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Florida Intellectual Property Lawyer > Blog > Trademarks - Registration Issues > HEMP vs. MARIJUANA: Are my products legal under trademark law?

HEMP vs. MARIJUANA: Are my products legal under trademark law?

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Are you selling hemp, CBD, and/or Marijuana products and wondering if you qualify for a United States Trademark registration? One important standard for whether a trademark can be registered with the United States Patent and Trademark Office (USPTO) is found in a federal trademark law that states that the goods/services covered by a trademark must be legal under federal laws. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

It is well known that is it not federally legal to manufacture, distribute, dispense, or possess marijuana, regardless of the state where your goods/services are sold. Therefore, it would seem to follow that, regardless of the state where your goods/services are sold, you would not be able to register a trademark with the USPTO for cannabis-derived products. However, this is not always the case.

Understanding whether sales involving cannabis and cannabis-related goods/services is federally legal requires understanding how different federal laws relate to each other, including the Controlled Substances Act, 21 U.S.C. §§801 et seq., the Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq., and the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).

The Controlled Substances Act (CSA) and the 2018 Farm Bill

To understand what types of products you can file a trademark application for, the following terms need to be defined:

  • Marijuana is defined as “all parts of the plant Cannabis sativa L., whether growing or not, the seeds thereof, the resin extracted from any part of such plant, and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16).
  • Cannabidiol (CBD) is a chemical constituent of the cannabis plant that is encompassed within the definition of marijuana.
  • Hemp is defined as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” Section 297A.

Because it not federally legal to manufacture, distribute, dispense, or possess marijuana, the USPTO refuses registration when an application identifies goods encompassing CBD or other extracts of marijuana as sale of such goods is not a legal use of the applied-for mark in commerce.

However, the 2018 Farm Bill, which was signed into law on December 20, 2018, changed certain federal regulations relating to the production and marketing of hemp. These changes include removing “hemp” from the definition of marijuana, which means that 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.

The changes from the 2018 Farm Bill remove the CSA as a ground for refusing a trademark registration that covers CBD goods derived from “hemp.” Therefore, trademark applications filed on or after December 20, 2018, that identify goods encompassing cannabis or CBD derived from hemp (herein after “hemp”) are possibly allowed to be registered on the Principal Register.

On the other hand, 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 Federal Food Drug and Cosmetic Act (FDCA) and the 2018 Farm Bill

However, just because your goods are hemp (i.e. cannabis or CBD derived from hemp that contain less than 0.3% THC) and therefore no longer controlled under the CSA, does not mean the application is considered registerable just quite yet.

While the 2018 Farm Bill removed the definition of hemp from marijuana, the use in foods or dietary supplements of a drug or substance without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. 21 U.S.C. §331(ll). In fact, the 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA.

Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug.  21 U.S.C. § 321(g)(1).

Therefore, 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. 21 U.S.C. §331(ll).

What can I register under the FDCA and 2018 Farm Bill?

Registerable

Non-Registerable

Skin lotion and skin cream, massage lotion and face cream, body lotion and body cream, massage oil, body oil, and non-medicated lip balms, all the foregoing including hemp and CBD oil with herbal and cosmetic ingredients solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis

 

See Application Serial No. 88466759

Dietary Supplements in any form*

 

See Application Serial No. 88441555

 

*While the FDA is looking into regulating dietary supplements containing hemp derived CBD, it is currently illegal to market CBD by adding it to a food or labeling it as a dietary supplement.

Cosmetic preparations containing CBD with less than .3% THC for topical use, namely, Body lotion, Body sprays, Facial lotion, Hand lotions, Non-medicated skin care creams and lotions, Skin cream

 

See U.S. Registration No. 6212091

Beverages

 

See Application Serial No. 88466759

Lip balm; Cosmetics; Argan oil for cosmetic purposes; all of the foregoing contain CBD that is in compliance with federal law

 

See Application Serial No. 88441555

Candy (gummies, chocolate, and/or mints)

 

See Application Serial No. 88466759

Bath bombs; Shower and bath gel

 

See U.S. Registration No. 6212091*

 

*removed from registration on lack of use grounds

“Topical analgesic creams; Topical analgesics; Medicated lotions for pain relief containing CBD and containing less than 0.3% THC; Pharmaceutical skin lotions.”

 

See Application Serial No. 88470728

Plant extracts, namely, hemp oil with cannabidiol (CBD) containing less than .3% THC, used in the manufacture of vaporizer pens, non-medicated topicals, non-medicated topical oils, toothpicks, non-medicated topical salves, non-medicated topical drops for use on the skin, cosmetic topical powders, cosmetic topical liquids, and cosmetics

 

See Application Serial No. 88453602*

*abandoned on likelihood of confusion grounds

Dietary pet supplements in the form of pet treats; Dietary and nutritional supplements for animals; Dietary supplements for pets; any CBD in the all of the foregoing goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis

 

See Application Serial No. 88451641

CONSIDERATIONS FOR FILING AN APPLICATION FOR CANNABIS AND CBD PRODUCTS DEREVIED FROM HEMP AND NOT CONTROLLED BY THE FDCA

  • If an applicant’s goods are derived from “hemp” as defined in the 2018 Farm Bill and NOT controlled by the FDCA, the identification of goods must specify that they are “solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”
  • It should be stated in the description of goods (and on the product, packaging, and advertising) that the goods are not for therapeutic or medical use, nor intended to affect the structure or function of the body of humans or animals.
  • For applications that recite services involving the cultivation or production of cannabis that is “hemp” within the meaning of the 2018 Farm Bill, applicants will be required to provide statements to confirm that their activities meet the requirements of the 2018 Farm Bill with respect to the production of hemp and that the applicant is authorized to produce hemp.
  • The 2018 Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp.

It can be difficult in determining whether your goods/services are registerable with the USPTO and overcoming a Sections 1 and 45 Office Action can be complicated.  We have extensive experience in addressing office actions and dealing with proper identifications of goods.  We would be happy to schedule a free 15-minute consultation to discuss your options.  Please use the contact form on our website if you need further assistance

Author: Gabriele Fougner, Esq.

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