The Trademark Trial and Appeal Board (TTAB) recently affirmed a decision by the United States Patent and Trademark Office (USPTO) denying the application of a mark for "hemp oil extracts sold as an integral component of dietary and nutritional supplements".(1)

In its decision, the USPTO had reasoned that the applicant's goods, which contained cannabidiol (CBD), were illegal under federal law – specifically, the Food, Drug and Cosmetics Act (FDCA) and the Controlled Substances Act (CSA). The mark 'CW', written in standard characters, would serve to identify the applicant's brand, CW Hemp, as the source of the goods. The mark was to be placed on bottles of the applicant's hemp extract, advertised as a nutritional supplement to "promote mind and body wellness", offered in multiple flavours and recommended to be used in beverage recipes. The TTAB held that the goods' illegality was a consequence of their nature and intended use as a dietary supplement.

The CSA lists marijuana, defined as "all parts of the plant Cannabis sativa L", as a Schedule I controlled substance. The Agricultural Act of 2014 (the 2014 Farm Bill), which was subsequently expanded in 2018, created an 'industrial hemp' exception to the CSA's marijuana prohibition (known as the 'industrial hemp provision'). The industrial hemp provision allows for the growth and cultivation of the Cannabis sativa L plant with less than 0.3% tetrahydrocannabinol (THC) concentration for certain research purposes, as allowed under state law. While this provision allows for the growth of industrial hemp, it does not protect against the violation of other federal law for the illegal use of that hemp after cultivation.

The FDCA prohibits any food with a drug or biological substance additive from entering into commerce if it is the subject of a substantial clinical investigation that has been made public. Dietary supplements, which the 'CW' hemp oil extracts were advertised as, constitute food for the purposes of this statute. Hemp grown legally under the industrial hemp provision will nevertheless be deemed illegal if its use is found to violate the FDCA or another federal law. In other words, the use of CBD in food or dietary supplements will be deemed illegal under the FDCA as long as CBD remains the subject of a clinical investigation, regardless of whether the hemp was grown legally under the CSA exception. Illegal use will override legal cultivation.

The USPTO currently has a number of trademark applications pending in Class 5, which includes dietary supplements and pharmaceuticals involving CBD-related goods, which now are likely to be denied registration per the TTAB's decision. Accordingly, when making the decision to apply for a federal trademark, the nature and use of the CBD product in relation to federal law should be kept in mind. In addition, although it may be impossible to acquire a federal trademark registration for a CBD-related product, it may still be possible to obtain common law trademark protection and trademark registrations in various states. Applicants should seek competent counsel for additional guidance to register a trademark with the USPTO to ensure legal compliance.

For further information on this topic please contact Marcella Ballard, Kristen Ruisi or Maria Sinatra at Venable LLP by telephone (+1 410 244 7400) or email ([email protected], [email protected] or [email protected]). The Venable LLP website can be accessed at www.venable.com.

Endnotes

(1) All information derived from the TTAB opinion – In re Stanley Brothers Social Enterprises, LLC (Serial No 86568478) (mailed 16 June 2020).