CBD Oil Trademark Attorney Answers
Those that filed CBD oil trademarks know by now, getting a CBD oil trademark with the United States Patent and Trademark Office (also known as the “USPTO”) has not been an easy feat. Whether you sell CBD oil, CBD supplements, or CBD pet supplements, obtaining a trademark from the USPTO has been difficult. While there was a glimmer of hope for many once the 2018 Farm Bill was passed into law last December, that hope was dashed again this past week.
USPTO CBD Oil Memo
The USPTO has officially issued their opinion that while in certain circumstances, the Controlled Substances Act (the “CSA”) may no longer make the use and distribution of hemp products that contain less than 0.3% THC illegal, there is still the Federal Drug and Cosmetic Act (the “FDCA”) that comes into play. And according to the Federal Drug and Food Administration (the “FDA”), the FDCA still does not allow for use of hemp and/or CBD in the food supply chain without proper approval. As a result, the USPTO has now taken the position that it will not issue trademark registrations that contain hemp and/or CBD for foods, beverages, dietary supplements or pet supplements without the requisite approval by the FDA that you are legally allowed to distribute your product to the consuming public.
- USPTO will not approve CBD Oil trademarks for the following goods/services without FDA approval:
- Foods containing CBD oil
- Beverages containing CBD oil
- Supplements containing CBD oil
- Pet supplements containing CBD oil
- Note: all the above can potentially be registered with FDA approval.
Background of the 2018 Farm Bill
Last year, President Donald Trump signed the 2018 Farm Bill (the “Farm Bill”) into law, which federally removed hemp from the list of controlled substances in the Controlled Substances Act (the “CSA”). For purposes of the Farm Bill, “hemp” is defined as:
“[T]he plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”
Agriculture Marketing Act of 1946 § 297A.
In essence, the Farm Bill removes hemp and derivatives of the cannabis plants, such as CBD, that contain less than 0.3% THC on a dry-weight basis, from the definition of marijuana. This in turn means hemp in no longer considered a controlled substance under the CSA. It was based on this that many in the hemp and CBD world (assuming the product contains less than 0.3% THC) assumed they can now legally sell and distribute their products. Or can they?
On May 2, 2019, the USPTO updated its stance on how it would handle hemp and CBD related products that contained less than 0.3% THC. And it’s not great news for those in the supplement world. Specifically, although it has been decided that the sale and distribution of hemp and/or CBD products is longer in violation of the CSA, we cannot forget about the FDCA. Specifically, in the Farm Bill, it explicitly preserved the FDA’s ability to regulate products that contain hemp and/or CBD under the FDCA. And, pursuant to the FDCA, it is illegal to distribute any drug and/or substance undergoing clinical investigations that has not been approved by the FDA – i.e. hemp and CBD. See 21 U.S.C. §§ 331(II), 321(ff). As a result, any and all applications for foods, beverages, dietary supplements or pet treats that contain hemp and/or CBD will still be refused by the USPTO, as it is still federally illegal to introduce such goods into interstate commerce. 21 U.S.C. §331(II).
Farm Bill’s Implication on US Trademark Filings
Use and distribution of hemp and/or CBD products into the food supply chain still remain illegal pursuant to the FDCA. And until the FDA decides to update their rules, it will remain illegal for foods, beverages, dietary supplements or pet treats to contain hemp and/or CBD without FDA approval.
Therefore, if you sell CBD oil, CBD supplements, even CBD pet supplements, CBD energy drinks, or anything that is consumed that contains any form of the marijuana plant – regardless of the THC levels – you will not be awarded trademark registration by the USPTO based on the violation of the FDCA.
- Farm Bill legalized CBD goods under the CSA.
- It did not legalize ingestible CBD goods or CBD oil goods for food, drugs, medical devices, and/or cosmetics under the FDCA, unless otherwise approved by FDA.
Can I Get Around This by Filing an Intent to Use CBD Oil Trademark Application?
One solution that is being raised is to submit an intent to use application for such products, in anticipation that the FDA will eventually approve and allow use of hemp and/or CBD in food supplements and oils, as well as other food products. Currently, applications for products containing CBD and/or hemp are illegal pursuant to the FDCA until the FDA approves such substances. Once they’ve approved use of the substance, then it seems to be okay legally. Therefore, it should follow that the USPTO will grant registrations once the FDA okay’s the use of hemp and CBD in the food chain.
However, this does raise the question of whether the USPTO could still refuse the intent to use application on the basis that the FDA did not approve of such intent at the time of filing. In other words, is it required at the time of filing for the FDA to have approved use of the substance. Or could you amend the filing date? Moreover, in order to be issued a Notice of Allowance – which is required for an intent to use application – the USPTO has to approve registration of the mark. This they will not do. As a result, it seems that an intent to use application would not be a solution to this problem.
CBD Oil Trademarks Potentially Exempt
The USPTO seems to be accepting and approving applications for CBD liquid under Class 34, so long as it can be established that the product complies with the Farm Bill and that it contains less than 0.3% THC on a dry-weigh basis. However, as with anything, this could change and the USPTO could decide differently. Therefore, it still remains, applicants beware.
- USPTO will potentially approve CBD Oil trademarks for the following goods/services:
- Electronic cigarette CBD oil liquid
- Retail store services selling CBD non-ingestible goods
- Websites providing information regarding CBD oil
- Hemp fibers for clothing (not a CBD product but is an acceptable good)
- Non-ingestible topical preparations (rollers, oils)
- All above must be regarding and/or derived from industrial hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.
Other Potential CBD Oil Trademark Issues Possible for USPTO
The USPTO is allowing amendment of the filing date. One Examiner stated the following:
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.