” for tea-based beverages as ‘deceptively misdescriptive’ since consumers would likely think the drinks contained THC. The Trademark Trial and Appeal Board (TTAB) reasoned on appeal that teas could contain THC, and even though the applicant’s beverages did not, consumers would believe the misrepresentation made by the mark.

According to the applicant, THC stood for “Tea Honey Care” or “the Honey Care Tea” and noted two advertisements that explained this. However, the applicant’s demonstration of use (“specimen”) showed the mark without any accompanying wording or explanation. Additionally, the applicant failed to submit evidence indicating that consumers would likely interpret THC according to the suggested forms.

I think I’ll name this medicinal herb “PARIS OG KUSH INDICA” for avoidable of doubt…

The PTO refused to register “PARIS OG KUSH INDICA” and “HARDCORE OG KUSH INDICA” on the grounds that the marks were “deceptively misdescriptive” of “medicinal herbs.” The applicant argued that his goods “are not marijuana” and “are not derivative of marijuana in any way.” However, all of the words used describe strains of marijuana. (That is, according to the mini drug czar / trademark examiner’s review and interpretation of leafly.com.)

The applicant during prosecution argued that the goods would simply remind people of marijuana. The examiner was not persuaded, finding it far more likely instead that consumers would expect the applicant’s medicinal herbs to actually contain marijuana.

JUJU JOINTS

The PTO rejected the applied-for-marks “POWERED BY JUJU” and “JUJU JOINTS” for smokeless marijuana vaporizers due to the identified goods being illegal under federal law (the CSA again). The applicant argued that it did business only in states where marijuana use was legal under state law, and therefore the commercial activity was lawful. As you might expect by now, this argument was unsuccessful.

Basic Overview of Rejected Apps:
  • Don’t be “deceptively misdescriptive” (say that 5 times fast) — applicants can’t innuendo their way into both consumer pockets and the trademark registry.
  • Know your place – applicants filing for federal trademark protection can’t assume that their state laws legalizing to some extent marijuana use will override the CSA and other federal laws.
  • Know your product – applicants must understand the permissible framework of marks permitted by the CSA.

Potentially Acceptable Prospects

These are some examples of CBD-related applications that COULD make it through federal registration under the new guidelines — keep in mind that the rules are so new that we haven’t yet seen the effects play out. Here’s what we think could work:

CBD Oils for Humans

The guidelines state that if an applicant’s goods are derived from “hemp” as defined in the 2018 Farm Bill, the identification of goods must specify that they contain less than 0.3% THC. Commonly found consumer CBD oils for human use should be registrable.

CBD Oils for Pets
Since CBD pet oils contain less than 0.3 percent THC and are marketed as “oils” for pets, they would technically satisfy the new guidelines for registration. Note, however, that similarly formulated products marketed as pet treats would probably not qualify since foods, beverages, dietary supplements, or pet treats containing CBD may still be refused as unlawful under the Federal Food Drug and Cosmetic Act.

There are Still Nuances

This area of law is changing and progressing, and this is where we come in.

We’re here to apply these guidelines to your hemp/CBD-oriented product or service and work with you to optimize your federal and state trademark strategy.

There are many benefits to federal registration, including (but definitely not limited to) exclusive rights to use your mark in interstate commerce in connection with the goods specified, the ability to stop importation of goods bearing infringing trademarks — and even the ability to file complaints with Google and other entities for misleading advertisements filed by your competitors.

Print a stylized PDF of this article: New USPTO Guidance on CBD Trademarks

LASTLY, THIS IS NOT LEGAL ADVICE. I AM NOT YOUR LAWYER. NOTHING IN YOUR REVIEW OF THIS ARTICLE OR ACTIONS YOU TAKE IN FURTHERANCE OF IT ESTABLISHES A LEGAL RELATIONSHIP BETWEEN YOU AND ME. I PROBABLY DON’T EVEN KNOW YOU, THOUGH WHO’S TO SAY WE CAN’T BE FRIENDS? NOTHING IN THIS ARTICLE IS WARRANTED TO BE ACCURATE IN ANY WAY, AND THOUGH PRACTICALLY UNLIKELY, IT IS POSSIBLE THAT THE SUBSTANCE OF THE ARTICLE CAN KILL, HARM, MAME, OR OTHERWISE DEFEAT YOU, PARTICULARLY IF YOU ARE READING IT WHILE ON A SCOOTER. YOU SHOULD NOT RELY ON ANYTHING IN THIS ARTICLE WITHOUT INDEPENDENTLY DISCUSSING IT WITH YOUR LAWYER. YOU PROBABLY SHOULD HAVE ALREADY BEEN IN TOUCH WITH A LAWYER BEFORE READING THIS ARTICLE. LAWYERS ARE A GOOD THING – ALSO NOT LEGAL ADVICE.

About Kevin Christopher

Kevin is founder and principal of Rockridge®. Kevin’s practice areas include corporate, patent and trademark law. He is an entrepreneur, NIH RADx faculty member and Small Business Innovation Research (SBIR) reviewer. He mentors impactful and innovative founders through First Flight Venture Center, Oak Ridge National Lab Innovation Crossroads, and Tsai Center for Innovative Thinking at Yale. Kevin has been recognized as a SuperLawyer by Thomson Reuters and Top Business Leader by Conscious Company Magazine. Read more about Kevin, connect with him, and Calendly him.

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