The TTAB Affirms Refusal Of Another CBD Mark On “Lawful Use” Grounds

Fox Rothschild LLP

Fox Rothschild LLP

On September 25, 2020, the TTAB issued a non-precedential decision summarily rejecting an applicant’s attack against an examining attorney’s refusal to register the mark NATURAL LEAF CBD LIVE BETTER NATURALLY & Design for use on and in connection with dietary and nutritional supplements infused with CBD hemp oil extracts. The examining attorney had refused registration of the mark in view of the USPTO’s “Legal Use” requirement.

CBD is an abbreviation for “cannabidiol”—a chemical component of the cannabis plant that is regulated as a drug under the federal Food, Drug & Cosmetics Act (“FDCA”). The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public….” 21 U.S.C. § 331(ll). The FDCA deems a “dietary supplement” a “food.” Id. § 331(ff).

In view of these provisions, the examining attorney refused registration of NL’s mark for lack of lawful use in commerce, arguing that the goods, which contain CBD, are per se violations of the FDCA and the federal Controlled Substances Act (“CSA”).

In appealing the refusal of registration to the TTAB, Applicant NL LLC (“NL”) argued first that the Lanham Act’s use requirement does not require “lawful” use—it merely requires use in commerce. NL further argued that, because use of the NATURAL LEAF CBD mark is legal under Colorado law, the mark comports will all requirements for federal registration.

The TTAB quickly disposed of NL’s arguments noting that the TTAB “‘has consistently held that, to qualify for a federal … registration, the use of a mark in commerce must be lawful.’” [Decision, at p. 3 (quoting In re PharmaCann LLC, 123 USPQ2d 1122, 1123-24 (TTAB 2017)]. Accordingly, the goods for which the applicant uses the applied-for mark cannot be illegal under federal law. [Id., at p. 4]. In finding NL’s goods violative of the FDCA, the TTAB found:

“[NL’s] goods are food to which has been added a drug (CBD); substantial clinical investigations of CBD have been instituted, and the existence of these investigations has been made public; and there is no evidence of record that CBD was marketed in food before the substantial clinical investigations of CBD were instituted.

[Decision, at pp. 4-5].

In rejecting NL’s argument that the Lanham Act does not require “lawful use,” the TTAB also noted that numerous federal courts have disagreed with Applicant, affirming the USPTO’s long-standing application of the lawful use requirement. [Id., at p. 5].

Additionally, the TTAB rejected NL’s argument that the USPTO cannot require lawful use where it conflicts with state law noting, “‘[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.’” [Id., at p. 9 (quoting In re Brown, 199 USPQ2d 1350, 1351, 1352 (TTAB 2016) (emphasis added)]. In reaching this conclusion, the TTAB noted that the Supremacy Clause clearly provides that, “‘if there is any conflict between federal and state law, federal law shall prevail.’” [Id., at p. 9 (quoting Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005)].

The decision is In re NL LLC, Serial No. 87864999 (TTAB Sept. 25, 2018) (non-precedential).

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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