Uphill battle for CBD companies registering trademarks
The United States Trademark Trial and Appeal Board (TTAB) recently issued a precedential decision that would control future rulings on whether a company could register a trademark for a dietary supplement or food containing cannabidiol (CBD).
In its recent decision in In re Stanley Brothers Social Enterprises, LLC, the TTAB upheld a refusal to register the mark “CW” for use in connection with hemp oil extracts sold as dietary and nutritional supplements.
“CW” stands for Charlotte's Web, a high-cannabidiol, low-tetrahydrocannabinol (THC) cannabis strain marketed as a dietary supplement and produced by the Stanley brothers in Colorado. Charlotte’s Web is named after the now deceased Charlotte Figi, a girl whose parents turned to CBD after pharmaceuticals proved ineffective in her treatment for a rare and debilitating form of epilepsy.
According to the TTAB’s opinion, the CBD company could not register its trademark “CW” because the goods associated with the mark, namely “hemp oil extracts sold as an integral component of dietary and nutritional supplements,” violate the Food, Drug and Cosmetic Act (FDCA). Previously, the US Patent and Trademark Office had determined that using “CW,” was a per se violation of the FDCA.
“This decision, combined with the FDA’s failure to address a mechanism for CBD to be lawfully sold as a supplement or food under the Food, Drug and Cosmetic Act is significant. While the FDA has repeatedly said that CBD cannot be lawfully sold, it has also said that it would look the other way unless a product has safety issues or sold as a drug,” said Richard Oparil, a partner in the law firm Arnall Golden Gregory LLP.
In appealing to the TTAB, Stanley brothers argued that dietary supplements are not “food,” and CBD falls within an exception to the FDCA for drugs or biological products “marketed in food.” The TTAB disagreed and noted that “a dietary supplement shall be deemed to be a food within the meaning of this chapter.” The board also said hemp oil is a food product and CBD qualifies as a “drug or biological product.”
Similar refusals
Despite being removed from the Controlled Substances Act in 2018, the FDA has continued to assert that hemp-derived CBD is not authorized for ingestible use under the FDCA. The TTAB has followed suit, and, accordingly, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD continue to be refused as unlawful under the FDCA, even if derived from hemp, because, according to the FDA, they may not be introduced lawfully into interstate commerce.
Trademark registrations associated with cannabis have repeatedly been refused on similar grounds.
Additionally, other recent litigation regarding the legality of marketing and selling CBD products has been stayed, banking on the hope that guidance for CBD from the FDA will come out soon.
Oparil, who is part of the firm’s Intellectual Property, Litigation, Food and Drug, and Government and Regulatory practices, and a member of the Dietary Supplements industry team, told NutraIgredients-USA, “If the FDA or Congress does step up to the plate and provide a regulatory pathway for using CBDs in supplements and food that contain less than 0.3 percent THC, I would expect the Patent and Trademark Office to revise its guidance and to allow trademarks to be issued.”
Copycat concerns
In the meantime, however, Oparil has concerns: “Companies are spending significant amounts of money to get into the CBD space and to develop trademarks for their company and its products. Stanley Brothers means that those trademarks cannot be registered and protected under federal law as valuable intellectual property. Copycats could step in, use the same or very similar marks, and erode the products.”
He added that while this recent decision would not bind a court, such as the Federal Circuit, it would probably be given some weight. Looking ahead, the Stanley Brothers could appeal this TTAB decision to the Federal Circuit or District Court.
FDA taking public comments
While crafting regulations, the FDA formally and “indefinitely” reopened the public comment window on cannabis and cannabinoid-products in March after first closing the window in July 2019.
The agency said that the public comment period will aim to “provide a public and transparent way for stakeholders to provide new and emerging information to us in real time as it becomes available.”
While the window is open for comment on all cannabinoids, the FDA emphasized “We are particularly interested in data that may help to address uncertainties and data gaps related to the safety of cannabidiol (CBD).”
Many hope the public comment period indicates that the FDA will be releasing regulations and guidelines soon, which will provide guidance for the selling and marketing of CBD products, including the pursuance of trademarks.
