On May 2, 2019 the United States Patent & Trademark Office (USPTO) issued new guidelines for businesses seeking to obtain registrations for cannabis-related marks. Any company that is in – or wants to be in – the CBD, hemp or medical marijuana business and is looking for maximum brand protection, needs to understand the new guidelines.
Here are the rules in a nutshell.
A. For any application to register a mark for use with a product derived from “marijuana” (as opposed to legal hemp), the USPTO will refuse the registration. This includes products such as CBD.
B. However, the same prohibition does not apply to products derived from legal hemp. Thus, cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA. Therefore, the USPTO will not refuse an application to register a mark for a product, if the applicant specifies that the product contains less than 0.3% THC.
C. If your company filed an application before December 20, 2018 to register a mark for a product having less than 0.3% THC content, your company will have to amend the formal “filing date” of the application to December 20, 2018 and will have to amend the application to specify that the mark will be used for CBD or cannabis products that contain less than 0.3% THC.
D. Forget about trying to register a mark for a food, beverage, dietary supplement or pet food containing CBD. That application will be refused as unlawful because the FDA forbids using CBD in such fashion.
E. For any application to register a mark for services relating to cannabis, the USPTO will refuse to register the mark if the indicated services relate to cannabis products that do not meet the 0.3% maximum THC content requirement.
F. Additionally, for applications that pertain to services involving the cultivation or production of legal hemp, the USPTO will inquire about the applicant’s authorization to produce hemp. That inquiry will require the applicant to show that the cultivation or production is allowed by the relevant state, territory or tribal government.
