Cannabis-related trademark applications have become increasingly common in recent months, particularly in California, where the market for such goods and services has substantially expanded.
Along with the increase in cannabis-related trademarks, many questions arise regarding controlled substances, federal law, and drug-related paraphernalia. This newsletter aims to clarify the regulations surrounding cannabis-related trademarks, and address frequent concerns surrounding examinations therefore.
Use of a trademark in commerce must be lawful under federal law.
Regardless of local or state regulations, the United States Patent and Trademark Office is required to adhere to federal law as it relates to controlled substances. Therefore, the USPTO refuses registration where an application identifies goods encompassing extracts of marijuana or the use thereof, under consultation of several federal laws. However, the recent Farm Bill exempts certain applications from such rejections, described below.
The Farm Bill was enacted December 20, 2018
Pursuant to much controversy, the Farm Bill changes certain federal authorities relating to the production and marketing of “hemp,” provided that the product contains a delta-9 tetrahydrocannabinol (THC) concentration of ≤ 0.3% on a dry weight basis. Hemp products, derivatives, and paraphernalia which meet this criteria are no longer considered controlled substances under the Controlled Substance Act.
The Farm Bill is projected to stimulate ~$1.3 billion in growth for the hemp industry by 2022, which should result in significant increase of cannabis-related trademarks and resultant examinations.
Examinations and what to expect
For hemp-related applications filed on or after December 20, 2018, a specification that the involved cannabis contains ≤ 0.3% THC is all that will be required.
For such applications filed before December 20, 2018, the examining attorney will provide the option of amending the filing date and/or basis (“intent-to-use” vs. “in-use”) to overcome refusal. Alternatively, the applicant may respond to a refusal by submitting an entirely new application.
Trademark officials have asserted that applications will be accepted or refused on a case-by-case basis, to properly determine lawful use of hemp and hemp-related products. Therefore, applicants should expect examination for any cannabis-related applications to take longer than the usual processing time of ~3-8 months, and instead range from ~6-12 months.