Get Your Songs Ready for Music Supervisors



Get Your Songs Ready for Music Supervisors

by Susan Basko, JD.


The other day, I attended a meetup with several top music supervisors - the people who help choose songs for movies, television, and ads. One thing discussed was Clearance -- the need to be able to legally clear your song quickly and surely. If your song cannot be cleared quickly and easily, the Music Supervisor has to skip your song and move on with others that are easy to clear.
That's because Music Supervisors have to move quickly and often there is very little time after a show is edited to the placement of songs to the time a show is turned in for airing. If you do not have your legal ducks in a row, they are forced to move on without your music. Don't waste your time pitching your music if you don't have your legal work done right so it cannot be cleared.
The WAY to make your song easily clearable is to have ALL your legal paperwork completed and ready. This means that you have CONTRACTS all signed with everyone who was involved as a musician or producer. It means you have the COPYRIGHTS already registered on the songwriting (if you own it) on the music and lyrics, and on the SOUND RECORDING. If it is a cover song, it means you already have the licensing from the songwriter(s) and their publisher. If you have used any beats, loops, or samples from anyone else or from any existing recording, you need to have contracts signed that clearly give you license to use those.
I AM A LAWYER AND I DO THIS KIND OF WORK. I write the contracts that are exactly correct for your situation. I register the Copyrights. I advise musicians so their paperwork is done perfectly in advance so they do not miss any synch placement opportunities.
It is now taking about 4 months to get a US copyright registered on a song. Copyright law is such now that the registration must be fully completed, meaning you must have the certificate in hand. So you have to be prepared well in advance if you are going to be sending your songs out to Music Supervisors. You need Copyrights on your Sound Recording and on your Song Writing -- completed and done properly. You need a Contract signed with every single person who was involved in the creation of that Sound Recording.
That's what I do. Feel free to email me if you want to discuss. Suebaskomusic@gmail.com

Trademark Scams Aplenty

Trademark Scams Aplenty

by Susan Basko, esq.

Trademark scams are harming the work of the U.S. Trademark Office, as well as harming legitimate Trademark lawyers, and duping and defrauding trademark applicants. If you want to apply for a trademark, how can you spot a scam?  This is fairly easy -- if you are using an automated service, instead of a trademark lawyers, you have probably been taken in by a scam.  If you are not conferring directly with a real live licensed lawyer, it is probably a scam.  If it appears to cost too little, it is probably a scam.  If it arrives in the mail demanding money, it is definitely a scam.  Below, we will look at a few of the biggest trademark scam/ fraud situations going right now.  

First, I recently received this Alert from the U.S. Trademark Office.  


Trademark Alert.  U.S. lawyers: Beware of solicitations asking to use your bar credentials

The USPTO recently learned that U.S. attorneys are again receiving emails from unlicensed individuals offering to pay to use the attorney's bar credentials in trademark filings  These solicitations are a direct attempt to circumvent the U.S. counsel rule.

Although we believe that only a small percentage of practitioners are engaging in this practice, the USPTO would like to remind U.S. attorneys that such an arrangement would likely be aiding the unauthorized practice of law and also a violation of federal rules, including the USPTO's Rule of Professional Conduct, 37 C.F.R. Part 11.

Scams can adversely impact the integrity of the trademark register.  If you receive a solicitation asking to use your bar credentials, please forward it to TMScams@uspto.gov.

Explained: The US Trademark Office requires any foreign entity to hire a U.S. lawyer to conduct any work with the U.S. Trademark Office, including trademark applications and the certification process.  In addition, the U.S. Trademark Office only allows licensed U.S. lawyers to represent any other person or entity before the Trademark Office.  There are non-lawyers who engage in trademark registration scams -- and thus, they try to "borrow" credentials from lawyers.  However, as you can note in the warning above, any lawyer agreeing to this is likely to lose their law license and possibly face criminal charges.  

