Cannabis Rescheduling and Trademarks

Home | Canna Law Blog | Cannabis Rescheduling and Trademarks Cannabis rescheduling appears to be a matter of time and my colleagues have written about the possible implications (see here, here, and here). Rescheduling to a less restrictive category will also have implications for trademarking by cannabis brands. By broadening the legality of cannabis goods and services, rescheduling will also make more canna trademarks eligible for federal protection. The U.S. Patent and Trademark Office (USPTO) will refuse the registration of any trademark used in connection with goods or services that are unlawful according to federal law. That includes all cannabis that is considered marijuana under the Controlled Substances Act (CSA), that is, all cannabis with a THC content that exceeds 0.3%. Marijuana's inclusion in the most restrictive controlled substances schedule pretty much closes the door on any activities involving it being considered legal under federal law. Cannabis rescheduling would change that. Per Health and Human Services' recommendation, many commentators believe that cannabis' new home is likely to be Schedule III. Schedule III substances are those that "have a potential for abuse less than substances in Schedules I or II and abuse may lead to moderate or low physical dependence or high psychological dependence." According to the Drug Enforcement Administration (DEA) Diversion Control Division, Schedule III substances include "products containing not more than 90 milligrams of codeine per dosage unit (Tylenol with Codeine®), and buprenorphine (Suboxone®)." That ® indicates a registered trademark, reflecting the fact that trademarks can be registered in connection to Schedule III substances. In turn, this underscores that, although still controlled, Schedule III substances can, under certain circumstances, be used legally. ® symbols can be found within the examples of substances provided for all schedules, except Schedule I, where "marihuana" is currently found. Cannabis rescheduling will make it possible to register trademarks in connection to cannabis even if cannabis is only down-scheduled to Schedule II. OxyContin® is an example of a Schedule II substances whose trademark is registered. Despite eventual cannabis rescheduling, some cannabis brands will likely continue to face issues when it comes to federal trademark protection. For example, hemp is not a controlled substance, but hemp-CBD foods are considered unlawful by the Food and Drug Administration (FDA). Under the lawful use requirement, USPTO will deny registration of trademarks in connection to any good or service that is unlawful according to federal law, not just those that are in violation of the CSA. For some brands, though, rescheduling will make it possible for them to obtain federal trademark protection. This is the right time for those brands to start revising their trademark strategies, with a view to ensuring they take full advantage of the opportunities presented by cannabis rescheduling. This includes not only analyzing whether their goods and/or services are likely to be eligible for trademark protection, but also looking at trademarking fundamentals, such as making sure that their trademarks are not generic, geographically descriptive, or confusingly similar to registered or previously applied-for trademarks. Check Out Our Cannabis Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. 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