With the growing popularity of hemp-derived cannabidiol (hemp CBD) products in e-commerce, the U.S. Patent and Trademark Office (USPTO) has seen a significant influx of trademark applications used in association with CBD goods. However, many of these applications have been denied by the USPTO. This article briefly addresses the reasons for these denials and discusses the trademark protections currently available to the industry.
To secure federal trademark registration, a mark’s use in commerce must be lawful under federal law.
Although the Agricultural Improvement Act of 2018 (the 2018 Farm Bill) legalized the production of hemp and hemp derivatives, including hemp CBD, by removing hemp from the Controlled Substances Act’s definition of marijuana, the new law did not legalize the production of hemp CBD products. Instead, the 2018 Farm Bill expressly preserved the FDA’s authority to regulate these products under the Food, Drug and Cosmetic Act (FDCA).
As I have discussed in this column (here and here), the FDA takes the firm position that it is unlawful to sell and market in commerce CBD food and dietary supplements, pursuant to the FDCA and the Drug Exclusion Rule. Specifically, the FDA argues that because CBD was approved and investigated as a drug ingredient before it was sold and marketed as a food or a dietary supplement, these products may not be lawfully introduced in commerce. Consequently, the USPTO, which defers to the FDA’s position, opines that “registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp.”
Cosmetics containing hemp CBD, however, are in a more ambiguous space, as the FDA has indicated that the sale and marketing of these products may be permissible. In guidance released on its website, the FDA provides that this category of product is lawful so long as they are not adulterated, mislabeled, or intended to affect the structure or function of the body, or to diagnose, cure, mitigate, treat, or prevent disease (i.e., intended as a drug).
Therefore, when applying for federal trademark protection, hemp CBD companies must be very clear about the type of cosmetic product they are selling and wanting to protect. For instance, while a hemp CBD cosmetic product in Class 003 (soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices) may be acceptable and eligible for protection, a hemp CBD salve intended to relieve muscle soreness in Class 005 (pharmaceuticals and other preparations for medical or veterinary purposes) won’t likely qualify.