The US Patent and Trademark Office (“USPTO”) recently released new guidelines regarding registration of trademarks for goods/services featuring CBD. These new guidelines followed the enactment of the 2018 Farm Bill (“Farm Bill”), which, in part, legalized aspects of hemp that were once considered a controlled substance. Trademark owners now have the opportunity to apply for and obtain federal registration in a trademark or servicemark that is used in connection with some goods/services containing CBD. (The emphasis here is on some goods/services as the USPTO has not fully opened the doors to CBD trademark registration – see below.) This is good news for CBD business owners who may have been waiting for some federal trademark registration clarification following the enactment of the Farm Bill.
As a bit of background, prior to the signing of the Farm Bill on December 20, 2018, CBD was considered a controlled substance under the Controlled Substances Act (“CSA”). The Farm Bill effectively legalized the production and marketing of some hemp-derived goods containing CBD with 0.3% THC or less on a dry weight basis. Before the new guidelines, any USPTO trademark application for goods/services that appeared to contain CBD or related to the production or distribution of CBD would be refused based on the CSA. (See our article here for more information on CBD and cannabis trademarks and the USPTO.)
With these new guidelines, the USPTO has determined that trademarks applied for in connection with some goods/services in the CBD space are now open to registration with the USPTO. Moreover, trademark applications for trademarks featuring CBD that were applied-for prior to December 20, 2018 have the option to revise the filing date of the application to December 20, 2018 or re-file, or be finally refused.
Who will/will not benefit from this?
The good news is that some products containing CBD that are/are not governed by the FDA may now be acceptable for trademark registration. The bad news is that CBD still lacks FDA approval for consumable CBD goods and therefore the USPTO will not approve trademark applications for foods, beverages, dietary supplements, pet foods, and other related items, featuring CBD. Trademarks applied-for in connection with those goods are likely to be refused trademark registration.
How can you revise your filing date?
As noted above, if you applied for trademark protection before December 20, 2018, federal trademark applications pending prior to December 20, 2018 can now be revised to a filing date of December 20, 2018. The new guidelines specifically state that your application will be refused if you do not revise your application filing date. Changing the filing date will allow you to overcome the CSA-type refusal. If you are an applicant seeking to revise your filing date, you must specifically state for the record that you are authorizing such a change and must also establish a valid filing basis. Alternatively, you can file a new application if, for some reason, you are not interested in the new filing date or do not have a valid filing basis. Keep in mind, if you would like to amend the filing date, your examining attorney will conduct a search of USPTO records for potentially conflicting marks based on this later application filing date.
Opportunities for new trademark applicants.
CBD trademark applications are now possible for certain goods without the major risk of objection by the USPTO. There are still hurdles that must be overcome including identifying that goods intended for or in use in connection with the proposed trademark are derived from hemp, or cannabis with less than 0.3% THC in dry weight. Moreover, among other things, a deeper dive into the types of goods/services should be scrutinized prior to filing to lower the risk of USPTO refusal.
What’s Next?
It is difficult to predict when the USPTO will expand the list of acceptable goods containing CBD. Next up is for the FDA to make the determination that those goods currently restricted will be approved. The good news is that the FDA appears to be taking seriously the potential benefits of CBD. For example, Epidiolex, a drug that contains CBD and is for the treatment of seizures associated with two rare and severe forms of epilepsy was approved in June of 2018 by the FDA.
Please feel free to reach out to us with any questions regarding CBD trademarks at: cbdmarks@sisunlaw.com.
Helpful Links:
Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill, USPTO, https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term= (last visited May 21, 2019).
Statement From FDA Commissioner Scott Gottlieb, M.D., On New Steps To Advance Agency’s Continued Evaluation Of Potential Regulatory Pathways For Cannabis-Containing And Cannabis-Derived Products, FDA, https://www.fda.gov/news-events/press-announcements/statement-fda-commissioner-scott-gottlieb-md-new-steps-advance-agencys-continued-evaluation (last updated April 2, 2019).