415.398.3141 iplaw@evoke.law

BREAKING NEWS: U.S. Trademark Office Issues Guidance on Applications for Hemp and CBD Products

In the wake of the 2018 Farm Bill, the United States Patent and Trademark Office (Trademark Office) issued an Examination Guide regarding the prosecution of applications covering hemp derived goods and services. The great news is that there is a pathway to federally registering brand names for hemp-based cannabinoid products, though there are some caveats and restrictions that we discuss below. Despite this significant advance, applications for hemp-derived cannabinoid products applied-for prior to the passage of the 2018 Farm Bill face some challenges. First, a recap of what remains the same: The Trademark Office reiterated that registrations will not issue for goods and services that are derived from “marijuana,” as defined under the Controlled Substances Act (CSA), because marijuana remains federally unlawful. This also includes “paraphernalia” that is primarily intended for use in manufacturing, distributing, or dispensing marijuana. Keep in mind that CBD may be derived from either marijuana (as defined under the CSA) or hemp (as defined by the 2018 Farm Bill). Under the 2018 Farm Bill, many hemp products are now federally lawful, so long as the products comes from any part of the Cannabis sativa L. plant, whether growing or not, with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis. However, federal registration is not available for all hemp products: United Sates Department of Agriculture (USDA) Controls Domestic Production: While the 2018 Farm Bill made hemp goods potentially lawful if they are derived from “hemp” (i.e., contain less than 0.3% THC), to date, the USDA has not promulgated regulations, created its own hemp-production plan, or approved any state or...

2018 Farm Bill: Registering Trademarks & Distribution of Hemp Products

On December 20, 2018, President Trump signed the Agricultural Improvement Act of 2018 (“2018 Farm Bill”), which marked a monumental shift in federal policy towards cannabis. So, what changed? Significantly, the 2018 Farm Bill defines “hemp” as the Cannabis Sativa L. plant, any parts of the cannabis plant, and all derivatives therefrom, having a THC concentration of not more than 0.3% on a dry weight basis, and removes “hemp” from the CSA’s definition of marijuana. Meaning, hemp (and all that is derived from hemp) is no longer a controlled substance under the CSA. That is, all hemp with a THC content of less than 0.3% is lawful—whether sourced internationally or grown pursuant to the 2014 Farm Bill. Additionally, the 2018 Farm Bill expressly clarifies that commercialization and interstate transportation, as well as import and export, of hemp-derived products is federally lawful. However, the implementation date of certain aspects of the 2018 Farm Bill is unclear. While this is a huge win for the cannabis industry, the 2018 Farm Bill does not legalize all hemp-derived products everywhere in the U.S. What is still federally unlawful? Even if the CBD comes from hemp, the Federal Food Drug and Cosmetics Act (enforced by the FDA) prevents the sale of products containing CBD that are for ingestion, unless they have undergone the FDA’s drug approval process. The FDA’s limitation applies specifically to ingestible products, e.g., supplements, oral sprays, edibles, and tinctures. Meaning, CBD-infused topicals and vape products appear to be in the clear (at least, for now). Additionally, the FDA has and will continue to enforce against companies selling CBD products that claim...

Guest Blog: The “Green Rush” to Register Cannabis Trademarks in Canada

Guest authors John H. Simpson & Shan Arora of Shift Law discuss the current landscape of cannabis trademark applications in Canada. On October 17, 2018, the sale of recreational cannabis became legal in Canada and the “green rush” to profit from the industry is on. For many months, industry players have been hurrying to stake claims to market share and to various forms of intellectual property rights in recreational cannabis products and services. However, when it comes to selecting and protecting cannabis-related brand names, in reality, the “green rush” has become a game of hurry up and wait. Currently, there are approximately 2200 trademark applications pending in the Canadian Intellectual Property Office (CIPO) with claims for cannabis or cannabis-related goods or services that have yet to be examined. This backlog of applications is partly responsible for the increasingly lengthy processing time for Canadian trademark applications. It is now taking more than 12 months for a first examiner’s report on a trademark application and the total time from filing to registration is now about 18-24 months. The vast majority of these applications were filed prior to legalization on the basis of “proposed use,” meaning the applicant has not yet used the mark with the applied-for goods or services as of the filing date. Filing proposed use applications is a wise strategy. During examination at the CanadianTrademark Office, as in the U.S., the first person to file an application has priority over subsequently filed confusingly similar proposed use trademarks. The examination considers all trademark applications for a likelihood of confusion with trademarks in prior-filed applications and registrations. At the outset, the...

