Unfortunately, what many had hoped would be an opening for marijuana marks turns out to be a very narrow one indeed. Put briefly, the USPTO has stuck to their long-standby of the “lawful use” requirement. The lawful use requirement mandates that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” TMEP §907, citing to 37 C.F.R. §2.69 and §§1, 45 of the Lanham Act.
Therefore, if a product cannot be legally sold in interstate commerce (and, of course federal law regulates interstate commerce) then, according to the USPTO, the mark cannot be used legally in interstate commerce. Without use in interstate commerce, the trademark is not “in use” and cannot be registered.
The new examination guide does allow federal trademark registrations under very narrow circumstances. Under Sections 6 and 297A of the Farm Bill 2018, “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis” are removed from the Controlled Substances Act (CSA).
Thus, a subset of cannabis has become legal, and therefore eligible for trademark registration. Similarly, cannabidiol—commonly referred to as CBD—and those CBD products that have very low THC content, and which have become ubiquitous and very popular, have also become legal. Being legal under the CSA means that these products can be legally sold in interstate commerce. So, watch for a new rush to trademark these products.