The U.S. Patent and Trademark Office’s refusal to register trademark applications that identify non-cannabis products and certain hemp CBD products reflects an excessive dogmatic approach that ultimately reduces the safety of Americans. As the cannabis industry continues to enter the commercial mainstream, extending the trademark rights of cannabis companies’ products to cannabis companies’ products will provide them with additional incentives to improve their reputation for quality and safety, thereby enabling them to be in the legal market at the state level. The edge is distinguished from the actors. . In addition, it will authorize cannabis companies to work with law enforcement agencies to hunt down counterfeiters who counterfeit unregulated products.

According to reports, in March, Florida law enforcement agencies expressed concern about “THC flavored sweets and snacks… entering the hands of children and young people.” Tetrahydrocannabinol (THC) refers to tetrahydrocannabinol, “this substance… is mainly responsible for the effect of marijuana on the mental state of people.” The content of tetrahydrocannabinol in the cannabis plant determines whether the plant is considered legally Marijuana or marijuana. On a dry weight basis, cannabis with a THC content of more than 0.3% is considered cannabis, and it is cannabis under the Controlled Substances Act. In contrast, after the enactment of the 2018 Agriculture Improvement Act (commonly referred to as the 2018 Farm Bill), hemp with THC ? 0.3% is considered hemp, which is not a controlled substance according to the CSA.

However, although cannabis and cannabis products with THC or less than 0.3% are no longer considered controlled substances, certain cannabidiol-containing cannabis products are still illegal under federal law. What needs to be clear is that the Convention on Biological Diversity itself is not illegal. However, the US Food and Drug Administration believes that under the Federal Food, Drug, and Cosmetic Act, foods, dietary supplements and drugs containing CBD cannot be legally sold.

The THC candy found in Florida has attracted special attention from officials because “certain cannabis foods are hard to find at first glance.” The Charlotte County Sheriff’s Office (CCSO) warned in a Facebook post: “If you don’t observe carefully, you will never know these candies that are surprisingly similar to ordinary candies. [are] It is actually THC infused food. “

The next image, provided by CCSO, clearly depicts the packaging and highlights the trademarks of well-known candy brands such as Skittles and Nerds. As CCSO pointed out, only after careful inspection can the true nature of the candy be revealed. For example, the Cheetos bag shown in the image provided by the Sarasota County School District is printed in the lower left corner with a small square containing the letters “THC” and the illegible milligram content on the image provided. In the lower right corner, there is a triangle framed with a marijuana leaf and an exclamation mark. Below it is the letter “CA”.

Those familiar with cannabis terms and images will be immediately reminded of the existence of the term THC and the familiar shape of cannabis leaves. However, it is reasonable to assume that there are many people who cannot establish a connection between these symbols and marijuana. As a result, there is a real risk that, in some cases, people who do not want to consume THC or who do not absorb any marijuana at all will eat edible food.

Trademark rights

Because of the risks of counterfeit products such as the candy found in Florida, the laws of the United States and almost every country in the world protect trademark rights. Legislators want the public to guarantee that the skittles they buy in shops in Sarasota or Bradenton, Florida, are manufactured by Wrigley or authorized by Wrigley. As Wrigley’s proprietary trademarks, such as SKITTLES’s exclusive use rights, unauthorized use of these trademarks is prohibited.

The fact that fake candies found in Florida contained controlled substances is certainly newsworthy, but it is basically irrelevant in the context of trademark rights. Needless to say, candy manufacturers like Wrigley do not want to put products containing THC in branded bags. At the same time, it does not want to put candy of unknown origin in such a bag. There are many reasons for this situation, especially the potential loss of profit. In addition, companies like Wrigley do not want to lose decades of good reputation due to unsanitary or disgusting fakes by dozens of criminals.

As far as the government is concerned, they are concerned about the risks that counterfeit products pose to consumers. By definition, counterfeiters are carried out within the scope of the law; their business model depends on anonymity and the consequent lack of accountability. If a candy manufacturer is willing to infringe trademarks in pursuit of profit, it is likely that it will also be willing to ignore food safety laws, just as we should not expect manufacturers of counterfeit toys to comply with child safety regulations.

