[Trademark] Hurdles in Registering Cannabis Trademarks

 Last week, on March 25, 2021, New York state officially legalized cannabis for adult use, changing the standard from “decriminalized” to “legalized”. In addition to granting the freedom to smoke weed in NYC, this law will potentially change many people’s lives related to unjust incarceration.

As the cannabis industry continues booming, the market is crowded with various brands of cannabis products, smoking accessories and weed-centered entertainment events, particularly in those states where recreational THC is legal. The politicians are now pushing for a legal reform of cannabis law on the federal level. However, as nothing has happened yet, it is still tricky and difficult to protect cannabis related brands on a national scale.

When it comes to protecting a brand, one is absolutely urged to obtain a national trademark registration with the United States Patent and Trademark Office (USPTO). The USPTO’s policy, on the other hand, has been strict and is prone to refusing cannabis related registrations based on Controlled Substance Act (CSA).

Basically, one can only register the federally legal part of the goods or services that are not indicating any THC uses or uses of CBD in food and drinks. One can register cannabis related entertainment services, accessories or hemp products, if those goods or services do not reference THC (or goods contain less than 0.3% THC), CBD in food and drinks (due to FDA regulations) or federally unlawful activities.

Below are the common refusals issued for cannabis related trademark applications with the USPTO.

A. Trademark’s goods and services involve a violation of federal law.

The USPTO presumes that the use of a mark in commerce is lawful unless the application record indicates a violation of federal law. In re Brown, 119 USPQ2d at 1351, the Board summarized the applicable test:

[R]egistration generally will not be refused based on unlawful use in commerce unless either (1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant's application-relevant activities involve a per se violation of a federal law.

The examining attorneys will go beyond the submitted evidence and look for federally unlawful activities on an applicant’s website and social media accounts.

B. State regulations do not impact the federal trademark registration.

The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law. In re Brown, 119 USPQ2d 1350, 1351(TTAB 2016)

“[T]he federal CSA is conclusive on the lawfulness issue for purposes of obtaining a federal trademark registration.” JJ206, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016).

That being said, if an applicant is in a legalized state, a state trademark registration can be obtained for THC products.

C. CBD cannot be used in food and drinks.

cannabidiol (CBD) is an extract of the cannabis plant that is regulated under the FDCA as a drug. The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….” 21 U.S.C. § 331(ll).

On the bright side, CBD cosmetics and pain-relief products are usually registrable with the trademark office.

Congratulations, New Yorkers.

Sincerely yours,

Silvia Sun, Esq.

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