ANOTHER HUGE TRADEMARK SCAM involves automated websites that claim to be registering trademarks for people, often at unrealistically low prices.  This whole practice started several years ago, and this is how it works:  Only a U.S.-licensed lawyer can register a trademark for any other person or company,  So, these automated websites claim that it is the applicants themselves who are registering their own trademark.  But, this makes no sense.  Trademark registration is a process that takes at least a year, and involves interaction with the trademark examiner.  These trademark website scams also usually charge unrealistically low prices.  The registration fee itself is $250 - $350 per class of goods or services.  On top of that, there is the work of a trademark lawyer for at least a year.  So, when you do a google search and up top are listings for companies charging $49, $59 or $69 for trademark registration, you know it is a scam.  It could not possibly cost that low when the required application fee itself is several hundred dollars.

I saw one trademark scam ad touting a "Turnaround Time of 72 Hours." This is not even slightly possible.  After filing an application, it waits for about 4 months to be assigned to a Trademark Examiner. In 72 hours, the application may (or may not) show up on the USPTO Database as "LIVE."  "Live" is used to denote trademarks that are in the application process that have not yet been declared DEAD, as well as those that have been successfully registered.  Perhaps the Trademark Office should make a different designation for trademark applications that are still in the application process -- for example, "Application Pending."  Referring to fraudulent trademark applications as "LIVE" facilitates that fraud.  The scam companies can send their customers a fake trademark certificate and point to their trademark on the USPTO database with the word "LIVE" next to it.  If the scam company takes no further action on a doomed application, as things are now run at the USPTO, that "LIVE" designation will remain for a year.  That feeds the fraud and enables it.  

Tim Lince of World Trademark Review did an absolutely brilliant investigative journalism piece on these trademark scam companies.   Muhammad Burhan Mirza of Digitonics Lab was arrested for running many of these trademark websites.  He and nine others were charged with fraud and money-laundering for running sites that claimed to be doing trademark registration, logo creation, ghostwriting services, etc.  

One of the many fraud websites was one called USPTOTrademarks.com  Obviously, that name would fool a lot of people into believing it was legit.  "The website (‘usptotrademarks.com’) uses the USPTO’s logo and colour scheme, while its About Us page claims to be “a project initiated by experienced lawyers and technologists” with “12 years of experience”." The website claims to be in "San Jose, California," but the operators were arrested in Pakistan.  How did it work?  They simply sent the fake Trademark certificates to the applicants. "Even more concerningly, the report alleges that the company gave around 70% to 75% of clients “fake/fabricated” USPTO trademark certificates as part of the scam." 

Despite the flurry of arrests and allegations of fraud and extortion against these websites, some of them are still online to this day, such as USPTO Trademarks, a screen shot taken just now, shown below.  The entirety of U.S. Intellectual Property law is at stake -- at this juncture, the U.S. needs to step up and shut down these kind of scams with the same ferocity it uses to shut down kiddie porn sites.  Look at the site below-- could you blame people for being tricked into thinking this was legit?  

 

The U.S. Trademark Office has many times stated that it is not within their allowed activities to engage in prosecution of frauds or scams -- though the office does cooperate fully with authorities.  

This proliferation of scams harms the public, as well as harming the USPTO.  The only solution I can see that would work would be to require every trademark application to be filed by a licensed attorney and to have that attorney vouch for the legitimacy of the application and of his or her intent to conduct the full application process.  Federal courts require this of lawyers filing lawsuits.  It is time to do this with trademarks.  The trademark office is inundated with thousands of these fraudulent trademark applications, according to a follow-up article by Tim Lince of World Trademark Review (WTR).  In February of 2021, World Trademark Review published a list of the trademark applications made by 6 of these companies.  There are 81 pages of these trademark applications, with about 27 listed on each page!  The list gives the status of each application. Applying for a trademark is a process that takes at least a year and has various phases to it.  

If an application is going to fail, it usually takes at least a year from the date of filing for it to go DEAD on the USPTO database.  That's because a trademark application is filed and then sits for about 4 months waiting to be assigned to an Examiner.  If the Examiner issues a Nonfinal Office Action, the applicant is given 6 months to file a response.  If no response is filed or an incomplete or unsatisfactory response is filed, as would often be the case with an application not being tended to by a trademark lawyer, then it will go dead, usually several months after the 6 months deadline.  This means that applications destined to fail are on the USPTO Trademark Database as "LIVE" for about a year.  This harms and affects applicants who are trying to register trademarks that may conflict with the trademarks on the doomed applications -- their applications will be  put on hold to wait for the earlier-filed application to clear or go DEAD.  

