CannaBuff Issue 10

Page 10




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


even for legal manufacturers of CBD.

Although legal in many states, at the WINTER 2021

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