As I previously discussed in my article and podcast published in the Portland Business Journal, U.S. federal trademark law does not currently extend to cannabis products. Because the required “use in commerce” of the cannabis plant and related products is illegal under the Controlled Substances Act, the marks are ineligible for federal registration. This roadblock creates significant challenges for businesses in the cannabis industry seeking to protect their established brands and prevent others from using identical or confusingly similar marks on identical or related products.
After the 2018 Farm Bill, many companies hoped to obtain trademark protection for their CBD product brands, including edibles, beverages, topicals, and smoking/vaping products. However, U.S. Patent and Trademark Office’s May 2019 Examination Guide confirmed that ingestible products containing CBD remain illegal and ineligible for federal trademark registration under the Food, Drug and Cosmetic Act, which prohibits the use, in foods or dietary supplements, of a drug or substance undergoing clinical investigations, without approval of the FDA. This means that the only CBD products eligible for federal trademark registration are topicals and smoking/vaping products. The most popular types of CBD products (edibles, beverages, and tinctures) are still excluded.
In light of these limitations, what can businesses in the cannabis industry do now to protect their brands and products? Here are six ways.