CBD Roundup: Updates at the USPTO, Rescheduling, & More

Evoke Law Persuades USPTO to Register Trademark for CBD from Hemp Products Mid-2017, the U.S. Patent and Trademark Office (USPTO) started emphatically refusing trademark registration for marks covering products containing CBD from industrial hemp. Previously, it seemed that so long as the applicant confirmed that the CBD was derived from industrial hemp that was internationally sourced and contained no more than 0.3% THC, the USPTO would grant registration. But last year, the USPTO changed its stance and required that the source of the CBD be from only the parts of the plant excluded under the CSA’s definition of “marihuana,” namely the mature stalks and seeds, without commingling with other resinous parts of the cannabis plant. But here’s the catch – the USPTO took the position that there are no commercially appreciable amounts of CBD in mature hemp stalks, and therefore rejected the declaration from the applicant’s supplier of the hemp biomass expressly confirming that the source of the CBD was exclusively derived from the mature stalks without commingling of resin. With the support and assistance of technical advisor, Sanford Wolgel, Phd., and expert testimony from Jake Stout, Phd., Evoke Law provided the USPTO with irrefutable scientific evidence that the mature stalks do indeed produce CBD in appreciable quantities without the commingling from other plant parts, including any ‘resinous’ secretions. And the application is now moving forward to registration. DEA Reschedules (Some) CBD On September 21, 2018, the U.S. Drug Enforcement Agency (DEA) announced that it was rescheduling certain drugs containing cannabidiol (CBD) from Schedule 1 to Schedule 5. This action comes on the heels of the FDA approving the...

New Prop 65 Regulations Are Active!

As of August 30, 2018, California businesses must adhere to the new regulations relating to Prop 65 warnings. By way of background, The Safe Drinking Water and Toxic Enforcement Act of 1986 (a/k/a Prop 65) requires businesses to notify Californians about significant amounts of chemicals in the products they purchase, encounter in their homes or workplaces, or that are released into the environment. Businesses are required to provide a “clear and reasonable” warning before knowingly and intentionally exposing anyone to a listed chemical. Prop 65 allows for private enforcement actions if it is brought “in the public interest.” This indefinite standard has notoriously been exploited by persons seeking attorneys’ fees and settlements rather than improving public safety. In particular, the cannabis industry has experienced its fair share of Prop 65 enforcement actions. For example, in May 2017, a single person sent approximately 700 60-day warning notices to dispensaries, alleging Prop 65 violations due to the presence of Prop-65 listed fungicides and insecticides in edible products. Failing to provide Prop 65 notices can result in penalties as high as $2,500 per violation per day. Due to this enforcement risk, many dispensaries and delivery services are requiring that all products have a Prop 65 warning, regardless of the type of product or if the product does not, in fact, contain any of the Prop 65 chemicals. However, Prop 65 does not apply to all cannabis business or products, therefore, it is essential to understand when (and if) Prop 65 applies, and how to comply. Prop 65’s warning requirements do not apply to: Businesses with less than 10 employees Products that do not...

3 Recalls, 1 Month – Be Prepared!

For anyone in the California cannabis business, July 1, 2018 marked the beginning of a new era of cannabis regulations. In addition to more stringent packaging and labeling requirements, cannabis flower and cannabis products must also now be tested for a second more expansive list of pesticides, as well as residual solvents and foreign materials. While all testing labs adhere to the same set of regulations, there are no standardized methodologies for how labs test for cannabinoid concentration, composition, and contaminants. The lack of standardization is leading to inconsistent testing results and clearly presenting major problems for cannabis producers, evidenced by 3 voluntary product recalls announced within less than 1 month. On July 25th, The Bloom Brand voluntarily recalled a batch of cannabis products that contained Myclobutanil, a fungicide commonly found in food production. The Bloom Brand has not yet explained how the contaminated products made it past laboratory testing and into over 100 retail stores across California. Two days later on July 27, Lowell Herb Co., a producer of cannabis pre-rolls, voluntarily recalled a batch of products from 74 California dispensaries. Interestingly, the recalled product batch was initially cleared for sale after being approved by two different testing labs. However, two weeks after the batch was initially approved, results from a third test reversed the decision for failing to pass the state’s testing standards. The contaminant in question was not identified. On August 19, Venice Cookie Company initiated a voluntary recall of its cannabis-infused beverages due to a change in the passing grade of its compliance testing. The product batch initially passed testing in June, but a month...