It’s been a while since we’ve gone over the basics regarding how hemp-CBD companies should be strategizing to protect their brands. Last year, the United States Patent and Trademark Office (USPTO) issued Examination Guide 1-19: Examination of Marks for Cannabis and Cannabis-Related Goods and Services After Enactment of the 2018 Farm Bill. The guide provided some much-needed clarification around the USPTO’s position with respect to trademarks for domestic industrial hemp products.
Nothing in that guide was earth-shattering, given that the USPTO reiterated what we already knew and have written about for years: that “[u]se of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act.” But this is often a point of confusion for would-be applicants. Even where the goods or services for which protection is sought are legal under state law, if the goods or services violate federal law, including the Controlled Substances Act (CSA), they will not be eligible for trademark protection. And of course, what matters is not necessarily the way in which you craft your specification (although that is important for other reasons), but the goods and services you actually sell or intend