Partner
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.
As of the date of this article, cannabis remains a Schedule I controlled substance under the Controlled Substances Act, and the USPTO continues to refuse trademark applications for cannabis-related goods and services. The USPTO’s examining attorneys apply a straightforward test: if the goods or services identified in the application are unlawful under federal law, the application will be refused because federal trademark law requires that the mark be used in lawful commerce.
This prohibition has required cannabis businesses to rely on state trademark registrations for protection of their brands within their home states. California, Colorado, and other cannabis-legal states maintain trademark registration systems that allow cannabis brands to obtain state-level protections. However, state registrations provide no protection in states where cannabis is illegal and create no nationwide priority against later federal applicants who may seek to register similar marks for lawful goods and services.
A few narrow exceptions have been carved out. The USPTO has allowed federal trademark registrations for hemp-derived CBD products (products with less than 0.3% THC) following the Agricultural Improvement Act of 2018 (the 2018 Farm Bill), which removed hemp from the Schedule I definition. This has created an interesting asymmetry: hemp-based CBD product brands can obtain federal trademark protection, while THC-based cannabis product brands cannot — even if the products are virtually identical in effect.
If cannabis is moved to Schedule III as the DEA proposed, this would mean that cannabis use, possession, and sale is no longer categorically illegal under the Controlled Substances Act. Rather, cannabis would join other Schedule III substances — like ketamine, anabolic steroids, and certain opioid combination products — that are controlled but available for lawful use under specified conditions.
Rescheduling alone would not automatically make recreational cannabis businesses lawful under federal law. The Controlled Substances Act still requires that distribution of Schedule III substances comply with DEA registration requirements and that medical uses be approved by the FDA. The recreational cannabis market that exists in states like California, Colorado, and Michigan operates under state law that affirmatively authorizes recreational use — but no federal law currently authorizes recreational cannabis commerce.
Given the rapidly evolving legal landscape, cannabis businesses should take a proactive approach to trademark strategy. Even before federal registration becomes available, there are steps that can strengthen a brand’s legal position:
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
Read more about Six Important Trademark Questions Answered
The USPTO’s failure-to-function doctrine rejects trademarks that don’t identify a unique source. Learn what causes these refusals, why distinctiveness matters, and how to choose a stronger mark.
Read more about Trademark Failure to Function: Why the USPTO Rejects Trademarks and How to Avoid It
If another business has registered your trademark, you may still have legal options. Learn how first-to-use rights, USPTO oppositions, and common law claims can protect your brand.
Read more about Trademark Already Registered by Someone Else? Your Legal Options