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Cannabis-Related Trademark Rejected Yet Again

September 20, 2020 | Cannabis,Intellectual Property

Trying to register a trademark for cannabis-related goods and services? Be careful what you apply for. The Trademark Trial and Appeal Board (“TTAB”) recently issued a decision that continues the trend of not allowing registration of trademarks that cover cannabis-related goods or services. On a basic level, the U.S. Patent and Trademark Office (“USPTO”) refuses to register trademarks that are not lawfully used in commerce. The TTAB, which handles ex parte (one party) appeals of trademarks that are refused registration, consistently upholds this bar.

In the TTAB’s decision, Applicant Stanley Brothers filed a U.S. trademark application for CW covering the goods “Hemp oil extracts sold as an integral component of dietary and nutritional supplements”. Examining Attorney Jeffrey Look (one of the Examiners at the USPTO assigned to examining cannabis-related trademarks) refused the trademark based on illegal use in commerce because: 1) Applicant’s goods are unlawful under the federal Controlled Substances Act (“CSA”); and 2) because the goods violate the Food and Drug Administration’s (“FDA”) Food, Drug, & Cosmetics Act (“FDCA”).

The Board first looked at the supposed violation of the FDCA. The FDCA prohibits ““[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….” 21 U.S.C. § 331(ll). Examiner Look argued that Applicant’s goods (hemp oil extracts) are foods to which CBD has been added, and that CBD is still the subject of clinical investigations.

The Board first noted that violation of the FDCA would still render Applicant’s goods illegal even if Applicant’s goods were otherwise in compliance with the CSA (i.e. if the goods were legal under the CSA because they were sourced from industrial hemp under the 2014 Farm Bill (or the 2018 Farm Bill as the case may be)). The Board then found that Applicant’s goods fell within the FDCA’s definition of a “food” because they are intended to be food or drink and are recommended to be used in recipes for beverages, come in multiple flavors, and are promoted as a “dietary supplement”. (In addition to the fact that under the statute a dietary supplement shall be deemed to be a food.) The Board finally found that CBD is of course still under investigation by the FDA.

Ultimately, the Board found that Applicant’s goods were per se unlawful and in violation of the FDCA. The Board didn’t reach the issue of violation of the CSA.

The moral of the story is the water remains cloudy for prosecution of cannabis-related trademarks. Be careful what you apply for or you could spend years (this application was filed in March 2015) prosecuting an application in an attempt to get a trademark registered – and still fail.

If you’re curious, the whole decision can be accessed here: