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Kevin Haley, Brann & Isaacson
Updated: February 7, 2024
How to find a path to trademark protection for CBD products
By Kevin R. Haley and Adam Mooney, Brann & Isaacson
One of the most complex areas of the law is the regulation of marijuana. As of this writing, medical marijuana is legal in 38 states and recreational marijuana is legal in 23 states. Yet it remains illegal under federal law — creating intersections of legality and illegality that can puzzle even the most attentive business owner.
One area where this is acutely relevant is trademark law, particularly federal trademark registration. Registering a trademark at the federal level with the U.S. Patent and Trademark Office is often the goal for brand owners, but the fact that marijuana is illegal under federal law can make that a daunting prospect.
The Patent and Trademark Office will not register a trademark that is not legally used in commerce. Marijuana products are generally not deemed to be legally used in commerce because of their illegal status under federal law per the Controlled Substances Act. The result is that, even in states where marijuana is legal, like Maine, the Patent and Trademark Office will not register trademarks used on marijuana.
Understand new regulations around hemp. Recently there have been changes to federal law that open up narrow avenues for the registration of some marks related to marijuana; namely, the 2018 Farm Bill’s removal of hemp from the Controlled Substances Act. In this context, “hemp” is defined as “the plant Cannabis sativa . . . with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”
Therefore, any goods that are derived from hemp and contain no more than 0.3% THC are no longer prohibited by the Controlled Substances Act, and as such, no longer a reason for the Patent & Trademark Office to deny registration for those goods. This includes CBD products, as long as the CBD is derived from hemp and contains no more than 0.3% THC. The bottom line here is that those hemp-derived goods that were only prevented from registering with the Patent and Trademark Office by the Controlled Substances Act are now registerable as trademarks at the federal level.
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Adam Mooney, Brann & Isaacson
Understand federal definitions of food. Even in these circumstances, the road to registration is unclear. The federal Food, Drug, & Cosmetics Act prevents the introduction into interstate commerce of a “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 investigation has been made public.” The law’s definition of “food” includes dietary and nutritional supplements, as well as pet treats.
As such, any dietary or nutritional supplement, or other food product, that has CBD is illegal under the Food, Drug & Cosmetics Act — and a trademark could not be registered for use on those goods. Accordingly, there is only one realistic path for federal registration of CBD marks, thanks to the 2018 Farm Bill: trademarks on hemp goods, as defined above, that do not qualify as “food” under the FDCA.
Be careful about marketing claims. There is one important caveat that should be mentioned here, relevant to the marketing of CBD products.
Per an announcement by the Food & Drug Administration commissioner in December 2018, it is illegal to market a cannabis product (whether it is hemp-derived or otherwise) with a claim of a therapeutic benefit without FDA approval. So, regardless of where you land on trademark registration, CBD products should not be marketed with claims of therapeutic benefits unless approved by the FDA.
Consider state-level protection. Federal registration is not the only way to protect trademark rights. States including Maine have their own processes that allow protections to trademarks at the state level. Because Maine has legalized recreational marijuana, trademarks that are used to distinguish marijuana and other CBD products can be registered at the state level.
Though state-level registration is not as advantageous as federal registration, it is an attractive alternative for trademark owners. Though a state trademark will not provide nationwide protection, it will provide increased protection in the state in which it is registered. State registration is also simpler, faster, and cheaper than federal registration.
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