Trademark practitioners, hemp growers and hemp-derived product manufacturers have long struggled with the clash of federal and state laws regarding protection of trademarks. Historically, the U.S. Patent and Trademark Office (USPTO) has refused registration of marks that include cannabis, hemp, CBD or other derived products on the basis that these marks were unable to have lawful use in commerce under existing federal law. These waters became even murkier after the passage of the Agricultural Improvement Act of 2018 (better known as the 2018 Farm Bill), which removed hemp from the Controlled Substances Act.
On May 2, 2019, the USPTO issued Examination Guide 1-19, outlining the agency’s policies with respect to trademarks, including legal CBD and hemp-derived goods and services since the passage of the 2018 Farm Bill. This appears to open the door for registration of marks that include legal CBD, hemp or hemp-derived products or services such as the cultivation or production of hemp.
By removing hemp from the Controlled Substances Act, the USPTO is no longer able to refuse application for legal CBD and hemp-derived products that meet this definition on the basis of “non-lawful use in commerce.” The caveat, of course, is that the goods or services included in these applications must be derived from hemp as defined in the 2018 Farm Bill and the Agricultural Marketing Act. Goods derived from cannabis that exceed 0.3% THC concentration remain illegal under federal law and are not registerable with the USPTO.
For applications filed prior to the signing of the 2018 Farm Bill that include hemp and hemp-derived products, applicants will be given the opportunity to amend the application to comply with these new policies. This includes amending the filing date (which cannot pre-date December 20, 2018) and filing basis of the application, or withdrawing the current application and refiling for compliant goods and services. The application’s recitation of goods and services must also be amended to specify that the goods included in the application contain less than 0.3% THC, limiting the scope of a resulting registration to only those goods or services compliant with federal law. Examiners will also conduct a new search of the amended application for conflicting marks, based on the new application date.
It is important to note that “even if the identified goods are legal under the CSA, not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill,” according to the USPTO’s guidance. This specifically refers to products that may separately fall under the federal Food Drug and Cosmetic Act, such as CBD or hemp-infused edible products and dietary supplements.
For applications filed prior to December 20, 2018 that include hemp cultivation or production services, applicants will need to provide trademark examiners with additional information to ensure that its production meets the requirements of the 2018 Farm Bill. Hemp producers will need to ensure that production is compliant with both the Farm Bill and local governments, which were empowered with the authority to authorize hemp production in accordance with the U.S. Department of Agriculture.
Kris Kappel is a partner in Husch Blackwell LLP’s Kansas City office and is co-vice chair of the firm’s intellectual property practice group. Tara Allstun is an associate in Husch Blackwell LLP’s St. Louis office and belongs to the firm’s technology, manufacturing and transportation industry group. Kappel and Allstun are both members of the firm’s cannabis and industrial hemp team.