This massive influx of trademark applications not properly made causes a huge amount of needless work for Trademark Examiners.  The Examiners are required to respond to each application as if it were legit.  Recently, however, the Trademark Office created a rule that short-circuits some of this.  The office has begun requiring an email address of the applicant.  The fraudulent companies have been in the practice of supplying their own email, probably to keep the applicant from finding out their application is not being handled properly.  After all, if a company is sending fake Trademark Certificates to 75% of its customers, the company does not want its customers in contact with the Trademark Office, where they may be alerted to the scam.  By having the Examiner request the trademark applicant's email address early on in the process, the Examiner can halt the process early on without progressing to the painstaking efforts of reviewing the application and writing a Nonfinal Office Action.

Google ads is at least partly to blame for this fiasco.  The fake and fraudulent trademark companies buy up key words and pay to have their ads at the top of the list when a person google-searches for trademark registration.  The ads offer very low prices, quick turnaround times -- none of which comport with the reality of trademark applications.  But, those being suckered into using these sites cannot be blamed -- the site says "USPTO Trademark," looks legit, etc. The REAL website of the US Patent and Trademark Office , USPTO.gov, to be truthful, is a cluttered mess.  It would be hard to blame the public for being attracted to a website that claims to be dealing in trademarks and makes it look as if the process is going to be easy, smooth, well-platformed, and affordable.  Should the US DOJ stop Google from running ads for fraudulent companies?  Better asked, WHY is the US DOJ allowing Google to run ads for fraudulent companies, companies that harm and make a mockery of the U.S. Trademark, Patent, and Copyright Offices?

The Real USPTO website -- USPTO.gov  - is cluttered, incomprehensible, has a search engine that delivers poor results, and is not in any way user-friendly.  A person wants to register a trademark, and if they do somehow manage, against all odds, to find the real USPTO website, they find up front a very dated photo of Jim Henson and the Muppets, lots of information on Covid-19, and cluttered verbiage with hundreds of links.  This ludicrously poor website design drives people to using fake and fraud websites that at least appear to offer streamlined solutions.  People get lured by absurdly low prices that, in fact, do not even cover the actual trademark registration fees.  Getting a trademark is like getting a university degree -- you can either pay a lot of money and spend a lot of time and work and get a genuine trademark and the certificate that goes with it, or you can pay $69 and fill out an online application and get a fake certificate.  

Screen shot of half of the front page of the real USPTO Website, below.  


My suggestions on how to deal with the current mess at the USPTO:

1. Require all trademark applications to be made only by licensed lawyers.  Most successful applications are already made by licensed lawyers, so all this would really do is get rid of the fraud applications and the nonsensical or poorly-made applications.  Have a list of lawyers who practice before the Trademark Office, and publish it, so the public knows how to find a real trademark lawyer.

2. Have the DOJ take aggressive action against fraudulent Trademark websites and companies, domain name ownership that confuses the public, etc.

3.  Have a public awareness campaign on what trademark is, how much it costs, and the rather complex process involved in getting a trademark.

OTHER TRADEMARK SCAMS.  

Trademark applicants, even those making legitimate applications, are besieged by mail from fake companies demanding payment for fake trademark services.  The mail usually looks like bills and comes from addresses that include company names and addresses that sound somewhat legit.  These bills demand payment of hundreds, or usually thousands of dollars.  I have come across people online who have been paying hundreds of dollars each month to "maintain" their trademark.  These people have been duped by realistic-looking bills.  IF.. if these people had registered their trademarks using a real lawyer, they could ask the lawyer about the bill, and the lawyer would tell them, "No, that is fake.  Don't pay it."  

The U.S. Trademark Office is very well aware of these scams.  The Office, unfortunately, refers to them as "misleading notices."   "Misleading notices" is far too soft a term for fake bills that cause people to pay thousands of dollars to a scam company.  "Beware of all types of offers and notices not from the USPTO. In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam." https://www.uspto.gov/trademarks/protect/caution-misleading-notices  

The USPTO provides a list of the names of some of the companies that have been sending out fake bills and notices demanding money.  You can click on any of the links to see actual examples of the misleading notices.

Solicitations originating within the United States

Solicitations originating outside the United States


This video gives additional useful information about these scam solicitations that are sent to most everyone that applies for a trademark, whether or not the applicant uses a trademark lawyer.

