Trademark Law Year in Review:
Select Cases from 2020

Supreme Court Decisions

Supreme Court Unfastens Willfulness Requirement From Trademark Infringer’s Profits

(Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (2020)).

In April 2020, the Supreme Court held that prevailing trademark owners do not have to prove willfulness to be awarded an infringer’s profits.  While a trademark infringer’s intent and corresponding willful actions remain relevant to the analysis, the Court rejected a categorical rule requiring proof of willfulness.  The decision may increase monetary awards in trademark infringement cases.

In 2002, Romag agreed to supply Fossil with Romag’s magnetic snap fasteners for Fossil’s handbags and other products.  In 2010, Romag sued Fossil for patent and trademark infringement after learning that Fossil’s contracted factories in China were using counterfeit Romag fasteners and Fossil was no taking action to stop the practice.  The U.S. District Court for the District of Connecticut found Fossil liable, and the jury awarded Romag $6.7 million of Fossil’s profits to “deter future trademark infringement.”  The trial court overturned the jury’s damages award because the jury found Fossil acted “callously,” rather than “willfully,” as required by the controlling Second Circuit precedent for a profits award.  The Federal Circuit upheld the district court’s decision.

Not all circuits follow the Second Circuit’s willfulness requirement and the Supreme Court granted certiorari to resolve this split.  The opinion, penned by Justice Gorsuch and joined by seven other Justices, focused on interpreting the Lanham Act’s damages provisions.  Under 15 U.S.C. § 1117(a), the Lanham Act authorizes a variety of remedies, including a defendant’s profits, plaintiff’s damages, and attorney fees, stating:  “When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established . . . , the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”

In its assessment, the Court keyed in on the statute’s various intent requirements, noting that the Lanham Act “speaks often and expressly about mental states.”  The Court found the absence of such an intent requirement relative to § 1125(a) telling.  Specifically, the Court noted that the Lanham Act includes a “willfulness” requirement as a precondition to a profits award for trademark dilution under §1125(c), but that there is no corresponding requirement for trademark infringement under §1125(a).  The Court refused to read words into the statute, under “principles of equity” or otherwise, especially where the wording was included “elsewhere in the very same statutory provision.”

In vacating the Federal Circuit’s decision and remanding the case, the Court emphasized that it does not question or seek to overturn pre- or post-Lanham Act case law holding that an infringer’s state of mind is an important consideration in determining available relief, noting that “an innocent trademark violator often stands in very different shoes than an intentional one.”  However, the Court would not take the step of requiring an “inflexible precondition” before trademark owners could secure a defendant’s profits. 

Justice Sotomayor wrote a concurring opinion, cautioning that a district court’s award of profits for innocent or good-faith trademark infringement would not be consistent with the “principles of equity” referenced in §1117(a).

BOOKING.COM Trademark Books a Federal Trademark Registration Courtesy of SCOTUS

(United States PTO v. Booking.com B.V., 140 S. Ct. 2298 (2020)).

Trademarks pairing generic terms with top-level domains (i.e., BOOKING.COM) are not per se generic, the Supreme Court held in June.  These “generic.com” marks can serve as source identifiers and are registerable at the USPTO.  This decision protects hundreds, if not thousands, of existing federal trademark registrations for similar generic.com marks from cancellation on genericness grounds.  It also provides clarity to future applicants regarding the evidence necessary to obtain registration for their generic.com marks on the Principal and Supplemental Registers.

In 2011 and 2012, Booking.com, a travel and hotel reservation company, filed four trademark applications for BOOKING.COM word and design marks.  The USPTO found the BOOKING.COM marks generic for online hotel reservation services because “BOOKING” is generic for travel reservations and “.COM” is generic for a commercial website.  As such, “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings.”  Alternatively, the USPTO held that even if BOOKING.COM is descriptive, not generic, it was unregistrable on the Principal Register because it lacked secondary meaning.  The TTAB affirmed these refusals.

Booking.com appealed to the U.S. District Court for the Eastern District of Virginia, which allowed for the introduction of extensive evidence related to consumers’ perception of the BOOKING.COM mark.  Relying on this evidence, the district court concluded that BOOKING.COM—unlike the term “booking” standing alone—is not generic, but descriptive of Applicant’s services.  As BOOKING.COM was held to be descriptive, the district court was then able to rely upon the extensive evidence that consumers associate the BOOKING.COM mark with Booking.com and its website to find that the mark had established secondary meaning for hotel-reservation services and, as such, the mark was registerable on the Principal Register.  

The USPTO appealed the genericness decision to the Fourth Circuit, without contesting the secondary meaning finding.  The Fourth Circuit affirmed the decision, rejecting the USPTO’s contention for a per se rule that combining a generic term, like “booking,” with a generic top-level domain, like “.com,” yields a generic composite.

In June, the Supreme Court affirmed the Fourth Circuit’s decision, finding no per se rule that generic.com trademarks are automatically generic.  Instead, these marks should be deemed generic only if consumers perceive them as such for an entire class of goods or services, without any source-identification function. 

