THE WILD WEST OF TRADEMARK LAW FOR MARIJUANA DERIVED PRODUCTS
Posted in / Intellectual Property / - on January 7, 2021
As of January, 2021, Marijuana is legal in 43 States and territories for either medicinal or recreational use. But you still cannot obtain a federal trademark registration for marijuana products because pot is still illegal under federal law. Since CBD products typically contain some THC (the active ingredient in marijuana), CBD products are also generally prohibited under federal trademark law.
Congress has loosened the trademark restrictions on some CBD products, but the limitations on trademark registrations for CBD products have remained severe. Currently, you can obtain a federal trademark registration for a CBD product if the product contains less than 0.3% THC (dry weight) and is derived from hemp, except that the product still cannot be a CBD oil, a dietary supplement, a pet treat, a food, or a beverage. That is a lot of restrictions.
The refusal to register trademarks for products containing CBD oils is particularly damaging to the industry because such oils serve as the basis for many CBD products. The reason that CBD products containing CBD oil are refused registration by the Trademark Office is because the Trademark Office considers that such oils may be included in food and beverages, which is why they are lumped in with the forbidden categories of products.
So what can a CBD business do to protect its trademarks? Each State has its own Trademark Registration System. CBD businesses can obtain a State trademark registration in States in which the CBD products are legally offered for sale under State law. This State registration option is the only strategy that provides CBD companies with the legal rights necessary to prevent competitors from using their CBD trademark. Any trademark infringement lawsuit would be filed in State court. Until federal law changes, sellers of CBD products that do not meet the narrow definition of approved CBD products must be content with filing for State registrations in States in which marijuana is legal.
There is another significant concern for owners of CBD trademarks. There is a real need to prevent others from obtaining federal rights to the CBD trademark while waiting for marijuana to become legal under federal law. This problem is best explained by an example: If you want to sell CBD creams, a regular cosmetic company might register your trademark for regular creams that do not contain CBD. This would likely prevent you from registering your trademark for CBD creams when marijuana becomes federally legal in the future because a CBD cream is still a cream to the federal Trademark Office. There is a strategy for addressing this serious concern. It involves selling two versions of your product: One with CBD and one without CBD.
For example, if you wanted to sell CBD creams using the JUPITER trademark, then you should sell creams without CBD using the JUPITER trademark in addition to selling creams with CBD using the JUPITER trademark. This will protect your JUPITER trademark for normal creams under current federal law. This provides a foundation for your rights to the trademark for your CBD product when federal marijuana laws eventually change.
For this dual strategy to work, you will need to have two different JUPITER packages. One JUPITER cream without CBD for which you use the ® symbol with JUPITER® after you obtain your registration. The second packaging for JUPITER cream with CBD would only have the TM symbol after JUPITERTM. This will clearly indicate that you are not claiming your JUPITER CBD cream is covered by your federal trademark registration to avoid running into trouble under federal law.
This dual product strategy will protect your federal rights to JUPITER for creams so that no one can federally register JUPITER for creams before marijuana products become legal. But you will actually need to sell both versions of the cream. Token sales of the non-CBD version will not fly under federal law. Also, this strategy would not give you the right to sue in federal court if someone else began selling JUPITER CBD creams. The State registration would have to suffice for that until federal law changes.
The example above uses creams with CBD oils, but you can substitute any CBD product into the analysis that falls outside the federal definition of approved CBD products. Most CBD products have been left in the legal wilderness under federal law. Even so, the above strategies can provide trademark protection even though these strategies are certainly more costly involving the maintenance of two product lines and trademark registrations in every state in which the products are legally sold.