by Susan Basko, esq
One of the hottest new areas for trademarks is goods and services involving Hemp, CBD, Cannabis, Marijuana, and their related goods and services. The maze of laws on these is rather tricky. As a lawyer working in trademark, I have been finding my way on this maze for several years now. It is pretty tricky, to say the least.
The basic idea is that the U.S. Trademark Office only allows trademarks that will be used in commerce legally, which means the goods or services themselves must be federally legal. While marijuana is legal in many states, it is still federally illegal. Therefore, all goods and services in connection with marijuana cannot get a U.S. trademark. This includes things such as designer marijuana, marijuana strains, dispensaries, marijuana grow ops, marijuana delivery services, websites selling marijuana, and on and on. Cannabis, when it is a synonym for marijuana, also cannot have federal trademark on its various goods and services. Sometimes Cannabis is used as a synonym for other strains of hemp, and goods or services may or may not be allowed trademark, as noted below.
Hemp, and its by-product, CBD oil, were made federally legal through the 2018 Farm Act Hemp Bill. However, the Food and Drug Administration and its FDAC (Food Drug and Cosmetics Act) forbids the use of CBD oil in anything that is consumed by humans or pets, including food or drinks for humans, pet or animal food, supplements, etc. Therefore, the Trademark Office will not issue trademarks on any of these things.
The Trademark Office will issue trademarks on soaps, cosmetics, and other such treatments for the skin or outside of the body if they contain CBD that is solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis. Also, these items cannot have any medical claims made about them.
Trademark can also be issued on edibles that do not contain CBD oil, but contain hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.
Third Party Reports from testing labs are used to determine the amount of THC in hemp or in CBD oil.
This is tricky. I sum it up in the chart below.
Is it Allowed to have a US Trademark?
Marijuana-related goods or services No 🚫
CBD oil in food, drink, or supplement No 🚫
CBD oil in soap, cosmetic, other external use with no medical claims YES ✅
Hemp in food and drink if it contains no CBD and THC less than 0.3 percent YES ✅
Hemp in non-edible goods YES ✅
Inquiries by Examiner. The Trademark process on any hemp or CBD goods is complex and tricky. The Trademark examiner may inquire as to where the goods and services will be sold, the source of suppliers, etc. The examiner will determine if the applicant's intent is to use the trademark legally in commerce.
Speedier Replies. The Trademark Examiner may issue an Office Action or emailed inquiry to the Trademark lawyer handing the case. The old rule was that such office actions or inquiries had to be answered within 6 months. The new rule states that replies must be sent within 3 months. The purpose of this rule change is to speed up the time in which a trademark is either denied or gets certified.
Foot in the Door. If you are selling a whole line of goods under the same trademark, and if some of those goods will meet the test of being federally legal, you can apply for a trademark on those goods. In the future, if and when the other goods become federally legal, you can apply for a trademark to cover those goods. That way, you have a foot in the door on having that trademark registered and in use.
🚫 Not a Do-it-Yourself Activity. And as always, keep in mind: Trademark is not a do-it-yourself activity. Please only use a real U.S. lawyer who has an active account with the U.S. Trademark Office.