We have updated our learning page that summarizes the U.S. trademark application process here. Specifically, that page offers a step-by-step summary and links to podcasts for in-depth learning.
With COVID-19 drastically changing the workplace and business landscape in 2020, we have experienced a significant increase in inquiries from start-ups and entrepreneurs about the U.S. trademark registration process and thus an increase in demand for our trademark services.
Based on those many calls, many that included conversations about misconceptions of trademark rights, we have updated the learning page about the U.S. trademark application process.
How to Protect Cannabis Trademarks. With the recent exception of certain hemp-based products and services, the U.S. Patent and Trademark Office (USPTO) does not grant trademark registrations for marks for marijuana/cannabis products and services that “touch” the plant because use of trademarks must be lawful under federal law for federal trademark registration eligibility.How to Protect Cannabis Trademarks
Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal and arguably also preserve trademark rights for future geographic and product and service expansion under the same registered mark for “related” goods and services that are unlawful as of the trademark application filing date, but later become lawful, including Cannabidiol (CBD) infused foods and marijuana itself.
Marijuana vs. Hemp – What’s the Difference?
Marijuana is currently listed as an illegal Schedule I drug under the Controlled Substances Act (CSA) due to its high potential for abuse attributable to the psychoactive effects of delta-9- tetrahydrocannabinol (THC). how to protect cannabis marks
Hemp has historically been grown for its strong fibers used for industrial purposes, including for making fabrics and rope. There is a significant difference between marijuana and hemp with respect to THC concentration. While marijuana can reach THC levels of 30%, THC levels in hemp are typically 0.3% or less. Furthermore, CBD is derived primarily from the hemp plant. How to Protect Cannabis Trademarks
2018 Farm Bill Removes Hemp from the Definition of Marijuana
The 2018 Farm Bill changed certain federal laws and regulations concerning the production and marketing of “hemp.” Those changes included removing hemp from the CSA’s definition of marijuana, which means that hemp and its derivatives, such as CBD, that contain 0.3% or less of THC on a dry-weight basis are no longer considered controlled substances. That recent change allows brand owners to federally register trademarks for hemp-based products and services that meet the new guidelines.
Food and Drug Administration (FDA) Still Regulates Certain Hemp-Derived Products
However, the 2018 Farm Bill explicitly preserved the FDA authority to regulate certain products containing cannabis or cannabis-derived compounds. Because CBD is an active ingredient in the FDA-approved drug Epidiolex, FDA regulation does not allow the active ingredient CBD to be introduced lawfully into any foods or dietary substances absent FDA approval. Thus, not all hemp-derived products that contain 0.3% or less of THC are lawful because some may still violate the federal Food, Drug and Cosmetic Act (FDCA), including human foods, animal foods and nutritional supplements containing hemp-derived CBD.
USPTO Examination Guide 1-19 for examining cannabis marks states that:
“[r]egistration 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.” How to Protect Cannabis Trademarks
FDA guidelines indicate that hemp seeds, hemp seed protein powder and hemp seed oil may be used in human foods, as long as they comply with other requirements, since those three ingredients have been generally recognized as being safe by the FDA.
For those companies that fail to comply with FDA requirements… beware that the FDA monitors and investigates the sale of products that violate FDA laws, including CBD products promoted for therapeutic uses and treating diseases. When the FDA detects such violations, it may send warning letters to the violating parties as a first step in the enforcement process.
On December 20, 2018, the then FDA Commissioner Scott Gottlieb, M.D. made the following statement on that point:
We’ll take enforcement action needed to protect public health against companies illegally selling cannabis and cannabis-derived products that can put consumers at risk and are being marketed in violation of the FDA’s authorities. The FDA has sent warning letters in the past to companies illegally selling CBD products that claimed to prevent, diagnose, treat, or cure serious diseases, such as cancer. Some of these products were in further violation of the FD&C Act because they were marketed as dietary supplements or because they involved the addition of CBD to food. How to Protect Cannabis Trademarks
Federal Trade Commission (FTC) also Regulates False & Misleading Product Claims, including CBD Product Claims
In a recent letter to a company selling CBD products, the FTC send a joint letter with the FDA, and portions of that letter state the following:
In addition, it is unlawful under the FTC Act, 15 U.S.C. § 41 et seq., to advertise that a product can prevent, treat, or cure human disease unless you possess competent and reliable scientific evidence, including, when appropriate, well-controlled human clinical studies, substantiating that the claims are true at the time they are made. More generally, to make or exaggerate such claims, whether directly or indirectly, through the use of a product name, website name, metatags, or other means, without rigorous scientific evidence sufficient to substantiate the claims, violates the FTC Act.
The FTC is concerned that one or more of the efficacy claims cited above may not be substantiated by competent and reliable scientific evidence. The FTC strongly urges you to review all claims for your products and ensure that those claims are supported by competent and reliable scientific evidence. Violations of the FTC Act may result in legal action seeking a Federal District Court injunction or Administrative Cease and Desist Order. An order also may require that you pay back money to consumers.
You should take prompt action to correct the violations cited in this letter. Failure to promptly correct violations may result in legal action without further notice, including, without limitation, seizure and/or injunction. How to Protect Cannabis Trademarks
Although many companies believe that CBD products have become legal under the 2018 Farm Bill and under certain laws, they still fail to recognize that there are regulatory authorities that still regulate those activities and failure to follow those regulations can result in federal agency legal action.
U.S. Patent and Trademark Office Campus
Federal Trademark Registration Guidelines for Cannabis Marks
Although marijuana products and services (those that “touch the plant”) and certain hemp-based products are currently illegal under federal law, making their associated marks ineligible for federal trademark registration protection, there are still cannabis-related activities that are legal and eligible for federal trademark registration. Examples of products and services include: foods and supplements featuring hemp seed oil, educational, informational and podcast services about medical marijuana, cannabis and CBD oil, and clothing that feature cannabis-related trademarks.
