As reported by AP News, the federal Drug Enforcement Administration (“DEA”) will begin a rulemaking process that is intended to reclassify cannabis — marijuana — as a Schedule III drug under the Controlled Substances Act. Cannabis is currently scheduled as a Schedule I drug. Schedule I drugs are deemed the most dangerous drugs and, presumably, the type of drugs most deserving of the attention of law enforcement. The DEA is one of the federal law enforcement agencies tasked with interdicting drug trafficking into the U.S. and arresting traffickers and dealers. The Schedule change is supported by the White House, with Attorney General Garland making the announcement at the end of April 2024. The DEA’s formal notice of proposed rulemaking was published three weeks later, on May 21, 2024.
How will a rescheduling impact the ability of cannabis brands to obtain federal trademark registration?
Federal trademarks are registered by the U.S. Patent and Trademark Office (“USPTO”). Federal trademark law sets out the various legal requirements for registration and also sets out various limitations. For cannabis-related businesses, the key limitation is that no federal trademarks will be registered if the trademark relates in any way to an illegal business or product. As a Schedule I substance, cannabis use, possession, and sale is illegal. As such, cannabis-related trademarks cannot be registered at the federal level.
Changing the Schedule status of cannabis will not, by itself, change the status of cannabis as illegal at the federal level. Thus, the inability to register a cannabis-related trademark will not change without at least an additional regulatory step. However, with a second regulatory step, the door has been opened.
What is the potential two-step process?
As just stated, by rescheduling cannabis, the door is opened to potentially making various uses of cannabis lawful enough to satisfy the USPTO’s requirements for registration. Essentially, the second step involves action by the U.S. Food and Drug Administration (“FDA”) whereby the FDA approves cannabis for medical purposes and says that cannabis can be dispensed with a doctor’s prescription. In many respects, this has already been done since there are well-documented medical uses for marijuana. Further, many States have long-approved marijuana for medical purposes if a doctor’s prescription is obtained.
There are many examples of even Schedule II controlled substances that have received FDA approval for use and have, subsequently, had their trademarks registered. The DEA’s website lists several examples (under the tab (or bar) for “Definition of Controlled Substance Schedules”) for both Schedules II and III that have registered trademarks, including:
“Examples of Schedule II narcotics include: hydromorphone (Dilaudid®), methadone (Dolophine®), meperidine (Demerol®), oxycodone (OxyContin®, Percocet®), and fentanyl (Sublimaze®, Duragesic®). Other Schedule II narcotics include: morphine, opium, codeine, and hydrocodone.
Examples of Schedule IIN stimulants include: amphetamine (Dexedrine®, Adderall®), methamphetamine (Desoxyn®), and methylphenidate (Ritalin®).
Examples of Schedule III narcotics include: products containing not more than 90 milligrams of codeine per dosage unit (Tylenol with Codeine®), and buprenorphine (Suboxone®).
Examples of Schedule IIIN non-narcotics include: benzphetamine (Didrex®), phendimetrazine, ketamine, and anabolic steroids such as Depo®-Testosterone.”
The circle R symbols identify federally registered trademarks under which the controlled substances are marketed and sold for medical uses.
It should be noted that this process will not succeed for cannabis products that are sold commercially for personal use. However, registering a federal trademark for the medical use of cannabis is a crucial first step that makes a trademark legally protectable.
Contact the Trademark Attorneys at Revision Legal
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