Harris Sliwoski: Delta-8 Trademarks Update

The impact on Delta-8 THC (“D8”) of AK Futures v. Boyd Street Distro, a 2022 Ninth Circuit decision, has been widely exaggerated. As my colleague Griffen Thorne explains:

What AK Futures actually did was affirm a preliminary ruling in a trademark dispute where legality of delta-8 products was one of a number of issues at play. In order to have a protectible trademark, the good or service must be lawful in commerce. The infringer argued that delta-8 products were not lawful. As part of the preliminary injunction, the Ninth Circuit agreed that the plaintiff was “likely” to succeed in establishing that the products were lawful, if they came from hemp and if they contained under 0.3% delta-9 THC. This was a preliminary ruling, but it’s likely that the court would rule similarly on some sort of final ruling. However, to claim that this case is the be-all-end-all for delta-8 is just, well, wrong. The case is not precedential anywhere outside of the Ninth Circuit.

The AK Futures court held that “AK Futures is likely to succeed on its trademark claim because its delta-8 THC products are not prohibited by federal law, and they may therefore support a valid trademark.” A year and a half later, have any D8 products supported a valid trademark?

According to USPTO, as of January 2, 2024, it has registered four trademarks with the term “delta-8” included in their goods and services identifications. In all four cases, the mention of D8 is exclusionary, stipulating that the goods or services described cannot be or involve goods containing delta-8. For example, one of the descriptions is “Bar soap; Body butter; Body scrub; Body sprays; Bubble bath; Lip cream; Shower gel; Skin lotions; Cosmetic bath salts; Lip balm … all of the foregoing not containing delta-8 tetrahydrocannabinol THC …”

In this case, initially USPTO refused the application, noting in an office action that:

the Applicant’s website clearly states ‘All spa products are made with CBD and Delta8 THC!’ Thus, the identification of goods is broad enough to include goods that contain Delta-8. As discussed above and as reflected in the attached documents, tetrahydrocannabinols are listed on Schedule I under the CSA. Specifically, Schedule I identifies ‘THC, Delta-8 THC, Delta-9 THC, dronabinol and others.’

The office action goes on to explain that 2018 Farm Bill’s carveout of hemp from the Controlled Substances Act’s prohibition on marijuana “explicitly applies to delta-9 THC, and this delta-9 limitation language to the identification of goods does not convert Schedule I unlawful goods (e.g., delta-8 THC) to goods that may be lawfully used in commerce.” Bear in mind that the office action was issued on July 7, 2022 – a month and a half after the AK Futures decision was handed down – yet USPTO did not equivocate and plainly referred to delta-8 goods as unlawful.

There are over a hundred pending applications identifying delta-8 goods and services. Perhaps in its treatment of these, USPTO will take a different tack. So far, however, it is clear that AK Futures did not change USPTO’s approach and registration of a trademark in connection to D8 products has not occurred.

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