CBD Oil Trademarks
Those that filed CBD oil trademarks know by now, getting a CBD oil trademark with the United States Patent and Trademark Office (also known as the “USPTO”) has not been an easy feat. Whether you sell CBD oil, CBD supplements, or CBD pet supplements, obtaining a trademark from the USPTO has been difficult. While there was a glimmer of hope for many once the 2018 Farm Bill was passed into law last December, that hope was dashed again this past week.
USPTO CBD Oil Memo
The USPTO has officially issued their opinion that while in certain circumstances, the Controlled Substances Act (the “CSA”) may no longer make the use and distribution of hemp products that contain less than 0.3% THC illegal, there is still the Federal Drug and Cosmetic Act (the “FDCA”) that comes into play. And according to the Federal Drug and Food Administration (the “FDA”), the FDCA still does not allow for use of hemp and/or CBD in the food supply chain without proper approval. As a result, the USPTO has now taken the position that it will not issue trademark registrations that contain hemp and/or CBD for foods, beverages, dietary supplements or pet supplements without the requisite approval by the FDA that you are legally allowed to distribute your product to the consuming public.
- USPTO will not approve CBD Oil trademarks for the following goods/services without FDA approval:
- Foods containing CBD oil
- Beverages containing CBD oil
- Supplements containing CBD oil
- Pet supplements containing CBD oil
- Cosmetics containing CBD oil
- Note: all the above can potentially be registered with FDA approval.
Background of the 2018 Farm Bill
Last year, President Donald Trump signed the 2018 Farm Bill (the “Farm Bill”) into law, which federally removed hemp from the list of controlled substances in the Controlled Substances Act (the “CSA”). For purposes of the Farm Bill, “hemp” is defined as:
“[T]he plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”
Agriculture Marketing Act of 1946 § 297A.
In essence, the Farm Bill removes hemp and derivatives of the cannabis plants, such as CBD, that contain less than 0.3% THC on a dry-weight basis, from the definition of marijuana. This in turn means hemp in no longer considered a controlled substance under the CSA. It was based on this that many in the hemp and CBD world (assuming the product contains less than 0.3% THC) assumed they can now legally sell and distribute their products. Or can they?
On May 2, 2019, the USPTO updated its stance on how it would handle hemp and CBD related products that contained less than 0.3% THC. And it’s not great news for those in the supplement world. Specifically, although it has been decided that the sale and distribution of hemp and/or CBD products is longer in violation of the CSA, we cannot forget about the FDCA. Specifically, in the Farm Bill, it explicitly preserved the FDA’s ability to regulate products that contain hemp and/or CBD under the FDCA. And, pursuant to the FDCA, it is illegal to distribute any drug and/or substance undergoing clinical investigations that has not been approved by the FDA – i.e. hemp and CBD. See 21 U.S.C. §§ 331(II), 321(ff). As a result, any and all applications for foods, beverages, dietary supplements or pet treats that contain hemp and/or CBD will still be refused by the USPTO, as it is still federally illegal to introduce such goods into interstate commerce. 21 U.S.C. §331(II).
Farm Bill’s Implication on US Trademark Filings
Use and distribution of hemp and/or CBD products into the food supply chain still remain illegal pursuant to the FDCA. And until the FDA decides to update their rules, it will remain illegal for foods, beverages, dietary supplements or pet treats to contain hemp and/or CBD without FDA approval.
Therefore, if you sell CBD oil, CBD supplements, even CBD pet supplements, CBD energy drinks, or anything that is consumed that contains any form of the marijuana plant – regardless of the THC levels – you will not be awarded trademark registration by the USPTO based on the violation of the FDCA.
- Farm Bill legalized CBD goods under the CSA.
- It did not legalize ingestible CBD goods or CBD oil goods for food, drugs, medical devices, and/or cosmetics under the FDCA, unless otherwise approved by FDA.
Can I Get Around This by Filing an Intent to Use CBD Oil Trademark Application?
One solution that is being raised is to submit an intent to use application for such products, in anticipation that the FDA will eventually approve and allow use of hemp and/or CBD in food supplements and oils, as well as other food products. Currently, applications for products containing CBD and/or hemp are illegal pursuant to the FDCA until the FDA approves such substances. Once they’ve approved use of the substance, then it seems to be okay legally. Therefore, it should follow that the USPTO will grant registrations once the FDA okay’s the use of hemp and CBD in the food chain.
However, this does raise the question of whether the USPTO could still refuse the intent to use application on the basis that the FDA did not approve of such intent at the time of filing. In other words, is it required at the time of filing for the FDA to have approved use of the substance. Or could you amend the filing date? Moreover, in order to be issued a Notice of Allowance – which is required for an intent to use application – the USPTO has to approve registration of the mark. This they will not do. As a result, it seems that an intent to use application would not be a solution to this problem.
CBD Oil Trademarks Potentially Exempt
The USPTO seems to be accepting and approving applications for CBD liquid under Class 34, so long as it can be established that the product complies with the Farm Bill and that it contains less than 0.3% THC on a dry-weigh basis. However, as with anything, this could change and the USPTO could decide differently. Therefore, it still remains, applicants beware.
- USPTO will potentially approve CBD Oil trademarks for the following goods/services:
- Electronic cigarette CBD oil liquid
- Retail store services selling CBD non-ingestible goods
- Websites providing information regarding CBD oil
- Hemp fibers for clothing (not a CBD product but is an acceptable good)
- All above must be regarding and/or derived from hemp and contain less than 0.3% THC.
Other Potential CBD Oil Trademark Issues Possible for USPTO
The USPTO is allowing amendment of the filing date. One Examiner stated the following:
Due to the changed circumstances and the potential lawfulness of certain products and activities that meet the definition of the Agricultural Marketing Act of 1946, as amended (AMA), applicant may request to amend the filing date of the current application to be December 20, 2018. See Examination Guide 1-19 Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf Applicant must specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. See 37 C.F.R. §§2.34 et seq., TMEP §§806 et seq. In the event of such an amendment, the undersigned examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03 For instructions on how to satisfy basis requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
- Allowing numerous applications to have the same filing date could cause major prior filing date issues. For example, if two applications are currently pending for CBD HAVEN, one being filed in January of 2018 and one being filed in November of 2018, allowing both to amend to the same filing date of December 20, 2018 means that neither has a prior filing status. Consequently, it will be difficult in circumstances of section 2(d) likelihood of confusion purposes to determine who filed first. The USPTO could use the time of their amendment as a basis, but proper procedure indicates that the filing date would reset for both.. As a result, the only viable and earliest filing date for each would be December 20, 2018.
- The USPTO is about to have a lot of December 20, 2018 filing dates if the amendment to this specific date is permitted. Who will have priority?