Last week I had the pleasure of speaking on a panel called “Expert Perspectives on the Rapidly Evolving Cannabis Industry” at the Midwest IP Institute in Minneapolis, MN. One of the issues that is often a source of confusion, both at IP-focused events and for clients, is how to craft an appropriate specification of goods or services for a federal trademark application while simultaneously navigating the trademark challenges faced by cannabis companies.
As we’ve written about extensively, federal trademark protection is extremely limited for businesses operating in both the hemp-CBD and cannabis spaces. You can read more about those limitations here:
- USPTO Issues Clarification on Hemp-Related Trademarks
- “CBD” Coffee and the Importance of Distinctiveness for Trademark Protection
- Choosing Your Cannabis Trademark
- Cannabis Trademarks: Back to the Basics
Most significantly for cannabis business owners, one requirement for registration of a federal trademark is that the applicant has made “lawful use” of the mark in commerce on the goods and services that are specified in the trademark application. Under the CSA, it is unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.” Furthermore, it is the FDA’s position that CBD cannot lawfully be introduced into comestibles without having undergone the FDA’s formal drug approval process, rendering CBD products intended for human consumption illegal under federal law as well.
The question I’m asked most frequently with respect to crafting a specification of goods for a U.S. trademark application is whether the applicant can merely omit any references to cannabis in their specification and avoid scrutiny during the examination process that way. The short answer to that question is “no.” The way in which a specification is crafted is irrelevant if the goods that the applicant is actually selling in commerce are not lawful. For example, specifying “brownies” in your application when the brownies you are actually selling contain marijuana or CBD will not circumvent the fact that you are not making lawful use of your mark in commerce. While an application like this may slip past an examining attorney, it would ultimately be void or unenforceable, and of no value to the applicant.
In addition–and this is something I see most frequently with trademark applications proposed by foreign applicants–overly broad specifications can be a huge problem and can ultimately lead to cancellation of the entire U.S. trademark registration. It is crucial that an applicant have a bona fide intent, from the time of filing of the application, to use the trademark on all of the goods and services specified. We really cannot emphasize this enough. Lack of this bona fide intent to use the mark on all goods or services specified can be a basis for attack on the validity of the application or registration. Said another way, an attempt to grab broader protection than an applicant is entitled to can actually leave them with no protection at all.
For these reasons, it is prudent to have a conversation with your trademark attorney about how to craft a defensible specification of goods and services for your U.S. federal trademark applications, and to err on the side of caution when attesting to a bona fide intent.