Justice and Justin Bieber



Justice and Justin Bieber

by Susan Basko, esq.

Justin Bieber is being sued by the French electronic music duo called Justice.  Justice registered the trademark on the left, in the French trademark system, but not in the U.S.  The Justice duo claims that the cover of Justin Bieber's latest album, called Justice, seen on the right, infringes upon their copyright.  

Let's look at why this claim is not likely to succeed.  There are many reasons.  First, Justice did not register their trademark in the U.S.  Second, Justin Bieber has not (yet) filed a trademark on "Justice."

Third, "justice" is a generic term, and this electronic duo has no hold or control over the name.  If their name were unique, such as "Megadeth" they might have some legit claim over the word.  As of now, there are 1014 live trademarks in the US trademark system that contain the word, "justice."

Fourth, Justice claims that Bieber's design on the word, "justice" is too similar to theirs, because they claim the "t" is elongated to create a Christian cross.  Look at the two designs.  Justice uses a graffiti writing style, with little arrows coming off the ends of the letters.  Bieber uses a totally different typeface, a very sleek, chunky, modern sans serif lettering. 

The overall line of the lettering on the Justice trademark swoops down and then up again.  Bieber's lettering has a straight bottom line.  In fact, Bieber's letter "t" is not elongated and has the same bottom line as the rest of his letters.

If we were discussing copyright, which is different from trademark, we would note that font styles do not have copyright.  Also, titles of albums do not have copyright.  Also, one cannot copyright a single word.  Also, a common symbol such as a cross does not have copyright. 

Then there is the idea of consumer confusion.  I doubt any fans of Justin Bieber's music have ever heard of the electronic duo, Justice.  Justice's fans have likely heard of Justin Bieber, but they are not likely to confuse these two highly divergent music artists.

I did a search of the US Trademark database to find trademarks that incorporate the word "justice" and also a design of a cross.  I found a short list, and most of them are dead.  

Then, I looked at each of these. I found three that had any possible similarity to the Justice trademark or to Justin Bieber's album cover.  This is the first -- the Medical Justice League, with a crest including a cross.  There is no similarity to either Justice's trademark or Justin Bieber's album cover design.


Next, there is an abandoned trademark using the word "justice" and a cross. Again, not similar.


Third, there is a live trademark for insurance claims that is uses a cross and the word, "justice."  It is the most similar to the French Justice music trademark and to Bieber's album cover design.  Even still, it is not similar to either.  The point here is that anyone can use the word "justice" in a trademark, along with a Latin Cross, and this does not mean it infringes.


I've read that Justin Bieber has a "Justice" clothing line planned.  He should probably get busy and file a trademark on that, before someone beats him to it.

There's another issue some people are complaining about.  Justin Bieber used some wording from Dr. Martin Luther King, Jr., as lyrics in some of his songs.  He did so with the blessing of the King family.  There is a triple blessing to Bieber using MLK's words as lyrics.  The family/ estate holds the copyright on many of Dr. King's famous writings and speeches.  They use the copyright to protect the integrity of the writings, as well as to make money for the family and estate.  This is most helpful since Dr. King died very young and was therefore not around to support his family.  His words lived on, and protected by copyright, have helped support the family.  

Some people have complained that Justin Bieber named Dr. Martin Luther King, Jr as "co-writer" on at least one song.  This is legally a correct thing to do.  The lyrics are written by MLK and therefore, he is a co-songwriter.  This also means that MLK's family or estate is entitled to publishing royalties on the song.  That could add up to quite a bit of money for the family.  

Justin Bieber is not usurping or misusing the MLK name, he is introducing MLK's words and ideas to a new generation.  He is helping spread MLK's ideas about justice.  By doing so, Justin Bieber is helping the MLK family and estate to make money.  By doing so, Justin Bieber is promoting justice in ways that are available to him as a very famous music artist.  


Inventors: Beware of Scams!

Inventors: Beware of Scams!
by Susan Basko, esq.

If you have invented something, you might want to get it patented.  The patent process is difficult and expensive.  And -- it is made more difficult by scammers who are ready and willing to take advantage of you.  This instruction sheet provided by the United States Patent and Trademark Office (USPTO) is quite useful.  Please read it and steer yourself clear of scammers.  If you want to keep a copy of this flyer for yourself, you can download it by clicking the down arrow at the bottom.

