USPTO issues Examination Guidelines for Post-Farm Bill Examination of Trademarks for Cannabis and Cannabis-Related Goods and Services

      

After months of uncertainty regarding how the U.S. Patent and Trademark Office (“PTO”) was going to be handling trademark applications that recite cannabis-related goods and services following the enactment of the 2018 Farm Bill, the PTO issued Examination Guide 01-19 on May 2, 2018 to provide some guidance for trademark applicants and trademark attorneys moving forward.

Prior to the enactment of the 2018 Farm Bill, the PTO typically refused registration of any trademark application the basis that use of a mark in connection with anything relating to cannabis was a violation of the federal Controlled Substances Act (CSA), and therefore, the mark was not in lawful use in commerce (nor could the applicant have had a bona-fide intent to use such mark in lawful commerce).

However, on December 20, 2018, 2018 Farm Bill was signed into law and amended the CSA to remove hemp from the definition of marijuana, and thus cannabis plants and derivatives (most notably CBD) that contain no more than 0.3% tetrahydrocannabinol (THC) on a dry-weight basis are no longer controlled substances under the CSA.

For trademark applications filed on or after December 20, 2018 which identify cannabis-related goods (including CBD), the 2018 Farm Bill now removes the CSA as a ground for refusal of registration so long as the goods are derived from “hemp.” Nonetheless, the PTO will require the identification of goods to specify that they contain less than 0.3% THC so that the goods set forth in the trademark application are compliant with federal law.

However, for applications filed before December 20, 2018 that identify goods encompassing cannabis-related products or CBD, registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA on the date the application was filed. The PTO maintains that such pre-Farm Bill applications did not have a valid basis to support registration at the time of filing because the goods violated federal law at the time.

However, because the goods are now potentially lawful if they are derived from “hemp” and contain less than 0.3% THC, the PTO will be allowing applicants the option of amending the filing date and filing basis of the application to overcome the CSA as a ground of refusal.  Applicant’s will have to specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. If the application was originally filed based on Section 1(a) use-in-commerce, then applicants will have to amend the basis to instead be based on Section 1(b) intent to use – presumably followed by a subsequent filing of an amendment to allege use. [Comment – this is what the Examination Guideline states regarding use-in-commerce , but I’ve personally reached out to the PTO regarding this point as it seems that if the applicant is amending the filing date, but the applicant can claim use-in-commerce as of that December 20, 2018 filing date, then why can’t the applicant leave the application basis as Section 1(a) use-in-commerce based on the new filing date … to be continued.]

Applicants will also be required to amend the identification of goods to specify that the CBD or cannabis products contain less than 0.3% THC. The PTO also appears to be recommending that in lieu of amending the filing basis, applicants could simply abandon its old application and file a new one.

However, even though cannabis-related goods may now be legal under the CSA, the PTO notes that not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill. Most notably, the use of CBD in foods or dietary supplements may still violate the Federal Food Drug and Cosmetic Act on the basis that the use of a drug or substance undergoing clinical investigations (as CBD currently is since it is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations) without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. The 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA. Thus, registration of trademarks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.

The Rat Pack is . . . Generic! -- Ninth Circuit Affirms Nevada District Court’s Decision that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

The title of this blog post could also be entitled “How I won at the Ninth Circuit without doing a thing.” 

On February 16, 2016, the Ninth Circuit Court of Appeals issued its ruling in the appeal that was filed in 2013 by TRP Entertainment, LLC, seeking to overturn the Nevada district court’s 2009 decision which found that the “Rat Pack” was generic and ordered a disclaimer of the term “RAT PACK” on TRP’s trademark registration for “THE RAT PACK IS BACK.”  A copy of the decision can be downloaded here.   See TRP Entertainment, LLC v. BC Entertainment et al., Case No. 13-16754 (9th Cir.)

In upholding the lower court’s decision, the Ninth Circuit found that “the record demonstrates that the term ‘The Rat Pack’ describes a type of live entertainment show and does not identify any particular producer of a Rat Pack tribute show.”  The Court noted that even TRP had referred to “Rat Pack performances as a ‘genre’ of entertainment.”  As such, the district court did not err in determining that “The Rat Pack” is generic in the context of live shows about or in tribute to members of the Rat Pack.  The Ninth Circuit also held that the district court did not abuse its discretion in ordering a disclaimer of the term “The Rat Pack” modifying TRP’s trademark registration (citing 15 U.S.C. § 1119, which allows a court to order the modification of a trademark registration to include a disclaimer of generic components).  As such, the Ninth Circuit affirmed the district court’s grant of partial summary judgment and remanded the case back to the district court to instruct the Director of the United States Patent and Trademark Office to enter a disclaimer of the term “THE RAT PACK” on TRP’s trademark registration for ““THE RAT PACK IS BACK.” 

In order to understand how this victory is one for which I can claim some credit, I will defer to my prior detailed post on the district court’s decision when it was first handed down.  I was no longer Defendants’ counsel of record on the case at the time the decision was handed down, but it was the Motion for Partial Summary Judgment that I prepared and filed on behalf of the Defendants in that case that the district court ultimately ruled on in deciding that “Rat Pack” was generic – a decision that the Ninth Circuit has now affirmed.

Moreover, I was not involved in any briefings relative to TRP’s appeal, so that is why I write that I won at the Ninth Circuit without doing a thing – because indeed I did not.   In fact, the Ninth Circuit ruled against TRP despite having no substantive opposing briefs filed by the Defendants.  Original Defendant Barrie Cunningham did send a one page letter to the Ninth Circuit asking for the lower court’s decision to be upheld, but otherwise, no briefs were filed by the Defendants arguing in favor of upholding the lower court’s decision – which makes the decision of the Ninth Circuit to uphold the decision anyway all the more sweeter.  This victory for Defendants also demonstrates that just because no one opposes you on appeal does not necessarily mean you are going to win your appeal.

So short of an appeal by TRP of the Ninth Circuit’s decision to the U.S. Supreme Court or possibly a request for reconsideration with the Ninth Circuit, this decision marks the end of the great “Rat Pack Generic” saga that started as far back as 13 years ago.  The glory days of TRP claiming to have exclusive rights to the term “THE RAT PACK”  in connection with a “Rat Pack” tribute show – much like the “Rat Pack” itself – is forever gone. 

Michael E. Hall Ups The Ante In The Trademark Blawgosphere

Those of us in the small world of trademark blogs already know Michael E. Hall for his comments and insights on trademark law which he often posts on other trademark blogs.

Well Michael has finally decided to take the plunge into the legal blogosphere by starting his own trademark law blog – Registration Ruminations (admittedly a better blog name than Las Vegas Trademark Attorney).

Michael, who is now hanging his own shingle, brings his experience as an examining attorney at the U.S. Patent and Trademark Office as well as a lawyer in private practice at the intellectual property law firm Knobbe Martens Olson & Bear.

I would like to welcome Michael to the party and look forward to reading his regular ruminations on the world of trademark prosecution before the U.S. Patent and Trademark Office. (Check out his recent post explaining the details on how PTO Examining Attorneys are evaluated for purposes of bonuses – a valuable insight for all trademark practitioners). Anybody else out there who regularly follows trademark blogs should certainly add his blog to your blogroll. Good luck Michael.