As applied to the BOOKING.COM mark, the Court examined whether (1) consumers would “understand Travelocity—another such service—to be a ‘Booking.com’” or (2) consumers “searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.”  As neither scenario applied, the Court concluded that BOOKING.COM is not generic.

The Court went on to say that a per se, exclusionary rule finding all generic.com terms to be generic would be inconsistent with the USPTO’s own practice, because USPTO rules require it to assess consumer perception of a term before finding it generic.  Such assessment of consumer perception is a question of fact, with the Court noting that the following evidence can be considered:  “consumer surveys, dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”  Justice Sotomayor’s concurrence questioned the reliability of certain evidence.

The Count also pointed to the USPTO’s older registrations for other “.com” marks, like Reg. No. 3,601,346 for ART.COM and Reg. No. 2,580,467 for DATING.COM.  A per se rule finding generic.com marks to be generic would leave all such registrations vulnerable to cancellation on genericness grounds.

Finally, in response to the USPTO’s fears (as echoed in Justice Breyer’s dissent) that trademark protection for BOOKING.COM could exclude or inhibit competitors from using the term “booking” or adopting similar domain names like “ebooking.com” or “hotel-booking.com,” the Court explained that general trademark principles address such concerns, as (1) descriptive and weaker terms are afforded a narrower scope of protection (i.e., “[t]he weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion”); and (2) the doctrine of classic fair use protects from liability anyone who uses descriptive terms fairly and in good faith to describe her own goods/services.

Trademarks & The First Amendment

Whiskey Business: Ninth Circuit Vacates Infringement Judgment Against “Bad Spaniels” Dog Toy Maker

(VIP Prods. Ltd. Liab. Co. v. Jack Daniel's Props., 953 F.3d 1170 (9th Cir. 2020)).

In March, the Ninth Circuit vacated and remanded Jack Daniel’s trademark infringement claims against VIP Products, LLC and reversed trademark dilution claims based on VIP’s First Amendment rights to use Jack Daniel’s trade dress to make expressive works.

VIP Products, LLC, designs, markets, and sells “Silly Squeakers,” dog toys that look like well-known beverages with humorous dog-related names and designs—all with the goal of reflecting “on the humanization of the dog in our lives” and commenting on “corporations [that] take themselves very seriously.”  One of VIP’s top-selling toys is the Bad Spaniels squeaker toy, which is in the shape of a Jack Daniel’s bottle and features an image of a spaniel.

After getting whiff of VIP’s sales of the toy, Jack Daniel’s demanded that it stop selling the Bad Spaniel.  VIP responded by filing suit in the District Court for the District of Arizona seeking a declaration that the toy "does not infringe or dilute any claimed trademark rights" of Jack Daniel’s and cancellation of Jack Daniel’s registration in the bottle’s design.  Jack Daniel’s brought counterclaims alleging trademark and trade dress infringement and dilution, which VIP defended by contending the conduct was both a nominative fair use and protected by the First Amendment.  The district court rejected the defenses and instead found that Jack Daniel’s trade dress was entitled to protection and that Jack Daniel’s had established dilution by tarnishment and infringement of its trademarks and trade dress.  The court issued a permanent injunction prohibiting the manufacture and sale of the Bad Spaniels toy.  VIP appealed.

On appeal, the Ninth Circuit affirmed the findings of the district court that the Jack Daniel’s trade dress and bottle design are distinctive and aesthetically nonfunctional, and therefore entitled to protection.  With this established, the court turned to VIP’s nominative fair use and First Amendment defenses.  First, the court upheld the district court’s decision to reject VIP’s nominative fair use defense because the defense does not apply where the accused mark is not identical to the plaintiff’s mark.  The court noted that while the Bad Spaniels toy and Jack Daniel’s bottle had obvious similarities, they also featured distinct differences such as the image of the spaniel and the dog-related phrases featured on the labels.

Next, the court considered VIP’s First Amendment defense and noted that the likelihood-of-confusion test used in trademark infringement cases “requires that the plaintiff have ‘a valid, protectable trademark’ and defendant's ‘use of the mark is likely to cause confusion.’” However, the court recognized that in cases that involve artistic expression, the likelihood-of-confusion test often fails to account for “the full weight of the public’s interest in free expression.”  As a result, a plaintiff must satisfy the test established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and show “that the defendant's use of the mark is either (1) ‘not artistically relevant to the underlying work’ or (2) ‘explicitly misleads consumers as to the source or content of the work.’”  The court vacated the district court’s finding of infringement and remanded for a determination of whether Jack Daniel’s can satisfy the Rogers test.

Finally, while the court remanded for additional infringement analysis, it held that VIP was entitled to judgment in its favor on the dilution claims because the trade dress and bottle design were used to convey a humorous message.  The court determined that despite being used to sell a product, use of the marks in this way was noncommercial and protected by the First Amendment.  It thus vacated the judgment and permanent injunction.