Trademarks for Creative People

Trademarks for Creative People
by Susan Basko, esq.

A trademark is a mark that signifies a good or a service that is in commerce.  Most trademarks are a word or a short set of words.  Some trademarks are a logo.  A few trademarks are a sound.  

Federal trademark registration takes at least a year to complete. There are many phases to trademark registration.  The process starts with a good search by a lawyer to see if it is likely that your trademark will register successfully.  When I am registering a trademark, I consider the initial search the most important part! If I decide that a trademark is not likely to register successfully, I will tell this to the client.  If I think it will register successfully, but with some legal wrangling, I also let the client know.  If the trademark is not likely to succeed, I offer to help the client come up with a trademark that is more likely to be successful. If your proposed trademark conflicts with an existing trademark, you won't likely be able to register it, and you might get a cease and desist letter telling you to stop using it.

It is best to have a robust trademark that is unique, creative, original, and all your very own.  A strong trademark helps build a strong business.  Most larger businesses start with one main trademark and then develop and register other trademarks over time.

 The next step is to choose the right category of goods or services in which to register your trademark.  This can be very complicated, with many factors involved.  This is why it is important to use an experienced trademark lawyer. The next step is the application, paying the fee, and uploading "specimens," - which are examples of your trademark in use.  There are lots of very specific rules on what kind of specimens are considered proof for which kinds of goods or services.  The specimen might be a tag or label with the trademark that is attached to the goods for sale.  A specimen might be the trademark used on a website or on a point of sale for a service.

 After the application is completed, we sit back and wait.  Then, after about 4 months, a trademark examiner is assigned to the case.  Then, there will be a series of back-and-forth communications between the examiner and the trademark lawyer.  Sometimes the lawyer has to respond to the examiners "office action" or letter with a legal argument or set of facts trying to overcome the examiner's nonfinal refusal.

 If everything can get ironed out, the trademark will then go to publication for a month, where anyone can object.  If there are no valid objections, a certificate of trademark is issued about 12 weeks after it went to publication.  That's a long process and one filled with details and lots of work, but a trademark is a very valuable asset.

Some of the creative people who should consider registering trademarks are:

Bands or music artists should consider registering trademark on their names if they are playing paying shows or if they have sold a series of sound recordings under their name.  If you have the name trademark registered, your name is protected.  If you get a big recording or touring deal, you won't be forced to change your name (and lose the goodwill inherent in the name) because of fears of confusion with a different group.  Your name will be yours.

Online businesses should consider registering the name of their company and/or the names of their services or features. Twitter and Facebook went to great trouble and expense to get trademarks on their names.  If you start an online business, it is best to consult first before you decide on a name.  That way, you can come up with a name that is original and unique to your company.  Then, your trademarks will be much easier to register.

 Trademarks are a valuable asset.  They signify to your potential customers that the goods or services are authentic and created by you.  A trademark can last the lifetime of the business, as long as it is still being used in commerce.  Think of some of the all-time great trademarks: Nabisco, Kleenex, Clorox, IBM, Apple, Facebook, Twitter, Microsoft, McDonald's, Greyhound.  These trademarks are part of our American life.  Each one of these very strong trademarks signifies to us a set of valuable goods and services, and we expect a certain quality from them.

Trademarks for Cannabis, Hemp, and CBD Products

Hemp Forest.  Photo by Barbetorte. CC license.
Trademarks for Cannabis, Hemp, and CBD Products
by Susan Basko, esq.

Trademarks for cannabis and hemp products are extremely limited.  I have seen quite a number of applications for trademarks, even made by lawyers, that will surely be rejected as they are assigned to an examiner.  I saw an application today that has about 5 lawyers from one law firm listed; apparently none of them bothered to research the law before filing the application.  The application seeks trademark registration on CBD oil used a dietary supplement; the Trademark Office has specifically stated it cannot register trademarks for any CBD product sold as a dietary supplement.  What will happen?  The trademark examiner will run the lawyers through a long series of inquiries and then will reject the application.  It will be about a year or more until the clients will find out they are not getting a registration.  That whole process will most likely cost the clients tens of thousands of dollars.  The whole thing is a shame because the Trademark Office has been very clear and forthright about how it is handling trademark applications on marijuana and CBD products.

