Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

Understanding How the USPTO’s Examination Guide for Cannabis Marks Impacts CBD Products

Author: Daniel T. McKillop

Date: June 23, 2020

Key Contacts

Back

While the USPTO updated its cannabis trademark guidance in the wake of the 2018 Farm Bill, it didn’t give the green light to all CBD-related trademarks…

While the U.S. Patent and Trademark Office’s (USPTO) updated its cannabis trademark guidance in the wake of the 2018 Farm Bill, it didn’t give the green light to all CBD-related trademarks. As highlighted by a recent decision by the Trademark Trial and Appeal Board (TTAB), legal hurdles still remain.

Understanding How the USPTO’s Examination Guide for Cannabis Marks Impacts CBD Products

2018 Farm Bill and Cannabis Marks

As discussed in greater detail in prior articles, the 2018 Farm Bill removed “hemp” from the Controlled Substances Act’s (CSA) definition of marijuana, which means that cannabis plants and derivatives that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA. The significant legal change forced the USPTO to revise its wholesale refused to register cannabis-related marks based on the fact that it was illegal under federal law.

Last year, the USPTO issued a new examination guide titled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill (Examination Guide). As the USPTO acknowledged in the Examination Guide, determining whether commerce involving cannabis and cannabis-related goods and services is lawful now requires consultation of the CSA, the Federal Food Drug and Cosmetic Act (FDCA), and the 2018 Farm Bill. With regard to the examination of marks for cannabis and cannabis-derived goods, such as CBD, the USPTO advises that hemp-derived goods that comply with the 2018 Farm Bill are now eligible for federal trademark protection. However, for a trademark application to be approved, the identification of goods must specify that they contain less than 0.3% THC.

Accordingly, the USPTO makes it clear that its new guidance only applies to goods derived from hemp. “Cannabis and CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) still violate federal law, and applications encompassing such goods will be refused registration regardless of the filing date,” the Examination Guide states.

The USPTO further emphasizes that even if the identified goods are legal under the CSA, such goods may still raise lawful-use issues under the FDCA. Accordingly, 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, because they may not be introduced lawfully into interstate commerce.

TTAB Rejects CBD Mark

The new USPTO Examination Guide means that many marks associated with products containing CBD can now be protected. However, as a Colorado cannabis company learned, there are still restrictions.

The TTAB recently ruled that Stanley Brothers Social Enterprises LLC (Stanley) can’t register the mark “CW” for its hemp oil extract because the product can’t legally be sold in commerce. While the CBD in the product is considered industrial hemp, the product runs afoul of the Food, Drug & Cosmetics Act (FDCA) because the “hemp oil extracts” are food to which CBD has been added. The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….”

In reaching its decision, the TTAB rejected Stanley’s counterarguments that the 2014 Farm Bill’s Industrial Hemp Provision exempted it from the cited provision of the FDCA and that its goods do not fall within the cited prohibition because they are “dietary supplements” rather than food. “Applicant’s argument that the Industrial Hemp Provision exempts it from this portion of the FDCA is misplaced,” the order states. “The Industrial Hemp Provision permits authorized entities to “grow or cultivate industrial hemp” under certain circumstances, but it does not permit the distribution or sale of CBD in food when CBD is the subject of clinical investigation, even if the CBD is derived from industrial hemp which falls outside the CSA.”

The TTAB also rejected the argument that CBD falls within an FDCA exception for drugs or biological products “marketed in food … before any substantial clinical investigations involving the drug or the biological product have been instituted.” In support, the TTAB cited “substantial clinical investigations” by the FDA.

Based on the foregoing, the TTAB affirmed the Examining Attorney’s unlawful use refusal based on the FDCA. “The Examining Attorney has established a per se violation of the FDCA, because: Applicant’s goods are food to which has been added a drug (CBD); substantial clinical investigations of CBD have been instituted, and the existence of these investigations has been made public; and there is no evidence of record that CBD was marketed in food before the substantial clinical investigations of CBD were instituted,” the TTAB order states. 

Key Takeaway

The recent TTAB decision highlights that cannabis companies still face hurdles when seeking to protect their intellectual property. While the 2018 Farm Bill was a significant step forward, it legalized only a specific segment of hemp-related products and, thus, many cannabis products are still ineligible for federal trademark protection.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Dan McKillop, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.

This article is a part of a series pertaining to cannabis legalization in New Jersey and the United States at large. Prior articles in this series are below:

Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Corporate Transactions: Best Practices for Successful Deals post image

Corporate Transactions: Best Practices for Successful Deals

Corporate transactions can have significant implications for a corporation and its stakeholders. For deals to be successful, companies must act strategically to maximize value and minimize risk. It is also important to fully understand the legal and financial ramifications of corporate transactions, both in the near and long term. Understanding Corporate Transactions The term “corporate […]

Author: Dan Brecher

Link to post with title - "Corporate Transactions: Best Practices for Successful Deals"
How to Conduct a Fair and Legal Employee Termination in 2025 post image

How to Conduct a Fair and Legal Employee Termination in 2025

Ongoing economic uncertainty is forcing many companies to make tough decisions, which includes lowering staff levels. The legal landscape on both the state and federal level also continues to evolve, especially with significant changes to the priorities of the Equal Employment Opportunity Commission (“EEOC”) under the Trump Administration. Terminating an employee is one of the […]

Author: Angela A. Turiano

Link to post with title - "How to Conduct a Fair and Legal Employee Termination in 2025"
Admin Dissolution for Annual Report: What You Need to Know post image

Admin Dissolution for Annual Report: What You Need to Know

While filing annual reports may seem like a nuisance, failing to do so can have significant ramifications. These include fines, reputational harm, and interruption of your business operations. In basic terms, “admin dissolution for annual report” means that a company is dissolved by the government. This happens because it failed to submit its annual report […]

Author: Dan Brecher

Link to post with title - "Admin Dissolution for Annual Report: What You Need to Know"
What Is Antitrust Litigation Law? post image

What Is Antitrust Litigation Law?

Antitrust laws are designed to ensure that businesses compete fairly. There are three federal antitrust laws that businesses must navigate. These include the Sherman Act, the Federal Trade Commission Act, and the Clayton Act. States also have their own antitrust regimes. These may vary from federal regulations. Understanding antitrust litigation helps businesses navigate these complex […]

Author: Robert E. Levy

Link to post with title - "What Is Antitrust Litigation Law?"
Dissolving Your Business: Essential Legal Steps to Protect Your Interests post image

Dissolving Your Business: Essential Legal Steps to Protect Your Interests

If you’re considering closing your business, it’s crucial to understand that simply shutting your doors does not end your legal obligations. Unless you formally dissolve your business, it continues to exist in the eyes of the law—leaving you exposed to ongoing liabilities such as taxes, compliance violations, and potential lawsuits. Dissolving a business can seem […]

Author: Christopher D. Warren

Link to post with title - "Dissolving Your Business: Essential Legal Steps to Protect Your Interests"
The Role of Corporate Restructuring in Mergers & Acquisitions post image

The Role of Corporate Restructuring in Mergers & Acquisitions

Contrary to what many people think, corporate restructuring isn’t all doom and gloom. Revamping a company’s organizational structure, corporate hierarchy, or operations procedures can help keep your business competitive. This is particularly true during challenging times. Corporate restructuring plays a critical role in modern business strategy. It helps companies adapt quickly to market changes. Following […]

Author: Dan Brecher

Link to post with title - "The Role of Corporate Restructuring in Mergers & Acquisitions"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!