Trademark registration for cannabis and cannabis-based products
With the recent trend in states allowing adult-use and medical marijuana, even while marijuana, or as it is increasingly known, cannabis, is still illegal federally, many new legitimate businesses face the question of whether they can trademark their names and logos. The answer is no … and yes. Understanding this dichotomy involves unpacking trademark law a bit.
First, a trademark is words, graphics, or combination of words and graphics that identify the source of goods provided. State governments and the federal government each provide registration of trademarks. I will limit my discussion of state trademark law to that of California.
To register a trademark in California or federally, in the United States Patent and Trademark Office (USPTO), the mark must meet certain criteria. One of those criteria is that the trademark must be used lawfully in commerce. This means that marks for marijuana are ineligible for federal registration because marijuana is still included in the Controlled Substances Act (CSA). Under the CSA, it is unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.” Some brands opt to register their marks for ancillary goods or services that do not violate the CSA.
However, California is among the states that allow medicinal and adult use of marijuana. On January 1, 2018, California began registering cannabis-related trademarks, as long as the mark is lawfully in use in commerce within California and the classification of the goods that is used by the USPTO. As a result, California will register some marks that cannot be registered federally, because adult-use marijuana is legal in California but is still unlawful under federal law. However, this does not mean that California will register all marijuana related marks. There are some products that do not fall within the classification system use by the USPTO so they cannot be registered, even though their use in commerce may be allowed in California.
One ingredient that is of particular interest is cannabidiol (CBD). Many products made with CBD do not have a significant concentration of tetrahydrocannabinol (THC), which is the psychoactive constituent of marijuana.
The CSA defines marijuana as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin. Such term does not include the mature stalks of such plant, fiber produced from such stalks, oil or cake made from the seeds of such plant, any other compound, manufacture, salt, derivative, mixture, or preparation of such mature stalks (except the resin extracted therefrom), fiber, oil, or cake, or the sterilized seed of such plant which is incapable of germination.”[1]
Under this definition, CBD extracted from the excluded parts of the hemp plant should qualify. However, about the end of 2017, the USPTO began refusing applications for marks for any product containing CBD, even when the applicant signed a declaration stating that the CBD was extracted from non-marijuana sources.
As the law and practice stand, because the product must be used lawfully, and marijuana is unlawful under the CSA, trademarks for marijuana and marijuana-based products (including CBD products) cannot be registered federally. However, trademarks for many cannabis products (including CBD products) can be registered in California.
If you have a cannabis based business and questions about your cannabis related trademarks, schedule a consultation to discuss your questions with us!
[1] 21 U.S.C. § 802(16).
