Delta-8 Trademarks Update

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

What AK Futures really did was affirm a preliminary ruling in a trademark dispute the place legality of delta-8 merchandise was one in every of quite a few points at play. In an effort to have a protectible trademark, the nice or service should be lawful in commerce. The infringer argued that delta-8 merchandise weren’t lawful. As a part of the preliminary injunction, the Ninth Circuit agreed that the plaintiff was “possible” to reach establishing that the merchandise have been lawful, in the event that they got here from hemp and in the event that they contained underneath 0.3% delta-9 THC. This was a preliminary ruling, but it surely’s possible that the court docket would rule equally on some form of remaining ruling. Nevertheless, to say that this case is the be-all-end-all for delta-8 is simply, nicely, improper. The case shouldn’t be precedential anyplace exterior of the Ninth Circuit.

The AK Futures court docket held that “AK Futures is prone to succeed on its trademark declare as a result of its delta-8 THC merchandise aren’t prohibited by federal legislation, they usually could subsequently assist a sound trademark.” A yr and a half later, have any D8 merchandise supported a sound trademark?

In response to USPTO, as of January 2, 2024, it has registered 4 logos with the time period “delta-8” included of their items and companies identifications. In all 4 instances, the point out of D8 is exclusionary, stipulating that the products or companies described can’t be or contain items containing delta-8. For instance, one of many descriptions is “Bar cleaning soap; Physique butter; Physique scrub; Physique sprays; Bubble bathtub; Lip cream; Bathe gel; Pores and skin lotions; Beauty bathtub salts; Lip balm … all the foregoing not containing delta-8 tetrahydrocannabinol THC …”

On this case, initially USPTO refused the applying, noting in an workplace motion that:

the Applicant’s web site clearly states ‘All spa merchandise are made with CBD and Delta8 THC!’ Thus, the identification of products is broad sufficient to incorporate items that include Delta-8. As mentioned above and as mirrored within the connected paperwork, tetrahydrocannabinols are listed on Schedule I underneath the CSA. Particularly, Schedule I identifies ‘THC, Delta-8 THC, Delta-9 THC, dronabinol and others.’

The workplace motion goes on to clarify that 2018 Farm Invoice’s carveout of hemp from the Managed Substances Act’s prohibition on marijuana “explicitly applies to delta-9 THC, and this delta-9 limitation language to the identification of products doesn’t convert Schedule I illegal items (e.g., delta-8 THC) to items which may be lawfully utilized in commerce.” Keep in mind that the workplace motion was issued on July 7, 2022 – a month and a half after the AK Futures choice was handed down – but USPTO didn’t equivocate and plainly referred to delta-8 items as illegal.

There are over 100 pending functions figuring out delta-8 items and companies. Maybe in its remedy of those, USPTO will take a distinct tack. To this point, nevertheless, it’s clear that AK Futures didn’t change USPTO’s method and registration of a trademark in connection to D8 merchandise has not occurred.