A recent Trademark Trial and Appeal Board decision confirmed that, for now and the foreseeable future, companies selling CBD-infused products intended for consumption, including CBD derived from hemp, will not be able to obtain a federal trademark registration covering such use.
The Lanham Act, the federal statute that regulates federal registration of trademarks, requires use of a trademark in commerce to qualify for federal registration. Accordingly, the United States Patent and Trademark Office (USPTO) will refuse registration of a trademark that is not in lawful use in commerce. Currently, the Food & Drug Administration (FDA) has interpreted the Food, Drug, and Cosmetics Act (FDCA) to prohibit the use of CBD in products intended for consumption. As a result, federal trademark registration for various goods that contain CBD, including dietary supplements, foods, and beverages, will be refused registration by the USPTO as unlawful under the FDCA.
The Board recently affirmed the USPTO’s decision to refuse registration of NL LLC’s trademark application to register NATURAL LEAF CBD LIVE BETTER NATURALLY and design for CBD-infused dietary and nutritional supplements on the grounds that the sale of its CBD-infused supplements are per se unlawful under the FDCA. While NL LLC conceded that the sale of its CBD-infused supplements are per se unlawful under federal law, it argued that the Lanham Act does not specify that the requisite use in commerce must be lawful and pointed out that its use in commerce under State of Colorado laws (where it is based) is legal.
The Board easily disposed of both arguments and stated that:
- Federal courts have expressly disagreed with NL LLC’s argument in upholding the USPTO’s lawful use requirement and have cited with approval the ruling in In re Stellar Int’l, Inc., 159 USPQ 48 (TTAB 1968) where the Board recognized that the Lanham Act does not refer to “lawful commerce,” but “the term ‘commerce’…must necessarily refer to ‘lawful commerce’” as the Lanham Act “was not intended to recognize under its provision shipments in commerce in contravention of other regulatory acts promulgated under the ‘commerce clause’ of the Constitution”; and
- “[T]he fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law,” quoting the explanation provided in In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016).
The Board’s decision reinforces that the use of a trademark in commerce in connection with certain goods or services — the key requirement for all federal trademark registrations—must be lawful use in commerce to qualify for federal registration. This includes compliance under the FDCA, regardless of the product or service’s legal status under state law.