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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.

Other Opportunities

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 violaine@rockridgelaw.com.

About RVL®

Rockridge Venture Law® was launched in 2017 to become the preeminent intellectual property and technology firm across the Appalachian Innovation Corridor. We now have offices in Chattanooga, Durham, and Nashville, and represent clients and interests globally. Our services include all aspects of intellectual property, litigation, M&A, privacy, technology transactions, and ventures.

We’re proud to be a Real Leaders Top 150 Impact Company and B Corp Best for the World for our commitment to triple bottom line business practices. Rockridge® is also certified by 1% for the Planet for its nonprofit partnerships advancing stewardship and sustainability. RVL’s nonprofit partners in 2020 include Green|Spaces, Living Lands and Waters, Mustard Seed Ranch, and the NC State Lulu Games Social and Environmental Impact Competition. We value transparency and proudly publish our yearly impact reports.

Our pioneering environmental and social impact programs attract top-notch legal talent and assure our clients of missional alignment with their corporate values. Rockridge uniquely addresses two modern profit drivers: innovation (uptake and development), and corporate social responsibility. We’re Building Today’s Company for Tomorrow’s Economy® by leading clients through the dizzying array of information controls, by helping them to develop and monetize proprietary assets, and by enabling their impactful products, programs, and principles.

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Violaine Panasci

Author Violaine Panasci

Violaine is a branding, data privacy, and regulatory attorney at Rockridge Venture Law®. Violaine uniquely combines her work in sustainable supply chains, intellectual property protection, and technology law to advise clients in areas where business and society move faster than the law. Her practice areas include agricultural technology, cannabis, copyrights, data privacy, food & beverage, regulation, sustainable supply chains, and trademarks.

More posts by Violaine Panasci

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