Trademarks for Cannabis, Hemp, and CBD Products
by Susan Basko, esq.
Trademarks for cannabis and hemp products are extremely limited. I have seen quite a number of applications for trademarks, even made by lawyers, that will surely be rejected as they are assigned to an examiner. I saw an application today that has about 5 lawyers from one law firm listed; apparently none of them bothered to research the law before filing the application. The application seeks trademark registration on CBD oil used as a dietary supplement; the Trademark Office has specifically stated it cannot register trademarks for any CBD product sold as a dietary supplement. What will happen? The trademark examiner will run the lawyers through a long series of inquiries and then will reject the application. It will be about a year or more until the clients will find out they are not getting a registration. That whole process will most likely cost the clients tens of thousands of dollars. The whole thing is a shame because the Trademark Office has been very clear and forthright about how it is handling trademark applications on marijuana and CBD products.
These are the facts as they stand today. It's not a pretty picture, but this is what it is:
US Trademarks follow federal law. All cannabis and THC products are illegal under the federal Controlled Substances Act (CSA), and so trademarks are refused on any such products or services with regard to those products. Even if medical or recreational marijuana or THC is legal in a State, it is illegal under federal law, and so the US Trademark Office will refuse to register a trademark. Trademarks are also refused on any goods that are considered "drug paraphernalia," which is interpreted very broadly. Drug paraphernalia is defined and examples listed below.
The 2018 Farm Bill removed cannabis products from the CSA if they are considered hemp products, meaning they have less than 0.3% THC on a dry weight basis. This means that CBD (cannabidiol) products that derive from hemp and have less than 0.3% THC are no longer illegal under the CSA -- however, they might still be illegal under the Federal Food Drug and Cosmetic Act (FDCA). The FDCA prohibits CBD products that are food, beverages, dietary supplements, or pet treats from being in commerce, and therefore, trademarks are refused on these products - since they cannot legally be in commerce.
CBD products that are food, beverages, dietary supplements, or pet treats are illegal under federal law and so cannot get a US registered trademark.
The FDA states that it has only approved one CBD product as a drug treatment for two rare forms of epilepsy. The FDA has not approved any other CBD product for treatment for any other illness or condition. The FDA states it is inquiring regarding the
safety of CBD products and lists liver injury and other potential hazards.
At this time (early 2020), the US Trademark Office WILL REFUSE to register a trademark on the following goods or services:
- Marijuana, Marijuana extract, or THC as goods, even if the sale is legal in the State in which it is being sold and even if it is medical marijuana.
- Goods related to marijuana, such as vaporizers, and any "drug paraphernalia," which is listed below.
- Services related to these goods, such as a marijuana store, delivery services, growing services.
- CBD (cannabidiol) containing more than 0.3% THC.
- Any CBD product containing less than 0.3% THC if it is a food, beverage, dietary supplement, or pet treat. This would include such things as CBD gummies, drinks containing CBD, CBD capsules or oil to be taken as a supplement, or pet treats containing CBD.
SO, WHAT CBD PRODUCTS ARE LEFT THAT CAN GET A REGISTERED TRADEMARK? Possibly CBD oil that contains less than 0.3% THC that is not meant to be ingested and about which no medical claims have been made. I do not know yet of any trademark that has been registered in this category, but that seems to be the only possibility.
Trademarks also cannot be registered on "drug paraphernalia," which is defined by the federal Controlled Substances Act as:
"The term "drug paraphernalia" means any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under this subchapter. It includes items primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana, cocaine, hashish, hashish oil, PCP, methamphetamine, or amphetamines into the human body, such as—
(1) metal, wooden, acrylic, glass, stone, plastic, or ceramic pipes with or without screens, permanent screens, hashish heads, or punctured metal bowls;
(2) water pipes;
(3) carburetion tubes and devices;
(4) smoking and carburetion masks;
(5) roach clips: meaning objects used to hold burning material, such as a marihuana cigarette, that has become too small or too short to be held in the hand;
(6) miniature spoons with level capacities of one-tenth cubic centimeter or less;
(7) chamber pipes;
(8) carburetor pipes;
(9) electric pipes;
(10) air-driven pipes;
(11) chillums;
(12) bongs;
(13) ice pipes or chillers;
(14) wired cigarette papers; or
(15) cocaine freebase kits.