If a trademark application is filed for goods or services that violate federal laws, including for marijuana products and/or services or certain products that feature CBD, such as foods and nutritional supplements, the USPTO Examiner should refuse the application. Furthermore, filing an “intent-to-use” trademark application cannot obviate that refusal.
What does that mean? It means that filing a trademark application based on an “intent to use” the trademark “in the future” in anticipation of federal law legalizing cannabis still violates current law (the law as of the application filing date), and thus the application should be rejected because the applicant does not and cannot have a “bona fide intent” to use the applied-for mark for a legal purpose.
USPTO Guidelines for Marijuana & Hemp Products-Key Takeaways
You’ll Need to Navigate this Slippery Slope
Trademark registrations for marijuana and marijuana by-products, including CBD oil derived from marijuana, are unavailable.
Trademark registrations for certain hemp products are available. If an applicant’s goods are derived from hemp, as defined in the 2018 Farm Bill, the identification of goods must specify that they are derived from hemp and that the products contain less than 0.3% THC. Thus, the scope of the resulting registration will be limited to goods compliant with federal law.
Trademark applications covering certain CBD-infused products, including foods, beverages, dietary supplements and pet foods, are still refused, even if derived from hemp, because such goods may not be introduced lawfully into commerce without FDA approval.
The USPTO is currently approving trademarks for skin care preparations and cosmetics that feature hemp ingredients, including CBD oil derived from hemp, as long as the application complies with the 2018 Farm Bill and USPTO filing requirements.
If a pending application’s filing date is prior to December 20, 2018 (the effective date of the 2018 Farm Bill), the applicant must amend the filing date to a date later than December 20, 2018 before the application may proceed. Once the date has been amended, a new search is conducted for any prior pending confusingly similar marks.
Trademark applications for hemp cultivation and production, if allowed, will require proof of authorization and licensure in accordance with a plan approved by the U.S. Department of Agriculture. How to Protect Cannabis Trademarks
“Likelihood of Consumer Confusion” Standard and Why it Matters
If brand owners secure federal trademark registration protection for marks for legal activities, those trademark registrations and rights may arguably preserve future geographic and product and service expansion under the same registered mark for “related” goods and/or services that later become lawful, which could include CBD oil-infused foods and marijuana itself.
That is because trademark law protects consumers from “source confusion.”
For example, if a brand owner adopts the trademark N-DuraRun for running shoes, another party may not adopt the same or confusingly similar mark for running pants because consumers would likely be confused as to the source of the running shoes and running pants if offered under the same trademark by different parties. It is not confusion as to what a consumer is buying (“I thought I was buying running shoes, but I mistakenly purchased running pants.”). Rather, it is confusion as to the source of the products (“I purchased EnDuraRun brand running pants because I thought they were made by the company that makes N-DuraRun brand running shoes!”).
A question to ask is whether the average consumer would reasonably believe that the parties’ respective goods or services are of the type that would originate from the same source. If yes, and if the parties’ respective marks are confusingly similar, there may be a likelihood of consumer confusion as to the source of the parties’ respective goods.
Let’s plot a course for “smooth sailing”
As an example within the cannabis space, consider a company that provides informational services about medical marijuana. If it secures a federal trademark registration for those services, that registration and rights may arguably preserve the brand owner’s right to use and register the same mark for “related” goods and services, which could include marijuana products if they become legal, because the average consumer would arguably believe that informational services about medical marijuana and medical marijuana would originate from the same source.
As companies prepare for the potential federal legalization of all forms of cannabis, securing federal trademark registration now for brand names for goods and services that are currently legal is vital for protecting company assets, current and future business opportunities and future geographic expansion, and it is possible as long as brand owners understand the current regulatory landscape and the intricacies of trademark law.
Other Forms of Intellectual Property Protection
In addition to trademark and federal trademark registration protection, there are other intellectual property protections available for marijuana, hemp and cannabis businesses, including:
State trademark filings. In states that have legalized cannabis, state trademark registrations may be available.
Common law trademark rights. Common law (unregistered) trademark rights may be available.
Patent protection. Patent protection may be secured for various inventions, including plants, such as new strains of the cannabis plant, and methods of cannabis hydration and lighting.
Trade secrets. Trade secrets can protect certain aspects of a business, including formulas, processes or methods, that are not generally known or reasonably ascertainable by others and that can help a business obtain an economic advantage over competitors or customers. To be eligible as trade secrets, however, a business owner must take the necessary steps to legally protect them or they will be lost.
Copyrights. Copyright protection may be secured for certain company creative works, including trademark logos (artwork), written materials, photographs and software.
Conclusion
As the laws governing the cannabis industry continue to evolve, including trademark, FDA and banking laws and regulations, all interested parties, including cannabis business owners, law firms and investors, must stay abreast of the rapidly changing legal landscape to maximize business growth opportunities, ensure proper legal and regulatory compliance, and avoid having their businesses go up in smoke.
The music contained in this podcast is only a portion of the original; to hear the full version click here
How to Protect Cannabis Trademarks
Disclaimer: This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear at www.TrademarkTitan.com
With COVID-19 drastically changing the workplace and business landscape in 2020, we have experienced a significant increase in inquiries from start-ups and entrepreneurs about the U.S. trademark registration process and thus an increase in demand for our trademark services.
Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal and arguably also preserve trademark rights for future geographic and product and service expansion under the same registered mark for “related” goods and services that are unlawful as of the trademark application filing date, but later become lawful, including Cannabidiol (CBD) infused foods and marijuana itself.