These are the facts as they stand today.  It's not a pretty picture, but this is what it is:

US Trademarks follow federal law.  All cannabis and THC products are illegal under the federal Controlled Substances Act (CSA), and so trademarks are refused on any such products or services with regard to those products.  Even if medical or recreational marijuana or THC is legal in a State, it is illegal under federal law, and so the US Trademark Office will refuse to register a trademark. Trademarks are also refused on any goods that are considered "drug paraphernalia," which is interpreted very broadly.  Drug paraphernalia is defined and examples listed below.

The 2018 Farm Bill removed cannabis products from the CSA if they are considered hemp products, meaning they have less than 0.3% THC on a dry weight basis.  This means that cannabis and CBD (cannabidiol) products that derive from hemp and have less than 0.3% THC are no longer illegal under the CSA -- however, they might still be illegal under the Federal Food Drug and Cosmetic Act (FDCA).  The FDCA prohibits CBD products that are food, beverages, dietary supplements, or pet treats from being in commerce, and therefore, trademarks are refused on these products - since they cannot legally be in commerce.

CBD products that are food, beverages, dietary supplements, or pet treats are illegal under federal law and so cannot get a US registered trademark.

The FDA states that it has only approved one CBD product as a drug treatment for two rare forms of epilepsy.  The FDA has not approved any other CBD product for treatment for any other illness or condition.  The FDA states it is inquiring regarding the safety of CBD products and lists liver injury and other potential hazards.

At this time (early 2020), the US Trademark Office WILL REFUSE to register a trademark on the following goods or services:
  • Marijuana, Marijuana extract, or THC as goods, even if the sale is legal in the State in which it is being sold and even if it is medical marijuana.
  • Goods related to marijuana, such as vaporizers, and any "drug paraphernalia," which is listed below.
  • Services related to these goods, such as a marijuana store or delivery services,
  • CBD (cannabidiol) containing more than 0.3% THC 
  • Any CBD product containing less than 0.3% THC if it is a food, beverage, dietary supplement, or pet treat.  This would include such things as CBD gummies, drinks containing CBD, CBD capsules or oil to be taken as a supplement, or pet treats containing CBD. 
SO, WHAT CBD PRODUCTS ARE LEFT THAT CAN GET A REGISTERED TRADEMARK?  Possibly CBD oil that contains less than 0.3% THC that is not meant to be ingested and about which no medical claims have been made.  I do not know yet of any trademark that has been registered in this category, but that seems to be the only possibility.

Trademarks also cannot be registered on "drug paraphernalia," which is defined by the federal Controlled Substances Act as:

"The term "drug paraphernalia" means any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under this subchapter. It includes items primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana, cocaine, hashish, hashish oil, PCP, methamphetamine, or amphetamines into the human body, such as—
(1) metal, wooden, acrylic, glass, stone, plastic, or ceramic pipes with or without screens, permanent screens, hashish heads, or punctured metal bowls;
(2) water pipes;
(3) carburetion tubes and devices;
(4) smoking and carburetion masks;
(5) roach clips: meaning objects used to hold burning material, such as a marihuana cigarette, that has become too small or too short to be held in the hand;
(6) miniature spoons with level capacities of one-tenth cubic centimeter or less;
(7) chamber pipes;
(8) carburetor pipes;
(9) electric pipes;
(10) air-driven pipes;
(11) chillums;
(12) bongs;
(13) ice pipes or chillers;
(14) wired cigarette papers; or
(15) cocaine freebase kits.

(e) Matters considered in determination of what constitutes drug paraphernalia

In determining whether an item constitutes drug paraphernalia, in addition to all other logically relevant factors, the following may be considered:
(1) instructions, oral or written, provided with the item concerning its use;
(2) descriptive materials accompanying the item which explain or depict its use;
(3) national and local advertising concerning its use;
(4) the manner in which the item is displayed for sale;
(5) whether the owner, or anyone in control of the item, is a legitimate supplier of like or related items to the community, such as a licensed distributor or dealer of tobacco products;
(6) direct or circumstantial evidence of the ratio of sales of the item(s) to the total sales of the business enterprise;
(7) the existence and scope of legitimate uses of the item in the community; and
(8) expert testimony concerning its use.

