Lawyer: FDA’s ongoing refusal to act on CBD impacts trademark laws

A recent case involved a company called Joy Tea, which had submitted an “intent to use” trademark application for “FOR JOY” on a range of its CBD-infused tea products. The US Patent and Trademark Office (USPTO) denied the application earlier this year, leading the company to appeal the decision to the Trademark Trial and Appeal Board (TTAB).

The TTAB upheld the earlier USPTO denial on the grounds that the FDA maintains the position that it is illegal to sell a CBD food or dietary supplement in interstate commerce. CBD products therefore violate the Food, Drug and Cosmetic Act (FDCA).

In its appeal, Joy Tea stated that it had a “bona fide intent to use” its mark in the future because a beneficial change to the laws around CBD is anticipated.

However, the TTAB disagreed​, stating that “if the goods on which a mark is intended to be used are unlawful, there can be no bona fide intent to use the mark in lawful commerce.”​ In other words, until the law changes – and regardless of whether the law is anticipated​ to change – CBD-containing products are unlawful, and cannot be covered by a trademark.

The lawyer’s view​

Commenting independently on the TTAB opinion, Kevin Bell, a partner in the law firm Arnall Golden Gregory (AGG) LLP, explained that people can file trademarks for use or intent to use, and that those filed with a statement of intent to use can be extended for six-month intervals after receiving a notice of allowance and continue up to 36 months. “A company trying to protect future rights should be able to pursue an intent to use mark,”​ he said. “A company could at least protect its IP.”​

The TTAB’s opinion, said Bell, is unfair to companies who want to file an intent to use trademark, even if they’re waiting on FDA to make a decision.

“FDA’s inaction is starting to have a negative impact on future trademark rights,” ​he said.

Precedent​

The Joy Tea opinion is consistent with earlier opinions from the USPTO and the TTAB. As reported by NutraIngredients-USA last year​, Stanley Brothers Social Enterprises, LLC, attempted to register the mark “CW” (which stands for Charlotte's Web) for use in connection with hemp oil extracts sold as dietary and nutritional supplements.

The USPTO denied that application, as did the TTAB after an appeal, citing that “hemp oil extracts sold as an integral component of dietary and nutritional supplements,” violate the Food, Drug and Cosmetic Act (FDCA).

Despite being removed from the Controlled Substances Act via passage of the Farm Bill in 2018, the FDA has continued to assert that hemp-derived CBD is not authorized for ingestible use under the FDCA.