Marijuana’s Potential Reclassification: What It Means for Brand Owners

There is a quite a lot of buzz around potential reclassification of marijuana from Schedule I to Schedule III under the Controlled Substances Act (CSA).

This reclassification, proposed by the DEA and backed by HHS, recognizes marijuana’s medical use and lower potential for abuse.

If implemented, this change could have significant impact on the cannabis industry business, particularly in terms of intellectual property protections. But what does it mean for brand owners and their cannabis trademarks?

Trademark Protection with Current Schedule I Classification: Currently, the Schedule I classification makes marijuana federally illegal. This has made it difficult – if not impossible – for businesses selling marijuana products to register federal trademarks. The 2018 Farm Bill opened the door to trademark registration for hemp-based products — with hemp defined as “the plant Cannabis sativa L. and any part of that plant…with a delta-9 tetrahydrocannabinol [(THC)] concentration of not more than 0.3% on a dry weight basis.” However, there are still key limitations for federal trademark protection, such as consumables with CBD-ingredients – think edibles.  Edible and beverage CBD-ingredient products are still federally illegal under the Federal Food, Drug & Cosmetics Act (FDCA).

Impact of Schedule III Classification: As required under the Lanham Act, the USPTO will only register trademarks that are lawfully in use. While rescheduling marijuana would allow more opportunities for medical research and potential patent protections as explored in our companion article, whether reclassification will make marijuana federally legal for sale in interstate commerce remains key to a brand owner’s ability to secure federal trademark protection.

Trademark and Plant Variety Protection (PVP) Considerations: While reclassification will provide a path forward for Plant Variety Protection Certificates, registering varietal names as trademarks remains off limits. The Lanham Act expressly prohibits registration of plant varietal or cultivar names because they are considered generic for the particular plant or seed by which the variety is known to consumers – think “Gala” apple; thus, even if the varietal or cultivar name was initially coined, its name cannot function as a source identifier.

However, brand owners may still be able to obtain trademark protection for products that include those varietals by, for example, using coined or distinctive marks for the products, distinct from the varietal name.

This article appeared in the Sept. 2024 issue of MarkIt to Market^®‘s Watching the Pot™ series. To view our past issues, as well as other firm newsletters, please click here.