(f) Exemptions

This section shall not apply to—
(1) any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items; or
(2) any item that, in the normal lawful course of business, is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory.
ANALYSIS AND SUMMARY

First, remember that it is not necessary to have a registered trademark to create and use a trademark.  USE of a mark to denote the source of a good or service is how trademarks are created.  You can do that without any registration! Therefore, while the US Trademark Office will refuse registration on trademarks on goods and services that are illegal under federal law, if you are in a State where it is legal to sell marijuana or CBD products, you can use the trademarks of your choice.  Be sure to create your trademark words or images/ logos that are creative and original and that do not infringe on anyone else's trademarks.  You may want to create a file of evidence of your use of the trademark, in case the federal law ever changes.  Then you will have proof you have been using your trademark, where and when you have been using it.

 It will be interesting to watch and see if marijuana and CBD-based businesses will try to prevent other such businesses from infringing on their unregistered trademarks using State law claims.   Within a State where marijuana and/or CBD sales are legal, it seems likely that businesses will try to prevent each other from "stealing" their names, logos, slogans, etc.

Second, some States register trademarks.  Illinois, where marijuana has become legal for medical and recreational use, has an Illinois trademark registry.  You can see the Illinois Trademark Registration application form HERE.

Some other States also register trademarks for goods and services being sold within their States.  These in-state trademarks seem ideally suited to the situation involving marijuana and CBD products, where the US Trademark Office simply will not register trademarks, even if the goods or services are legal in the State.  But, keep in mind, a State trademark provides protection from infringement from within the State, not in other states.  However, since marijuana businesses are State-specific, there is less likelihood that buyers will confuse similarly-sounding businesses in other states.  Still, you might want to choose your trademarks carefully to make them original and unique, even from those used by businesses in other states.

ALSO, you may want to choose trademarks that fit the general rules of the US Trademark Office, so that you will be able to register your mark with the Feds if and when the rules change.  
I used to think of State trademarks as useless and foolish in this day of the internet.  I now see how the State trademark registries could be quite useful when a good or service is refused trademark registry by the US Trademark Office.

So, a solid trademark plan could be:

1. FEDERAL TRADEMARK?   Find out if your good or service is eligible for a US Trademark.  If it is a marijuana good or service, it is not eligible for a US Trademark.  If it is a CBD (with less than 0.3% THC) good or service, it is not eligible for US Trademark if it is a food, beverage, dietary supplement, or animal treat.  If your good or service is eligible, create a unique and original trademark that does not conflict with any existing trademarks and apply to register it at the US Trademark Office.  Keep in mind, registration is a process that takes about 18 months and has many facets to it.  A trademark registration for a CBD product will require a great deal of interaction between the trademark examiner and your lawyer.  The trademark examiner is required to engage in a series of inquiries regarding all applications for trademarks on CBD products or for other potentially illegal goods or services, where the potential illegality appears on the face of the application.

2. STATE TRADEMARK? If your goods or services are not legal under federal law, but if they are legal under State law, check and see if your State registers trademarks.  Create a trademark or service mark that is unique and original and does not conflict with any already-existing trademarks, and apply to register it with your State.  If you create a trademark that meets the other requirements of US Trademarks, then you will be set to apply to register with the US Trademark Office if and when the laws change.

3. USE IT ANYWAY!  If you find you cannot register your trademark federally or in-state, you can still use it!  You can create brand awareness with the name and/or symbol you use to denote the source of your goods and services, and you can do that without registering anything at all.  Just do a solid search to be sure you are not infringing on anyone else's trademark.

4. Get a trademark lawyer.  Don't try to do this on your own.  What I have written here is complicated, and it is the tip of the iceberg.  Trademark law is very complicated!  In the case of trademarks on marijuana and CBD products, a trademark inquiry involves not just the extremely complex trademark law, but also the Controlled Substances Act (CSA) and the Food, Drug, and Cosmetics Act (FDCA). 

5. Prepare in advance for changes in the law.  Keep pictures of your use of your trademark with your goods or services on products, on ads, on websites.  Keep a whole file of evidence as proof you have been using the trademark so you can register it with the US Trademark Office if and when the laws change.  It may take years for the laws to change, but they will likely change at some point, and you want to be prepared.  
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