(e) Matters considered in determination of what constitutes drug paraphernalia
In determining whether an item constitutes drug paraphernalia, in addition to all other logically relevant factors, the following may be considered:
(1) instructions, oral or written, provided with the item concerning its use;
(2) descriptive materials accompanying the item which explain or depict its use;
(3) national and local advertising concerning its use;
(4) the manner in which the item is displayed for sale;
(5) whether the owner, or anyone in control of the item, is a legitimate supplier of like or related items to the community, such as a licensed distributor or dealer of tobacco products;
(6) direct or circumstantial evidence of the ratio of sales of the item(s) to the total sales of the business enterprise;
(7) the existence and scope of legitimate uses of the item in the community; and
(8) expert testimony concerning its use.
(f) Exemptions
This section shall not apply to—
(1) any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items; or
(2) any item that, in the normal lawful course of business, is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory.
ANALYSIS AND SUMMARY
First, remember that it is not necessary to have a registered trademark to create and use a trademark. USE of a mark to denote the source of a good or service is how trademarks are created. You can do that without any registration! Therefore, while the US Trademark Office will refuse registration on trademarks on goods and services that are illegal under federal law, if you are in a State where it is legal to sell marijuana or CBD products, you can use the trademarks of your choice. Be sure to create your trademark words or images/ logos that are creative and original and that do not infringe on anyone else's trademarks. You may want to create a file of evidence of your use of the trademark, in case the federal law ever changes. Then you will have proof you have been using your trademark, where and when you have been using it.
It will be interesting to watch and see if marijuana and CBD-based businesses will try to prevent other such businesses from infringing on their unregistered trademarks using State law claims. Within a State where marijuana and/or CBD sales are legal, it seems likely that businesses will try to prevent each other from "stealing" their names, logos, slogans, etc.
Some other States also register trademarks for goods and services being sold within their States. These in-state trademarks seem ideally suited to the situation involving marijuana and CBD products, where the US Trademark Office simply will not register trademarks, even if the goods or services are legal in the State. But, keep in mind, a State trademark provides protection from infringement from within the State, not in other states. However, since marijuana businesses are State-specific, there is less likelihood that buyers will confuse similarly-sounding businesses in other states. Still, you might want to choose your trademarks carefully to make them original and unique, even from those used by businesses in other states. ALSO, you may want to choose trademarks that fit the general rules of the US Trademark Office, so that you will be able to register your mark with the Feds if and when the rules change.
I used to think of State trademarks as useless and foolish in this day of the internet. I now see how the State trademark registries could be quite useful when a good or service is refused trademark registry by the US Trademark Office.
So, a solid trademark plan could be:
1. FEDERAL TRADEMARK? Find out if your good or service is eligible for a US Trademark. If it is a marijuana good or service, it is not eligible for a US Trademark. If it is a CBD (with less than 0.3% THC) good or service, it is not eligible for US Trademark if it is a food, beverage, dietary supplement, or animal treat. If your good or service is eligible, create a unique and original trademark that does not conflict with any existing trademarks and apply to register it at the US Trademark Office. Keep in mind, registration is a process that takes about 18 months and has many facets to it. A trademark registration for a CBD product will require a great deal of interaction between the trademark examiner and your lawyer. The trademark examiner is required to engage in a series of inquiries regarding all applications for trademarks on CBD products or for other potentially illegal goods or services, where the potential illegality appears on the face of the application.
2. STATE TRADEMARK? If your goods or services are not legal under federal law, but if they are legal under State law, check and see if your State registers trademarks. Create a trademark or service mark that is unique and original and does not conflict with any already-existing trademarks, and apply to register it with your State. If you create a trademark that meets the other requirements of US Trademarks, then you will be set to apply to register with the US Trademark Office if and when the laws change.
3. USE IT ANYWAY! If you find you cannot register your trademark federally or in-state, you can still use it! You can create brand awareness with the name and/or symbol you use to denote the source of your goods and services, and you can do that without registering anything at all. Just do a solid search to be sure you are not infringing on anyone else's trademark.
4. Get a trademark lawyer. Don't try to do this on your own. What I have written here is complicated, and it is the tip of the iceberg. Trademark law is very complicated! In the case of trademarks on marijuana and CBD products, a trademark inquiry involves not just the extremely complex trademark law, but also the Controlled Substances Act (CSA) and the Food, Drug, and Cosmetics Act (FDCA).
5. Prepare in advance for changes in the law. Keep pictures of your use of your trademark with your goods or services on products, on ads, on websites. Keep a whole file of evidence as proof you have been using the trademark so you can register it with the US Trademark Office if and when the laws change. It may take years for the laws to change, but they will likely change at some point, and you want to be prepared.
