CSG Law Alert: USPTO Issues Guidance on Registrability of Hemp and CBD Related Marks

On May 3, 2019, the United States Patent and Trademark Office (“USPTO”) relaxed its stance on the trademark registrability of certain types of hemp and cannabidiol (“CBD”) related products and services in light of the 2018 Farm Bill. The USPTO previously flatly refused registration for all trademark and service mark applications related to cannabis or CBD on the ground that these applications had no lawful basis and violated the Controlled Substances Act (“CSA”). Due to this change in policy at the USPTO, there is a new opportunity to potentially obtain registrations for certain hemp and CBD related goods and services.

Applications Filed On or After December 20, 2018
For applications that were filed on or after December 20, 2018 that cover goods encompassing CBD, the CSA is no longer a ground of refusal for registration only if (1) the goods are derived from “hemp” and (2) the identification of goods specifies that the goods contain less than 0.3% delta-9 tetrahydrocannabinol (“THC”) by dry weight. Eligible applications filed on or after December 20, 2018 should be amended to specify that the goods contain less than 0.3% THC by dry weight.

The USPTO will continue to issue lawful use refusals in connection with goods covered by the Federal Food, Drug, and Cosmetic Act (“FDCA”). Notably, the use of CBD or hemp-derived products in connection with foods (including beverages and pet treats) or dietary supplements without the approval of the Food and Drug Administration (“FDA”) violates the FDCA and such applications will still be refused.

With respect to services, the USPTO will continue to refuse registration for applications that cover any of the activities prohibited by the CSA, including but not limited to, manufacturing, distributing, dispensing or possessing cannabis that meets the definition of marijuana (cannabis derived from cannabis sativa l. with more than 0.3% THC by dry weight). For services relating to the cultivation of hemp, the USPTO will require the submission of additional information concerning the applicant’s authorization to produce hemp and authorization or licensure by state or local authorities in compliance with a United States Department of Agriculture approved plan.

Applications Filed Before December 20, 2018
The USPTO will continue to issue refusals for unlawful use or lack of bona fide intent to use in lawful commerce under the CSA for applications filed before December 20, 2018. Applicants will have the opportunity to amend the filing date and filing basis of these applications to overcome the CSA-based refusal. Alternatively, applicants can abandon a pending application filed before December 20, 2018, and file a new one, provided it satisfies the USPTO’s new CBD and hemp guidelines.

If you have questions concerning your new or pending applications and what next steps should be taken in light of this new USPTO guidance, please contact your CSG attorney or one of the authors.