In two recent decisions, the Trademark Trial and Appeal Board (TTAB) made it abundantly clear that attempting to register a mark for ingestibles containing cannabidiol (CBD) likely will be an exercise in futility.
In In re Harbor Hemp Company LLC, SNs 88377702 and 88377730 (TTAB Jan. 27, 2022) [not precedential] and In re AgrotecHemp Corp., SN88979905 (TTAB Feb. 10, 2022) [not precedential], the TTAB uniformly held that the applicants in those cases did not have a bona fide intention to use their marks in commerce for such goods.
The issue in both cases was “whether an applicant for a federal trademark registration can have a bona fide intent to use its mark in commerce on goods that are currently prohibited under federal law but that may, perhaps, become lawful in the future.” Harbor Hemp at 3, AgrotecHemp at 2. Both cases were appeals of refusals to register the marks because the applicants could not have a bona fide intention to use the marks for their dietary supplements in interstate commerce since such goods were not in compliance with the Federal Food, Drug and Cosmetic Act (FDCA) 21 U.S.C. Sections 321(g)(1), 331(d) and 355(a). Harbor Hemp at 3, AgrotecHemp at 2.
In both cases, the applicants limited their goods to make them appear legal: In Harbor Hemp, the goods had the limiting phrase “all of the foregoing containing legally produced industrial hemp extract” (which the TTAB determined could contain CBD, Harbor Hemp at 6), and in AgrotecHemp, the limiting phrase was “all of the foregoing containing CBD solely derived from hemp containing no more than .3% THC on a dry weight basis.” Id. at 1.
Judge Thomas Shaw, writing for the TTAB in both cases (with identical analyses), first discussed how an applicant must have a bona fide intention to use a mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. Section 1051(b), and how the word “commerce” means “all commerce which may be lawfully regulated by commerce.” Harbor Hemp at 4, AgrotecHemp at 2. He next discussed how under the FDCA “any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug,” Harbor Hemp at 5, AgrotecHemp at 3, and how CBD is an active ingredient in Epidiolex®, an FDA-approved drug, for which “substantial clinical investigations” had been done “before it was marketed in foods and dietary supplements.” Id.
The fact that the Harbor Hemp applicant’s dietary supplements could be “derived from ‘legally produced industrial hemp extract,’” Id. at 7, and the fact that AgrotecHemp applicant’s dietary supplements could be “derived from ‘hulled hemp seeds, hemp seed protein, and hemp seed oil’ which may be generally recognized as safe,” Id. at 4, were not persuasive. As the applicants in both cases did not have New Drug Applications or Abbreviated New Drug Applications, they could not lawfully introduce their goods into interstate commerce as of the filing dates of their applications. Id.
Consequently, the refusals to register were upheld since the applicants could not possess a bona fide intention to use their marks in commerce for their goods when their applications were filed. Harbor Hemp at 8, AgrotecHemp at 5.
The narrow takeaway is don’t waste time and money on federal trademark applications for ingestibles that contain CBD unless they are approved by the FDA, and the broad takeaway is be sure the goods and services in applications comply with federal law when they are filed to have marks that are registrable.