The recent case of In re Blue Water Wellness, LLC (Serial No. 87893655) presents a useful summary of the legal status of CBD trademarks (and the USPTO’s “lawful commerce” requirements in general).
The USPTO only allows trademark registration for federally lawful commercial activity. This gets tricky when someone files a trademark application based upon future “intent” to sell products that have uncertain legal status at the time of filing, but the legal status changes while the application is reviewed by the USPTO.
In this case, the applicant applied for the mark CBD2GO for “dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; all of the foregoing containing CBD.”
The application was filed on April 28, 2018, and initially refused for being unlawful under the Controlled Substances Act. That refusal was withdrawn after the passage of the 2018 Farm Bill and, instead, the USPTO newly refused the application for being unlawful under the Food Drug & Cosmetics Act.
Footnote 2, in this case, explains the Trademark Trial and Appeal Board’s logic: following the 2018 Farm Bill and USPTO Examination Guide 1-19, the Controlled Substances Act is no longer a basis to refuse hemp-derived CBD but the Food Drug & Cosmetics Act is a separate basis for unlawfulness and refusal. As a result, hemp products with ingestible CBD are still generally not an acceptable lawful basis for federal trademark registration.
The Trademark Trial and Appeal Board also clarifies at the end of this case that “1(b) bona fide intent to use” in commerce cannot exist on a trademark application filing date if the applied-for goods are not lawful on that date. You cannot file “hoping it will become legal.”
That said, with Examination Guide 1-19 the USPTO created an unusual exception for goods that became lawful after the 2018 Farm Bill. If someone applied for hemp plant biomass-based upon future intent to use when it was unlawful, before the Farm Bill was signed into law on December 18, 2018, 1-19 created an exception for those applicants to amend their earlier filing date to December 18, 2018. As a result of this exception, applicants who filed earlier (when the goods were unlawful) were rewarded by being able to amend and claim lawful bona fide intent starting from the date the law effectively changed.
Although federal trademark protection for CBD remains challenging (and for cannabis, or any unlawful controlled substance) it may still be advisable to evaluate creative application strategies, file early, and seek extensions in case the USPTO creates similar exceptions for goods that may become lawful in the near future.
