The demand for cannabidiol, or CBD, has skyrocketed in the last few years and with it, a huge boom in CBD brands. However, there are still significant challenges to registering CBD brands with the United States Patent and Trademark Office.
A few highlights as you read below:
- USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are currently (Nov. 9, 2020) being rejected by the USPTO for foods, supplements, and drugs. With some exceptions, if it is ingestible or claims to cure a medical ailment, it will likely be denied.
- USPTO trademark applications for CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are assigned to a special task force within the USPTO, causing significant delays to examination.
- Cosmetics containing CBD, CBG, Full Spectrum Hemp Oil, and other cannabinoids are generally being accepted, as long as the product is derived from hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.
- Strategies: Create a cosmetic product or create a non-CBD version of your edible product to secure trademark rights. Also, consider using the branding on a blog, informational website, and/or as an apparel/lifestyle brand and protecting those items with the USPTO.
- Be diligent: Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.
CBD companies know that a registered trademark is a huge benefit but many encounter common issues when applying for a federal registration. The law (and the interpretation of it) is always in flux, but here are some tips when registering your CBD (and other cannabinoids or hemp-derived) products.
The Food Drug and Cosmetic Act Makes the Interstate Sale of Drugs or Foods Containing CBD Illegal
You’ve likely heard of drugs that have undergone “clinical trials” to test the medical claims being made. Under the Food Drug and Cosmetic Act (the “FDCA”), new drugs that have the same chemical make-up as drugs that have undergone clinical trials cannot be sold without first undergoing clinical trials themselves, or until the Food & Drug Administrations recognizes the drug as “safe” (often using the short-hand GRAS, or “generally recognized as safe.”)
On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved Epidiolex, a prescription formula containing CBD used for the treatment of two rare forms of epilepsy. Under the FDCA, any product intended to have a therapeutic or medical use and 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. An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA).
The FDA has further clarified that the inclusion of CBD into foods, drinks, or products that make medical claims are in violation of the FDCA and have taken actions against the sellers of the products. However, despite the FDA’s actions, there are thousands of growing CBD brands and the marketplace is prime for trademark confusion.
The USPTO has followed the FDA’s guidance and is currently denying trademark applications under Sections 1 and 45 of the Lanham Act, which requires lawful interstate commerce to qualify for federal trademark registration.
What about CBG, Full Spectrum Hemp Oil, or other Cannabinoids?
The CBD oil that most consumers think of is CBD-isolate, where a hemp plant is processed into hemp oil, and then further refined into pure, isolated CBD oil. However, there are hundreds of cannabinoids found in the hemp plant, including CBN, CBG, CBDA, and more. While CBD-isolate is the most popular, “full spectrum” and “broad spectrum” hemp oils are becoming increasingly popular. “Full spectrum” and “broad spectrum” are names for hemp oils that contain CBD, but also a variety of other cannabinoids, as opposed to just pure CBD.
Unfortunately, while these oils have not specifically been subject to clinical trials like CBD-isolate, they are still subject to the FDCA’s rule and generally regarded as illegal to sell as drugs or foods on the federal level. CBG and other cannabinoids are not “generally recognized as safe” and therefore cannot be lawfully sold in interstate commerce (a requirement for registering a trademark).
Cosmetics and Topical Applications Are Generally Allowed
In 2018, Congress passed the 2018 Farm Bill which took hemp products under 0.3% THC off the list of scheduled drugs with the Controlled Substances Act. As a result, skincare products, cosmetics, and other topical applications that contain CBD and other cannabinoids can be registered with the USPTO and enjoy nationwide federal protection.
There is an important distinction that these products cannot make medical claims – otherwise, they would be treated as a drug by the FDA under the FDCA. For some products, there is a thin line between medical claims and cosmetic claims, such as claims to prevent specific skin diseases versus treating generally “dry skin.” Each claim should be carefully reviewed by an attorney to assess the impact on a trademark application before applying.
Strategies for Registering CBD and Full Spectrum Products
In light of these restrictions, many CBD companies find themselves in uncomfortable legal limbo. There are thousands of brands all competing in the marketplace, but no clear method of preventing nationwide consumer confusion. Here are a few strategies to consider:
- A brand owner might create a cosmetic product line alongside its ingestible CBD foods or supplements with the same name. Ultimately, the brand could then gain limited rights in those cosmetic products which may help stop a competitor from using a confusingly-similar name.
- Create a non-CBD version of an edible product or supplement. A trademark owner might release a line of vitamins alongside their CBD supplements. If the trademark owner sells CBD brownies, perhaps they could produce a non-CBD line of brownies as well.
- Create a blog or informational website about the benefits of CBD (that is not merely an advertisement for the products, but a functional blog). This would allow further protection of the trademark.
- Finally, create an apparel/lifestyle brand using the trademark and protecting those items with the USPTO.
Finally, it is important to be diligent and know what your competitors are doing. Given the overwhelming popularity of CBD, Congress and/or the FDA will likely change the law at some point to accommodate some legal sales of the product at a federal level. Timing is crucial to ensure you have a spot in line with the USPTO if/when that happens.