Industry Organizations Weigh in on Cannabis Trademark Issues Fighting for Consumer Safety

Posted by on March 08, 2022

Americans for Safe Access and the International Cannabis Bar Association File Amicus Brief Regarding Joy Tea, LLC. 

Washington DC-- Americans for Safe Access (ASA) and the International Cannabis Bar Association (INCBA) filed an Amicus Brief arguing that through the United States Patent Trademark Office’s (USPTO) per se application of the "lawful use requirement" to the cannabis industry, consumers are deprived of basic protections available to all other product sectors and also denies hemp and cannabis companies of trademark protection benefits.  

The USPTO’s practice is that, in order to grant a trademark registration based on an intent-to-use application, an applicant must use the mark in lawful commerce within 36 months following allowance. The USPTO allows applications to many industries, including the pharmaceutical industry, on the theory that lawful use will be possible within that 36-month horizon. But the USPTO does not even allow cannabis and certain hemp applications, based on their interpretation of the “lawful use” requirement. Because the USPTO does not offer the same latitude to cannabis industry market participants, it has rendered trademark protections for nearly every cannabis-industry product unattainable. 

“Lack of trademark protections hurt patients, consumers, and companies,” said Debbie Churgai, ASA’s executive director. “Patients rely on branding to identify product sources, safety, and consistency. Businesses rely on trademarks to curtail counterfeited products and ensure that customers know exactly what they are buying.” 

In this case, due to the Food, Drugs, and Cosmetics Act (FDCA), the USPTO has applied a per se rule that deprives food, beverage, and other ingestible products containing CBD, even CBD derived from hemp, from obtaining trademark protection. As a practice, the USPTO refuses to issue trademark protection for infused foods and beverages and other ingestible products, regardless of whether the products THC level is below the .3% threshold, which is legal under the 2018 Farm Bill.  

Congress has demonstrated its intent to make these hemp products legal through its passage of the 2018 Farm Bill, the reauthorization of the Rohrabacher-Blumenauer amendment, and the numerous bills from both sides of the aisle pressing for a legalized and regulated cannabis market. 

ASA and INCBA believe that it is time for our federal agencies to reflect the values of our national legislature, our state laws, and the already-changed public stance on cannabis in the United States. 

“We believe that it is time to allow the cannabis industry and our patients the same rights and protections as ‘traditional’ industries,” said James Gourley, appellate counsel for ASA and INCBA.

"The lack of federal trademark protection in the United States for the cannabis sector has had and will continue to have disastrous effects for patients, consumers, and the many responsible brand owners continuing to innovate in this fast-growing sector,” said Shabnam Malek, INCBA co-founder, former president and board member.  “This litigation and the work ASA and INCA have done, including Mary Shapiro and James Gourley, who co-wrote the Amicus Brief pro bono, will have impact far beyond a single trademark registration -- if we are successful in moving the needle, much needed protection for patients and consumers will soon follow." 

“Effecting change at the USPTO to protect cannabis and hemp brands is critical to achieving consumer protection across the country,” said Mary Shapiro, INCBA advisory board member and ASA board member. 

“The patchwork quilt of existing trademark protection at the federal and state levels doesn’t match what is happening in the cannabis marketplace.  

Consumers presently have access to legal cannabis, where medical cannabis is state regulated in 38 states and adult use is lawful in 18 states and DC, and hemp products (except infused foods and beverages and supplements) are lawful throughout the country. 

“Simply put, consumers presently do not have the protections intended under the Lanham Act. Brand collision and confusion among consumers, including and especially medical cannabis patients, is inevitable – unless or until the USPTO elects to issue federal trademarks, regardless of whether the products are lawful at the federal level.”