IP Law Daily Registration denied for CBD supplement as unlawful use under federal law
Friday, June 19, 2020

Registration denied for CBD supplement as unlawful use under federal law

By Thomas K. Lauletta, J.D.

The applicant’s hemp oil extract goods were subject to regulation under the federal Food, Drug & Cosmetic Act as "food" to which CBD has been added.

In a precedential decision, the Trademark Trial and Appeal Board has upheld the refusal the register the applicant’s mark, CW, for hemp oil extracts sold as a component of dietary and nutritional supplements. The refusal was based on the ground that under the Trademark Act, the goods were per se unlawful because their sale or distribution in commerce was illegal under the federal Food, Drug & Cosmetics Act ("FDCA"). The FDCA prohibits the introduction into interstate commerce a food to which a drug has been added and the statute deems "dietary supplements" to be "food" (In re Stanley Brothers Social Enterprises, LLC, June 16, 2020, Adlin, M.).

The applicant is a Colorado marijuana grower than developed a strain of Cannabis sativa that is high in cannabidiol ("CBD") content, but low in tetrahydrocannabinol ("THC"), the psychoactive component of marijuana that is responsible for the "high" that users experience. The applicant’s CBD product, CW Hemp, is marketed "to promote mind and body wellness."

The examining attorney denied registration of the CW mark under Sections 1 and 45 of the Trademark Act on the ground that its use in commerce for applicant’s goods is per se unlawful because the goods are illegal under: (1) the federal FDCA, 21 U.S.C. §§ 321(ff) and 331(ll); and (2) the federal Controlled Substances Act ("CSA"), 21 U.S.C. §§ 812(c) and 841(a)(1).

Refusals based on unlawful use. The Board noted that the USPTO does not grant registration of a mark for use in commerce that relates to activities that involve a per se violation of a federal law. Relevant to the CW application, the FDCA prohibits the introduction into interstate commerce: (1) a food to which a drug has been added; (2) where substantial clinical investigations of the drug have been instituted; and (3) where the existence of such investigations has been made public (21 U.S.C. § 331(ll)). The examining attorney based the refusal to register on the contention that the applicant’s hemp oil extracts were "food" to which CBD has been added, and that CBD was the subject of clinical investigations during prosecution of the CW application. In accepting the examining attorney’s contentions, the Board rejected counterarguments raised by the applicant.

The applicant argued that provisions of the Agricultural Act of 2014 ("Farm Bill") included a provision relating to industrial hemp that exempted the applicant’s product from the portion of the FDCA cited to refuse registration. The Board concluded although the Farm Bill’s industrial hemp provision allows for the growing of "industrial hemp" under certain circumstances as an exception to the CSA, it does not override the prohibition on the interstate sale or distribution of a CBD product that falls within the scope of the FDCA.

The applicant also argued that its CBD products were "dietary supplements" rather than food, and hence outside the FDCA’s prohibition. The Board rejected this argument, noting that the applicant’s goods fall with the FDCA’s definition of "food," which is an article for "food or drink" or is used for components of any such article." More specifically, 21 U.S.C. § 321(ff) states that dietary supplements are considered as food under the FDCA.

The applicant also cited a press release of a trade group to the effect that the applicant’s CBD goods were marketed before any substantial clinical investigations of CBD had been instituted. If this were proven, the applicant’s products might have fallen within the FDCA’s exception for drugs marketed in food before substantial clinical investigations of the drug had been instituted (21 U.S.C. §331(ll)(1)). However, the Board saw this press release has having little probative value in proving this assertion. Rather, it found as credible the evidence from the FDA that it had previously investigated CBD products and had made these investigations public.

Concluding that the applicant’s goods fell within the scope of 21 U.S.C. §331(ll), the Board held that they were unlawful under the FDCA. Accordingly, the Board affirmed the refusal to register the applicant’s mark. Because of this affirmance, based on the FDCA, the Board stated that it did not need to reach the question of unlawful use refusal based on the CSA.

This case is Serial No. 86568478.

Attorneys: Timothy C. Matson (Fox Rothschild LLP) for Stanley Brothers Social Enterprises LLC. Jeffrey J. Look for the USPTO.

Companies: Stanley Brothers Social Enterprises LLC

MainStory: TopStory Trademark GCNNews USPTO

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