On May 2, 2019, the United States Patent and Trademark Office (“USPTO”) published Examination Guide 1-19 titled Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill (“Guide”).  The Guide contains some good news for hemp producers, growers and sellers, albeit with certain caveats.  It also provides a detailed roadmap for the USPTO’s Examining Attorneys when reviewing pending and future trademark applications seeking to register marks for hemp and hemp-derived products.

On December 20, 2018, the Agriculture Improvement Act of 2018, more commonly known as the 2018 Farm Bill (“2018 Farm Bill”) was signed into law.  Under the 2018 Farm Bill, hemp and hemp-derived products were determined not to be controlled substances under the Controlled Substances Act (“CSA”). Section 297A of the 2018 Farm Bill defines “hemp” 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.”

Because the CSA makes it illegal to manufacture, distribute, dispense, or possess designated “controlled substances” it is the USPTO’s policy to refuse to register marks for goods or services that violate the CSA, even if such offerings comply with applicable state law.  The USPTO previously rejected applications to register marks for hemp and hemp-derived products on the determination that such products were controlled substances under the CSA. The Guide provides that for pending USPTO applications filed prior to December 20, 2018 that seek to register marks identifying hemp and hemp-derived goods, the Examining Attorney will permit the applicant to amend the filing date to December 20, 2018 and, if the application was filed on the basis of use, to amend the filing basis to “intent-to-use.”  By taking the unusual step of permitting amendment of the filing date, the Guide allows applicants to be in compliance with federal law at the time of the constructive filing.  Applicants who amend their applications will also be required to amend the description of the applicable good to state that any applicable cannabidiol (CBD) or cannabis products contain less than 0.3% THC.  Thus, this USPTO policy provides a legal path to registration for applications relating to hemp and hemp-derived products filed before the enactment of the 2018 Farm Bill.

The Guide distinguishes between hemp and hemp-derived products and goods derived from cannabis exceeding a 0.3 percent THC concentration, which still violates the CSA and remains ineligible for trademark registration with the USPTO.  The Guide also states that for USPTO applications to register a mark for hemp cultivation or production, the Examining Attorney will issue questions to verify that the applicant is authorized to produce hemp and the applicant will be required to provide supplemental confirmatory declarations.  For a commercial business to legally produce hemp under the 2018 Farm Bill, the producer must have a license or permit properly issued by a state, territory, or tribal government.

The Guide also notes that, while hemp and hemp-derived products no longer violate the CSA, they might nevertheless be ineligible for registration because they violate other federal laws, including the Federal Food Drug and Cosmetic Act.  The FDA recently published its own guidance, in a Q&A format, regarding its regulation of cannabis and hemp products.  Still, the Guide should be welcome news for hemp growers, producers, and sellers.  As more hemp-related businesses begin to operate during and after 2019, there will likely be a rush to the USPTO to protect what may become the industry’s most popular brands.

If you would like to learn more about the Guide or its impact on you and your business, please contact Jonathan Wachs at jwachs@offitkurman.com or 301-575-0302.

ABOUT JONATHAN WACHS

jwachs@offitkurman.com | 301-575-0302

Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions, and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion-dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions.

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