Final week I had the pleasure of speaking on a panel referred to as “Expert Perspectives on the Swiftly Evolving Cannabis Industry” at the Midwest IP Institute in Minneapolis, MN. 1 of the difficulties that is usually a supply of confusion, each at IP-focused events and for customers, is how to craft an acceptable specification of goods or solutions for a federal trademark application when simultaneously navigating the trademark challenges faced by cannabis corporations.
As we’ve written about extensively, federal trademark protection is incredibly restricted for firms operating in each the hemp- CBD and cannabis spaces. You can study a lot more about these limitations right here:
Most considerably for cannabis enterprise owners, a single requirement for registration of a federal trademark is that the applicant has produced “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, offer you 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 mostly intended or developed for use in manufacturing, compounding, converting, concealing, making, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human physique a controlled substance, possession of which is unlawful beneath the CSA.” Moreover, 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 properly.
The query I’m asked most often with respect to crafting a specification of goods for a U.S. trademark application is no matter if the applicant can merely omit any references to cannabis in their specification and stay clear of scrutiny in the course of the examination procedure that way. The brief 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 producing lawful use of your mark in commerce. Even though an application like this may possibly slip previous an examining lawyer, it would eventually be void or unenforceable, and of no worth to the applicant.
In addition–and this is one thing I see most often with trademark applications proposed by foreign applicants–overly broad specifications can be a enormous trouble and can eventually lead to cancellation of the complete U.S. trademark registration. It is vital 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 actually can not emphasize this adequate. 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. Stated one more way, an try to grab broader protection than an applicant is entitled to can really leave them with no protection at all.
For these causes, 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.