December 20, 2018 opened the door for HEMPtrepreneurs. This is the day that the Farm Bill passed.https://www.congress.gov/bill/115th-congress/house-bill/2/text. The Farm Bill removed hemp, which is defined as cannabis (Cannabis sativa L.) and derivatives of cannabis with extremely low concentrations of the psychoactive compound delta-9-tetrahydrocannabinol (THC) (no more than 0.3 percent THC on a dry weight basis), from the definition of marijuana in the Controlled Substances Act (CSA).https://www.fda.gov/news-events/congressional-testimony/hemp-production-and-2018-farm-bill-07252019 HEMPtrepreneurs got excited and started filing Federal trademarks.
My friend’s hemp trademark application has been approved. My application has not been approved or even examined. What gives?
Your examination and approval depends upon a variety of things. (This is not an exhaustive list of considerations taken into account by the United States Patent and Trademark Office (USPTO).
- The word, slogan, design being available (no other similar mark is pending or active before the USPTO).
- You the applicant having a bona fide intent to use the applied for trademark.
- The applied for trademark’s use would be lawful. Hemp’s new definition makes it sometimes lawful.
Bona fide intent means you, the applicant, really plans on using the applied for trademark to market the goods/services listed in the application. You are not just trying to prevent someone from registering a word, slogan, or design trademark.
Lawful use means the sale or advertisement of the good or service complies with the federal laws of the United States. Trademark Manuel of Examining Procedure (TMEP) Section 907.https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e1461.html
Hemp and Cannabis have different definitions under federal law and receive different treatment. Cannabis/Marijuana remains a federally controlled substance because of its THC concentration. This means it is unlawful on the federal level.https://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-including-cannabidiol-cbd
Your classification of goods/services matters.
The products and services you list could trigger concerns of compliance with the Controlled Substances Act, (CSA), the Food and Drug Administration (FDA) and or the Federal Food, Drug & Cosmetic Act (FD&C).
If your application gets flagged because of the goods and or services listed in your application, what are some questions you could be required to answer?
- Do or will the goods include cannabidiol (CBD)?
- If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
- Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?
- Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?
- If the answer to Question 4 is “yes,” please provide a copy of such application.
- Do or will applicant’s identified goods include or be used with any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?
- If the answer to Question 1 is “yes,” does the cannabis used with or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?
- If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
- If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.
These are typical questions asked when the FD&C is implicated by the goods/services listed in your application.
What does this have to do with processing my application?
You will receive an office action if your application listed products like creams, dietary supplements, topical analgesics (Class 005) products– you will not pass go until the FD&C law changes.https://en.wiktionary.org/wiki/don%27t_pass_go. The examination of your application will be delayed because of the backlog at the USPTO related to reviewing these kinds of applications. As of July 7, 2020, the USPTO is processing June 2019 federal trademark filings with no specific timeline for trademark applications filed after June 2019. The USPTO has even created task forces to assist in the review and examination of these kind of Class 005 trademark filings.
If your application triggers concerns of violating the CSA rather than the FD&C because of the type of products listed, your Examining attorney might give you the option of amending your filing date and or filing basis of your application to overcome a CSA refusal. If that option is not available to you, you could argue against the refusal or abandon your pending application and start the process over. You could also be asked and required to answer different kinds of questions.
What are some things the CSA prohibits?
The CSA prohibits among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. The CSA also makes it 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].” 21 U.S.C. §863. This means the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because these kinds of services still violate federal law regardless of the application filing date.
What kinds of questions are asked when the USPTO is concerned with compliance with the CSA?
- Do applicant’s identified goods include or contain marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance?
- Are applicant’s identified goods used or intended for use in connection with marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance?”
- Upon information and belief, do applicant’s goods comply with the Controlled Substances Act?
Any good news?
If your application listed products like clothing (Class 025) or dried hemp being a tobacco substitute for smoking; loose dried hemp flower being a tobacco substitute for use in pipes, rolled cigarette all the foregoing containing no more than .3% THC on a dry-weight basis (Class 034) your application’s examination process would be standard or just slightly delayed provided you are able to show your trademark’s proposed use would be lawful.
Improper classifications waste time. Time is money.-Juliet A.
The classification of your goods and or services should not be taken lightly. The USPTO trademark application process is transparent and public. Anyone with access to the internet can review your USPTO trademark filings. Before filing a federal trademark application you should be make sure your bona fide use is a lawful use.