Westchester Women's Bar Association

Update: Trademark Applications Involving Hemp / CBD Goods

It has been over a year since the Farm Bill was signed into law on December 20, 2018. See our web page entitled, Filing Trademark Applications for Hemp (related goods) After 2018 (Dec.) Farm Bill, for the details of this new legislation that significantly impacted the filing of trademark applications. Since that time, many applicants have taken advantage of the new law, and there has been a multitude of trademark applications filed at the United States Patent & Trademark Office ("USPTO") for goods and services involving cannabis and cannabis derived goods.

The USPTO has standards for when a trademark application will be reviewed by an Examining Attorney subsequent to filing. Typically, it takes about 12-14 weeks before an Examining Attorney is assigned to the application and the application is reviewed. However, this is currently not the case for trademark applications identifying goods encompassing cannabis, CBD or goods derived from "hemp" in certain international classifications.

There is a backlog and these types of trademark applications are experiencing significant delays. It is taking approximately 6-8 months longer than the standard time frame for an Examining Attorney to review these applications. Although the Farm Bill of 2018 potentially removes many applications, identifying goods derived from cannabis and CBD (hemp), from a refusal based on the Controlled Substance Act, there are other grounds for a refusal. This is explained on our web page entitled, Filing Trademark Applications for Hemp After 2018 (Dec.) Farm Bill, specifically, applications can still be refused as unlawful under the Federal Food Drug and Cosmetic Act ("FDCA").

To avoid long delays in examination of trademark applications that may be refused under the FDCA, a trademark applicant can divide a trademark application. This is a strategy a trademark applicant may employ to expedite the review of an application for CBD or hemp derived products. See our web page entitled, Why An Applicant Would Divide A Trademark Application, for more on this topic. This way you can move along the goods or services that will not be heavily scrutinized as unlawful under the FDCA, while leaving behind the ones that may be in the parent application or you can simply file two trademark applications.

The FDA recently issued additional information that affirmed the USPTO's initial guidance that came in an update entitled, Examination Guide 1-19. If an applicant uses CBD or hemp derived ingredients in its products that are "foods" or "dietary supplements" this may likely violate the FDCA. CBD is an active ingredient in a FDA approved drug and is a substance undergoing clinical investigations. Therefore, marks for foods, beverages, dietary supplements, or pet treats containing CBD will likely be refused by the USPTO as unlawful.

The FDA has formed a CBD policy group. This group's objective is to obtain information and evaluate the safety data of CBD in foods, beverages and dietary supplements. The FDA is taking this matter very seriously especially given the wide range of consumers that would be exposed to CBD infused products, such as children, the elderly, and pregnant and nursing mothers. The FDA has several concerns, one of which is that after testing some of the products, the FDA fears that the products will not contain the amount of CBD as indicated on the label.

These issues highlight the need for more research and investigations for CBD infused goods. The FDA will continue to conduct thorough investigations. Keep in mind that the FDA has only approved one drug (Epidiolex) containing CBD as the active ingredient thus far. However, as the research continues, certain hemp-derived ingredients have been recognized as GRAS (generally recognized as safe). These ingredients include: (1) hulled hemp seed (GRN 765), hemp seed protein powder (GRN 771), and hemp seed oil (GRN778). Hemp seeds are the seeds of the hemp plant, cannabis sativa. In an update in December 2018, the FDA reported that: " Although hemp is from the same species as cannabis (marijuana), the seeds themselves do not naturally contain (tetrahydrocannabinol) THC, ...". Therefore, some marks that identify foods and beverages containing hemp-derived ingredients may be able to register at the USPTO depending on how the goods are described in the identification. Generally, it is a good practice to consult with trademark counsel before submitting a trademark application to the USPTO. Should your trademark application contain goods or services encompassing hemp or CBD, it is especially important to consult with an experienced practitioner. Please feel free to contact the office for a courtesy consultation regarding trademark registration.

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