Federal Protection for Cannabis Brands: USPTO Issues New Guidelines on CBD
On December 20, 2018, the Farm Bill of 2018 (the “Farm Bill”) was signed into law, which explicitly removed hemp and its byproducts from the definition of Marijuana, a substance prohibited by the Controlled Substances Act. This change triggered big implications for ability to protect cannabis brands nationally via federal protection afforded by registration with the United States Patent and Trademark Office (USPTO). And while hemp derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis (“hemp derived CBD”)is now legal, many were unsure on how the USPTO would practically respond to the new change in federal law. Prior to the Farm Bill, the USPTO had taken a hard stance against any cannabis products, including CBD, and would deny or postpone any applications suggesting CBD or cannabis.
On May 2, 2019, the USPTO issued Examination Guide 1-19 providing official guidance for federal trademark applications covering cannabis and cannabis derived goods and services. It’s now clear that the USPTO will allow federal trademark registrations for marks used on some hemp-based products, including those containing hemp-derived CBD, but there are important limitations. While applications covering hemp products (including CBD) produced lawfully under a state pilot program may be registerable, the guide also states that examiners may refuse hemp derived CBD products on the grounds that those products are deemed unlawful based on guidance from the Federal Drug Administration (FDA). Under the Farm Bill, the FDA maintained authority to regulate certain products containing cannabis and cannabis related compounds – namely food, beverages, dietary supplements or pet treats containing CBD (irrespective of how derived), which the FDA still deems as illegal under the Federal Food, Drug, and Cosmetic Act. Citing the FDA’s stance, the USPTO has indicated that it will not allow the registration of foods, beverages, dietary supplements or pet treats containing hemp-derived CBD.
The change in the USPTO policy is an important one, as it provides potential registration opportunities to cannabis brands which have historically been prohibited from protecting their trademarks on a federal level. Applications, however, will need to be carefully considered and drafted in order to conform to new USPTO guidelines. In addition, the FDA may soon be changing its stance, as it’s holding a public meeting on May 31 to explore pathways for legally selling and marketing food and dietary supplements containing cannabis, including hemp- derived CBD. If and when the FDA changes its position, the change could open opportunities for widespread protection of hemp-derived CBD products – a major win for cannabis companies looking for national protection of their brands.
Are you a cannabis or CBD company looking to register your trademarks? Contact SK&S intellectual property attorney Christina Saunders at Saunders@skandslegal.com or 303-396-0270. Christina has extensive experience representing both small cannabis companies and publicly traded cannabis companies (Canada) on intellectual property matters and brand management.