THE BLUNT REALITY OF TRADEMARK REGISTRATION FOR CANNABIS MARKS
W
ITH THE LIST OF STATES
use the mark or logo in commerce (see 15
applications for certain products. Since
that have legalized adult-use
U.S.C. §§ 1051 and 1127). Accordingly, the
the THC and CBD compounds are
cannabis continuing to grow,
USPTO, as well as the Trademark Trial and
considered to violate the FDCA, any
businesses are entering the
Appeal Board (“TTAB”) have consistent-
products containing these cannabinoids
industry at a rapid pace.
ly refused registration of marks or logos
are also considered violative of the FDCA,
However, one of the biggest questions
where the applicant could not demonstrate
preventing the USPTO from granting
facing these businesses is how to develop
a lawful use.
trademark registration in many instances,
and protect their brands within the bounds of conflicting state and federal law.
federal level, the distribution, sale, and
The significant possibility of denial of
With the explosion of digital brand-build-
possession of cannabis and canna-
registration by the USPTO is due in
ing, selecting, building, and protecting
bis-based preparations (i.e., cannabis
large part to the rigorous investiga-
a brand name and corresponding logos
plant products with a THC concen-
tion the USPTO applies to a trademark
are of critical importance to a business’
tration of greater than .3 percent on a
application. During this process, the
long-term success. Registration of a mark
“dry weight basis”) is prohibited by the
examining attorneys at the USPTO
or logo with the United States Patent
Controlled Substances Act (21 U.S.C.
conduct a thorough examination of the
and Trademark Office (“USPTO”) is the
§§ 812, 841(a)(1), 844(a)). Moreover,
applicant, which may include requiring the
standard for safeguarding a business’
although the 2018 Farm Bill legalized
applicant to submit an affidavit stating
brand. However, navigating the federal
hemp at the federal level, ongoing clinical
that the goods or services for which the
registration of a mark or logo associated
investigations by the Food and Drug
trademark is applied for do not contain
with cannabis-related products or services
Administration (“FDA”) into food products
any substances that are prohibited
is a complicated endeavor.
and dietary supplements containing CBD
by the Controlled Substance Act, or
have caused the USPTO to cite the Food,
conducting an independent investiga-
Drug, and Cosmetics Act (“FDCA”), which
tion of the applicant via the internet.
prohibits distribution of products subject
Applicants are also required to submit
to such investigations, to deny trademark
specimens showing the mark or logo used
As part of the application to federally register a trademark, the applicant must present a bona fide intention to lawfully
10
even for legal manufacturers of CBD.
Although legal in many states, at the
CannaBuff.com WINTER 2021
