CBD Trademark Registration: TBD
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 protected] .
Rockridge Venture Law® is a certified B Corp law firm embracing the mantra of technology lawyers for good. Rockridge® services include corporate, intellectual property, litigation, M&A, privacy, technology, and venture capital law. Rockridge has been recognized as a B Corp Best for the World and Real Leaders Top 150 Impact Company, and has been featured by Conscious Company Magazine, Forbes, and other top media focused on industry leaders in impact and innovation.
The Rockridge team has worked with Grammy winners, Nobel Prize winners, and world champion athletes to create and monetize distinctive intellectual property assets. Rockridge clients include founders, investors, and multinationals scaling disruptive technologies and iconic brands. Rockridge is headquartered in Tennessee, with satellite offices in Durham, New Haven, and New York.
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.
See case studies on how we’ve helped transformative companies at Rockridge Case Studies.
Registering Trademarks for CBD, Full Spectrum Hemp Oil, and Other Cannabinoids
The demand for cannabidiol, or CBD, has skyrocketed in the last few years and with it, a huge boom in CBD brands. However, there are still significant challenges to registering CBD brands with the United States Patent and Trademark Office.
A few highlights as you read below:
- USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are currently (Nov. 9, 2020) being rejected by the USPTO for foods, supplements, and drugs. With some exceptions, if it is ingestible or claims to cure a medical ailment, it will likely be denied.
- USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are assigned to a special task force within the USPTO, causing significant delays to examination.
- Cosmetics containing CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are generally being accepted, as long as the product is derived from hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.
- Strategies: Create a cosmetic product or create a non-CBD version of your edible product to secure trademark rights. Also, consider using the branding on a blog, informational website, and/or as an apparel/lifestyle brand and protecting those items with the USPTO.
- Be diligent: Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.
CBD companies know that a registered trademark is a huge benefit but many encounter common issues when applying for a federal registration. The law (and the interpretation of it) is always in flux, but here are some tips when registering your CBD (and other cannabinoids or hemp-derived) products.
The Food Drug and Cosmetic Act Makes the Interstate Sale of Drugs or Foods Containing CBD Illegal
You’ve likely heard of drugs that have undergone “clinical trials” to test the medical claims being made. Under the Food Drug and Cosmetic Act (the “FDCA”), new drugs that have the same chemical make-up as drugs that have undergone clinical trials cannot be sold without first undergoing clinical trials themselves, or until the Food & Drug Administrations recognizes the drug as “safe” (often using the short-hand GRAS, or “generally recognized as safe.”)
On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved Epidiolex, a prescription formula containing CBD used for the treatment of two rare forms of epilepsy. Under the FDCA, any product intended to have a therapeutic or medical use and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals is a drug. An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA).
The FDA has further clarified that the inclusion of CBD into foods, drinks, or products that make medical claims are in violation of the FDCA and have taken actions against the sellers of the products. However, despite the FDA’s actions, there are thousands of growing CBD brands and the marketplace is prime for trademark confusion.
The USPTO has followed the FDA’s guidance and is currently denying trademark applications under Sections 1 and 45 of the Lanham Act, which requires lawful interstate commerce to qualify for federal trademark registration.
What about CBG, Full Spectrum Hemp Oil, or other Cannabinoids?
The CBD oil that most consumers think of is CBD-isolate, where a hemp plant is processed into hemp oil, and then further refined into pure, isolated CBD oil. However, there are hundreds of cannabinoids found in the hemp plant, including CBN, CBG, CBDA, and more. While CBD-isolate is the most popular, “full spectrum” and “broad spectrum” hemp oils are becoming increasingly popular. “Full spectrum” and “broad spectrum” are names for hemp oils that contain CBD, but also a variety of other cannabinoids, as opposed to just pure CBD.
Unfortunately, while these oils have not specifically been subject to clinical trials like CBD-isolate, they are still subject to the FDCA’s rule and generally regarded as illegal to sell as drugs or foods on the federal level. CBG and other cannabinoids are not “generally recognized as safe” and therefore cannot be lawfully sold in interstate commerce (a requirement for registering a trademark).
Cosmetics and Topical Applications Are Generally Allowed
In 2018, Congress passed the 2018 Farm Bill which took hemp products under 0.3% THC off the list of scheduled drugs with the Controlled Substances Act. As a result, skincare products, cosmetics, and other topical applications that contain CBD and other cannabinoids can be registered with the USPTO and enjoy nationwide federal protection.
There is an important distinction that these products cannot make medical claims – otherwise, they would be treated as a drug by the FDA under the FDCA. For some products, there is a thin line between medical claims and cosmetic claims, such as claims to prevent specific skin diseases versus treating generally “dry skin.” Each claim should be carefully reviewed by an attorney to assess the impact on a trademark application before applying.
Strategies for Registering CBD and Full Spectrum Products
In light of these restrictions, many CBD companies find themselves in uncomfortable legal limbo. There are thousands of brands all competing in the marketplace, but no clear method of preventing nationwide consumer confusion. Here are a few strategies to consider:
- A brand owner might create a cosmetic product line alongside its ingestible CBD foods or supplements with the same name. Ultimately, the brand could then gain limited rights in those cosmetic products which may help stop a competitor from using a confusingly-similar name.
- Create a non-CBD version of an edible product or supplement. A trademark owner might release a line of vitamins alongside their CBD supplements. If the trademark owner sells CBD brownies, perhaps they could produce a non-CBD line of brownies as well.
- Create a blog or informational website about the benefits of CBD (that is not merely an advertisement for the products, but a functional blog). This would allow further protection of the trademark.
- Finally, create an apparel/lifestyle brand using the trademark and protecting those items with the USPTO.
Finally, it is important to be diligent and know what your competitors are doing. Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.