Cannabis Rescheduling and Trademarks

25 Sep Cannabis Rescheduling and Trademarks

Cannabis rescheduling appears to be a matter of time and my colleagues have written about the possible implications (see here, here, and here). Rescheduling to a less restrictive category will also have implications for trademarking by cannabis brands. By broadening the legality of cannabis goods and services, rescheduling will also make more canna trademarks eligible for federal protection.

The U.S. Patent and Trademark Office (USPTO) will refuse the registration of any trademark used in connection with goods or services that are unlawful according to federal law. That includes all cannabis that is considered marijuana under the Controlled Substances Act (CSA), that is, all cannabis with a THC content that exceeds 0.3%. Marijuana’s inclusion in the most restrictive controlled substances schedule pretty much closes the door on any activities involving it being considered legal under federal law.

Cannabis rescheduling would change that. Per Health and Human Services’ recommendation, many commentators believe that cannabis’ new home is likely to be Schedule III. Schedule III substances are those that “have a potential for abuse less than substances in Schedules I or II and abuse may lead to moderate or low physical dependence or high psychological dependence.” According to the Drug Enforcement Administration (DEA) Diversion Control Division, Schedule III substances include “products containing not more than 90 milligrams of codeine per dosage unit (Tylenol with Codeine®), and buprenorphine (Suboxone®).”

That ® indicates a registered trademark, reflecting the fact that trademarks can be registered in connection to Schedule III substances. In turn, this underscores that, although still controlled, Schedule III substances can, under certain circumstances, be used legally. ® symbols can be found within the examples of substances provided for all schedules, except Schedule I, where “marihuana” is currently found. Cannabis rescheduling will make it possible to register trademarks in connection to cannabis even if cannabis is only down-scheduled to Schedule II. OxyContin® is an example of a Schedule II substances whose trademark is registered.

Despite eventual cannabis rescheduling, some cannabis brands will likely continue to face issues when it comes to federal trademark protection. For example, hemp is not a controlled substance, but hemp-CBD foods are considered unlawful by the Food and Drug Administration (FDA). Under the lawful use requirement, USPTO will deny registration of trademarks in connection to any good or service that is unlawful according to federal law, not just those that are in violation of the CSA.

For some brands, though, rescheduling will make it possible for them to obtain federal trademark protection. This is the right time for those brands to start revising their trademark strategies, with a view to ensuring they take full advantage of the opportunities presented by cannabis rescheduling. This includes not only analyzing whether their goods and/or services are likely to be eligible for trademark protection, but also looking at trademarking fundamentals, such as making sure that their trademarks are not generic, geographically descriptive, or confusingly similar to registered or previously applied-for trademarks.