Law & Practice

UNITED STATES: No Mark for CBD Supplements

Published: August 5, 2020

Alexandra MacKay Stites & Harbison, PLLC Nashville, Tennessee, USA INTA Bulletins—North America Subcommittee

Robert P. Felber, Jr. Waller Lansden Dortch & Davis, LLP Nashville, Tennessee, USA INTA Bulletins—North America Subcommittee

A recent decision affirmed the refusal to register a mark for use with cannabidiol (CBD)-containing hemp oil extracts on the ground that use of the mark with such goods is per se unlawful.

The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) issued its decision in In re Stanley Brothers Social Enterprises, LLC, App. 86/568,478 (TTAB June 16, 2020) [precedential]. The decision clarifies the USPTO’s requirements for registration of marks for use with certain hemp-derived products containing CBD.

Generally, the USPTO only refuses registration of a mark based on unlawful use in commerce if the record indicates a violation of federal law or if other evidence or the applicant’s activities involve a per se violation of federal law. The USPTO found that the goods at issue here violated federal law.

The examining attorney refused registration of Stanley Brothers’ CW mark for use in connection with “hemp oil extracts sold as an integral component of dietary and nutritional supplements” in Class 5 on the grounds that the goods violated the Food, Drug, and Cosmetics Act (FDCA) and the Controlled Substances Act (CSA) because they contain the cannabis plant extract CBD.

The FDCA prohibits distribution in interstate commerce of food to which a drug or biological product has been added and for which substantial clinical investigations have been instituted and made public. The Food and Drug Administration (FDA) prohibits marketing items as dietary supplements if they were not marketed in food before substantial clinical investigations involving the item were instituted. The goods in question were dietary supplements and therefore deemed to be “food.” They contained CBD. The FDA has publicly announced ongoing clinical investigations for CBD.

The TTAB affirmed the refusal, finding that:

  • The examining attorney had established a violation of the FDCA because the goods associated with Stanley Brothers’ mark consisted of food to which CBD has been added;
  • Clinical trials of CBD have been instituted (and their existence made public); and
  • There was no record that CBD was marketed in food before the substantial clinical investigations for CBD were instituted.

The TTAB did not reach the alternative basis for refusal (violation of the CSA).

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