Some hemp-based products may qualify for registration
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.
Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal. This could arguably 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 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 due to its high potential for abuse, attributable to the psychoactive effects of delta-9-tetrahydrocannabinol (THC). But the 2018 Farm Bill changed certain federal laws and regulations concerning the production and marketing of “hemp.” Those changes included removing hemp from the Controlled Substances Act’s definition of marijuana, which means that hemp that contains 0.3% or less of THC on a dry-weight basis, and its derivatives, such as CBD oil, are no longer considered controlled substances. That change allows brand owners to federally register trademarks for hemp-based products and services that meet the new guidelines.
However, the 2018 Farm Bill explicitly preserved the Food and Drug Administration’s authority to regulate certain products containing cannabis or cannabis-derived compounds. 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 foods and nutritional supplements containing hemp-derived CBD oil, absent FDA approval.
USPTO Examination Guide 1-19 for examining cannabis marks states that trademark “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.”
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.
Federal Trademark Options
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, clothing that features cannabis-related trademarks and educational, informational and podcast services about medical marijuana, cannabis and CBD oil.
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-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 mark or a confusingly similar mark for running pants because that would likely confuse consumers as to the source of the running shoes and running pants. 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.
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 those 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 could arguably believe that informational services about medical marijuana and the medical marijuana itself 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.
Roger Bora is a partner at Thompson Hine LLP and a former USPTO trademark attorney. He focuses on international trademark and intellectual property laws, is a speaker on IP topics and is the creator of the Trademark Titan Blog.