Final week I had the pleasure of speaking on a panel known as “Expert Perspectives on the Quickly Evolving Cannabis Industry” at the Midwest IP Institute in Minneapolis, MN. One particular of the concerns that is typically a supply of confusion, each at IP-focused events and for customers, is how to craft an proper specification of goods or solutions for a federal trademark application even though simultaneously navigating the trademark challenges faced by cannabis corporations.
As we’ve written about extensively, federal trademark protection is particularly restricted for companies operating in each the hemp-CBD and cannabis spaces. You can study additional about these limitations right here:
Most considerably for cannabis company owners, a single requirement for registration of a federal trademark is that the applicant has created “lawful use” of the mark in commerce on the goods and solutions that are specified in the trademark application. Below the CSA, it is unlawful to sell, supply for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any gear, solution, or material of any sort which is mainly intended or made for use in manufacturing, compounding, converting, concealing, creating, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human physique a controlled substance, possession of which is unlawful beneath the CSA.” In addition, it is the FDA’s position that CBD can not lawfully be introduced into comestibles without the need of obtaining undergone the FDA’s formal drug approval procedure, rendering CBD items intended for human consumption illegal beneath federal law as effectively.
The query I’m asked most often with respect to crafting a specification of goods for a U.S. trademark application is whether or not the applicant can merely omit any references to cannabis in their specification and stay away from scrutiny for the duration of the examination procedure that way. The quick answer to that query is “no.” The way in which a specification is crafted is irrelevant if the goods that the applicant is really promoting in commerce are not lawful. For instance, specifying “brownies” in your application when the brownies you are really promoting include marijuana or CBD will not circumvent the truth that you are not generating lawful use of your mark in commerce. Although an application like this may perhaps slip previous an examining lawyer, it would eventually be void or unenforceable, and of no worth to the applicant.
In addition–and this is some thing I see most often with trademark applications proposed by foreign applicants–overly broad specifications can be a massive challenge and can eventually lead to cancellation of the complete U.S. trademark registration. It is essential 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 solutions specified. We definitely can not emphasize this sufficient. Lack of this bona fide intent to use the mark on all goods or solutions specified can be a basis for attack on the validity of the application or registration. Mentioned an additional way, an try to grab broader protection than an applicant is entitled to can really leave them with no protection at all.
For these factors, it is prudent to have a conversation with your trademark lawyer about how to craft a defensible specification of goods and solutions for your U.S. federal trademark applications, and to err on the side of caution when attesting to a bona fide intent.