Trademark rights play a key role in the effective operation of the consumer market. It motivates companies to innovate by protecting their exclusive rights to monetize their brands. These rights also provide additional incentives for maintaining high quality and safety standards.

However, the situation of Florida THC candy reminds us that many cannabis companies that operate legally in more and more states have been deprived of trademark protection rights, which is detrimental to the public. The USPTO refuses to register trademarks for products considered to be hemp (that is, hemp with more than 0.3% THC) and certain CBD products (such as edible foods). The FDA considers the sale of these products to be illegal.

Challenges facing cannabis companies

Like companies in other economic sectors, cannabis companies are also at risk of counterfeiting their products. Like other counterfeit products, this not only brings risks to the cannabis company itself, but also to consumers.

For example, consider a company that legally produces CBD edible food under Washington State law. The company is subject to strict regulatory oversight in its state, but it does not have the right to obtain federal trademark protection against anonymous infringers who sell completely unregulated food.

Another risk involves incorrect identification of products. For example, counterfeiters may forge products that contain THC and have fake labels as counterfeit products, indicating that they are only cannabis products. It may also misreport THC or CBD amounts.

The tetrahydrocannabinol (THC) food found in Florida poses a serious risk to potential consumers. Fortunately, the fact that fakes infringe on household trademarks such as Cheetos and Skittles may help trigger the alarm. Maybe the teacher who eats authentic Cheetos noticed that the packaging in the student’s Cheetos bag is a bit skewed. Parents may be surprised by the softness and consistency of the food, which is inconsistent with the actual feeling of eating and drinking.

However, at least for now, almost no cannabis company enjoys such a strong brand awareness, which means that few people can notice irregularities in packaging or product features.

In addition, companies such as Wrigley, Ferrara Confectionery and Frito-Lay Inc., which have trademarks of “Skittles,” “Nerds,” and “Cheetos,” usually implement brand protection programs. As part of these plans, they conduct market monitoring to help detect the flow of counterfeit goods and incorporate anti-counterfeiting technology into their genuine products.

They also cooperate with law enforcement agencies, such as recording their intellectual property rights with customs agencies such as the U.S. Customs and Border Protection, to promote efforts to prevent counterfeit goods transactions.

The way out?

Cannabis companies are largely deprived of tools to fight piracy. The company may find counterfeit activity, but if there is no enforceable trademark, it may not be of much use. A reasonable solution to this problem is to allow cannabis companies officially registered with the state government to register their trademarks at the federal level for all their products (including products considered to be cannabis and CBD products not approved by the FDA).

The U.S. Patent and Trademark Office’s examination guidelines point out: “According to federal law, the use of trademarks in business must be legal before they can be used as the basis for federal registration” and pointed out that the “Trademark Examination Procedure Manual” section 907 is authorized. In turn, the manual also points to various institutions, including Articles 1 and 45 of the Trademark Law.

It is worth noting that the word “legal” does not appear at all in Section 1, while Section 45 only defines “business” as “all businesses that may be legally regulated by Congress.”

However, in practice, legal use has become a requirement, and several decisions of the Trademark Trial and Appeal Board on this subject support this. According to TTAB:

Hold otherwise it will be placed [USPTO] In an abnormal position, accepting goods as the basis of business registration is illegal under the regulations that specifically control the flow of such goods in commerce.

According to the practices of the USPTO and TTAB, the only realistic way to extend trademark protection to cannabis companies may be through amendments to the Trademark Law or new federal legislation. This move will represent a step towards harmonizing federal laws with the country’s changing cannabis landscape without requiring lawmakers to consider changing the legal status of cannabis and CBD itself.

Considering that it would be in the public interest to extend full trademark protection to cannabis companies by providing consumers with unregulated products, this should not be a controversial move.

Editor’s note: A version of this article was first run on Law360 on May 3, 2021.