Can CBD Companies Secure Federal Trademark Protection? Can CBD Products be Trademarked if not Ingestible? Here’s what you need to know, according to the Trademark Trial and Appeal Board (TTAB).
In 2021, CBD seems to be everywhere.
No matter where you go, you’re bound to come across a café that sells CBD specialty drinks or a pet supply store that sells freshly-baked CBD-infused treats for your four-legged friend. CBD cosmetic products are also making a splash. Hundreds of spas in the country are offering a broad spectrum of “CBD-infused treatments” through oils, lotions, and balms.
If you aren’t living under a rock, you’ve likely heard by now that the 2018 Farm Bill removed “hemp” from the list of controlled substances under the Controlled Substances Act (CSA) and legalized its regulated production.
In our previous article, we debunked what this meant for brand owners. As we predicted, the USPTO has since received a flood of applications to register trademarks for CBD-based products. However, the one caveat flagged by the USPTO in its’ Examination Guide 1-19 has acted as a roadblock for many CBD companies seeking federal intellectual property protections. Because CBD as a food additive is still under investigation by the Food and Drug Administration (FDA), the use of CBD in foods, dietary supplements, and yes, even your pet’s treats, is still unlawful, and marks seeking registration for CBD-infused consumables will likely be refused.
Keeping Tabs on the TTAB
Lackluster FDA approval hasn’t stopped companies from producing, marketing, and selling CBD-infused waters, teas, candies, and a multitude of other items for both human and animal consumption. However, as a recent Trademark Trial and Appeal Board (TTAB) opinion pointed out, the USPTO is not willing to look the other way.
The USPTO refused to register the popular CBD company Stanley Brothers’ applied-for-mark “CW” for oral CBD oil products designed to “promote mind and body wellness” on the grounds that the intended use of the mark was unlawful under the Federal Food, Drug, and Cosmetic Act (FDCA). The TTAB opinion emphasized that the Farm Bill is just one of many federal acts that may affect the right to trademark hemp products.
CBD-infused oils intended for human consumption require pre-market FDA approval. To date, the FDA has only approved the use of oral CBD concentrates for the treatment of childhood epilepsy. Had the Stanley Brothers (now Charlotte’s Web, Inc.) marketed their product to treat this specific disease, they may have qualified for federal trademark registration.
If you own a spa, you’re in luck! While a CBD lotion intended to relieve pain in Class 005 (pharmaceuticals and other preparations for medical or veterinary purposes) is likely to be rejected, a CBD cosmetic product in Class 003 (soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices) is historically eligible for USPTO protection. In contrast to consumables, the FDA has given the green light for CBD-infused cosmetic products and the USPTO is currently approving trademarks, including:
- “HEMPLILY” for bath bombs containing CBD derived from hemp;
- “LONG ISLAND CBD” for lip balms containing CBD derived from hemp;
- “WILD THEORY CBD CO” for oils, lotions, creams, and skin balms containing CBD derived from hemp; and,
- “RELAX ME CBD” for electronic cigarette liquids comprised of CBD derived from hemp.
Alternative Brand Protections
Companies may be interested in alternative ways to protect their brand until the FDA relaxes the restrictions on the sale and marketing of CBD-infused foods, beverages, dietary supplements, and pet treats.
Registration may be secured for ancillary goods or services that do not violate the FDCA. For instance, a company that produces and sells both CBD-infused dog treats and non-CBD-infused dog treats may be able to secure a federal trademark registration that will cover the non-CBD-infused products.
These companies may also qualify for state trademark registration in a state where the sale of hemp CBD products is allowed. Although a state trademark is geographically limited to the state’s boundaries, it may provide more protection and legal remedies than common law rights.
About Violaine Panasci
Violaine Panasci is a data privacy and regulatory attorney at Rockridge®. Violaine studied at the University of Ottawa before obtaining her LL.M. in Environmental Law with an emphasis in sustainable agriculture and supply chains. She is fluent in English and French, and is registered to practice law in New York and Tennessee. Contact Violaine for more on this topic at email@example.com.
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