United States: TTAB Prohibits Registration Of CBD Trademark

Getting a CBD trademark is not as easy as one would think. In 2015, Stanley Brothers Social Enterprises, LLC ("Stanley Brothers") applied for registration of the mark CW (the "Mark") with the United States Patent and Trademark Office ("USPTO"), for "hemp oil extracts sold as an integral component of dietary and nutritional supplements." The USPTO Examining Attorney refused registration of the Mark on the grounds that the use of cannabidiol ("CBD") in dietary and nutritional supplements was illegal under both the Food, Drug & Cosmetics Act ("FDCA") and the federal Controlled Substances Act ("CSA"). An Applicant who has received a final refusal from an Examining Attorney may file an appeal with the Trademark Trial and Appeal Board ("TTAB") within six (6) months from when the final refusal was issued. On appeal, the TTAB agreed with the Examining Attorney that the CBD trademark should not be granted registration.

How can CBD trademarks get registered?

Trademark Refusals for Illegal Goods/Services

Whether CBD trademarks are registerable will depend on how they are used in commerce. Section 907 of the Trademark Manual of Examining Procedure ("TMEP") dictates that "use of a mark in commerce must be lawful under federal law to be the basis for federal registration." Prior to the passage of the Farm Bill, on December 20, 2018, all trademarks related to CBD goods/services were rejected for illegal use because CBD was then considered to be an illegal controlled substance. With its passage, the Farm Bill allowed for CBD products containing less than 0.3 percent of tetrahydrocannabinol ("THC") to be: 1) sold in states that permit it; and 2) shipped across state lines. However, the Farm Bill did preserve the right of the U.S. Food and Drug Administration ("FDA") to regulate products containing CBD on a federal level. In accordance with its regulatory authority, the FDA has concluded that CBD may still raise lawful-use issues under the FDCA if used in foods or dietary supplements.

Registering CBD Trademarks

A quick search of the word CBD in the Trademark Electronic Search System ("TESS") returns hundreds of results for CBD trademarks that are either pending approval, registered or abandoned. One deciding factor on whether registration will be secured is the description of use included in the applicable trademark application. For example, marks for non-medicated topical skin and body oils containing CBD are much more likely to obtain registration than the subject Stanley Brothers description of "hemp oil extracts sold as an integral component of dietary and nutritional supplements."

Originally published 23 June, 2020

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