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CBD Ingredient Brands - Trademark Registration Is Possible, but May Be a Tough Pill to Swallow

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Sterne, Kessler, Goldstein & Fox P.L.L.C.

A June 16, 2020 precedential decision by the Trademark Trial and Appeal Board held that Federal trademark registration is not available for food, beverages, or nutritional/dietary supplements to which hemp-derived cannibidiol (CBD) has been added. Here is what you need to know about In re Stanley Brothers Social Enterprises, LLC.

In this case, the applicant sought federal trademark registration of the mark CW, for “hemp oil extracts sold as an integral component of dietary and nutritional supplements” in Class 5. On appeal, the Board took the position that dietary supplements are a food and that hemp-derived CBD is an extract of the cannabis plant that is regulated as a drug under the Food, Drug, and Cosmetics Act (FDCA). The sale of CBD-infused food or dietary supplements is a per se violation of the FDCA, and a mark for such products is not federally registrable. Additionally, as the record was absent any evidence that CBD-infused food had been marketed prior to institution of the clinical investigations, CBD does not fall within any exception to the FDCA that might be available to other foods or dietary supplements on the market to which drugs or biological products have been added.
 
In light of this decision, how can brand owners protect their CBD ingredient brands? 

  • First, consider manufacturing and marketing products that provide similar wellness benefits but are administered or used in ways other than by ingesting (and would qualify as “food”), e.g., via topical application or in herbal incense;
  • Second, on packaging, advertising, and websites associated with the product, emphasize the instructions for proper use, taking care not to refer to the product in any way as a dietary or nutritional supplement, and clearly indicate that the product is not intended to be consumed by mouth;
  • Finally, ensure that the mark is or will be in use for goods that are clearly legal within the available framework provided by the 2018 Farm Bill.

This article appeared in the June 2020 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.