In Legal Warfare Over Humvee Trademarks, the First Amendment Goes Beyond the Call of Duty in Dismissing Am General’s Claims

(AM Gen. LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020)).

Relying on the First Amendment, the Southern District of New York dismissed AM General LLC’s claims against Activision Blizzard, Inc. for featuring Humvee vehicles in the well-known video game franchise Call of Duty.

AM General designs and manufactures Humvee-branded vehicles for military and commercial use.  The Humvee is primarily used for military operations by the United States Armed Forces and the militaries of over 50 countries.  AM General owns various trademark registrations for the HUMVEE word mark and design elements of the vehicle itself.

Activision’s Call of Duty is one of the most successful and well-known video game franchises in the industry.  Call of Duty is a series of first-person shooter video games that are known for their online multiplayer game modes and their single player campaigns, which include cinematic depictions of warfare intended to expose players to simulated military combat.  The Humvee vehicle is displayed (and is sometimes driven by players) during various missions and game modes.  The Humvee vehicle is also featured in various advertisements for the Call of Duty franchise.

AM General sued Activision for trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under federal and state law.  Activision moved for summary judgment on all claims.

In granting Activision’s motion, the court looked to the two-prong test in Rogers to determine whether the Lanham Act should be interpreted narrowly to avoid the suppression of protected speech under the First Amendment.  In citing Rogers, the court noted that the “balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”

Under the two-prong Rogers test, courts in the Second Circuit must determine whether the use of the trademark (1) has any “artistic relevance to the underlying work whatsoever,” and (2) “explicitly misleads as to the source or the content of the work.”

With respect to the first prong, the court found that Activision’s uses of Humvees in Call of Duty had artistic relevance:  “Featuring actual vehicles used by military operations around the world in video games about simulated modern warfare surely evokes a sense of realism and lifelikeness to the player who ‘assumes control of a military soldier and fights against a computer-controlled or human-controlled opponent across a variety of computer-generated battlefields.’”

In analyzing the second prong, the court applied the Polaroid factors and found that six out of the eight factors weighed in Activision’s favor.  Activision did not dispute the strength of AM General’s HUMVEE mark, and the evidence of actual confusion factor only “slightly” weighed in AM General’s favor.  However, the court noted that AM General’s survey, which, it argued, “found that 16% of consumers shown actual video game play from Activision’s games were confused as to AM General’s association with Call of Duty,” was evidence of “some” confusion “at most.”  Nonetheless, “the countervailing First Amendment consideration counsel[ed] against according [the evidence of actual confusion] undue importance in this context.”

On balance, the Polaroid factors showed AM General failed to demonstrate that Activision’s uses “explicitly mislea[d] as to the source or the content of the work.”  Accordingly, AM General’s federal and state trademark infringement, trade dress infringement, unfair competition, false designation of origin, and dilution claims failed.

As for AM General’s false advertising claims, the court found that (1) none of Activision’s advertisements contained a literally or impliedly false statement, (2) Activision’s actions or practices were not deceptive, and (3) AM General did not provide any evidence that it suffered any actual or likely injury.  Consequently, the court also dismissed the federal and state false advertising claims.

Other Notable Cases:  Trade Dress Functionality & Descriptive Terms

Third Circuit Finds Cookie Trade Dress Functional, Rejecting Pocky’s Request for Just Desserts

(Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 977 F.3d 261 (3d Cir. 2020)).

They say imitation is the sincerest form of flattery, but for Ezaki Glico, the company behind the famous and beloved chocolate-covered cookie stick, Pocky, competitor imitation is a constant source of frustration.  One competitor in particular, Lotte, sells its Pepero cookie, which, like Pocky, is stick-shaped and partly coated in chocolate or flavored cream.  

In 2015, Ezaki Glico sued Lotte in the District Court for the District of New Jersey alleging trademark infringement and unfair competition in violation of the Lanham Act and the New Jersey Fair Trade Act.  The District Court granted summary judgment for Lotte after finding Pocky’s trade dress configuration is functional and therefore not protectable.  Ezaki Glico appealed to the Third Circuit.

On appeal in October, the Third Circuit noted that both the Lanham Act and New Jersey Fair Trade Act claims depend on the validity of the Pocky trade dress and focused its analysis on whether or not the trade dress is functional.  The court noted that because copying is a legal part of market competition, “even if copying would confuse consumers about a product's source, competitors may copy unpatented functional designs.”

Unsurprisingly, Ezaki Glico urged the court to adopt a narrow interpretation of what it means for a trade dress to be functional and argued that the term should be equated with what is “essential.”  But the court looked to the term’s ordinary meaning and determined that a product’s configuration is functional when it is useful.  With this in mind, the court turned its attention to whether or not functionality had been proven, noting the several ways in which this can be done.  The court’s non-exhaustive list of considerations included evidence directly showing “that a feature or design makes a product work better”, the recognition and praise of a feature’s usefulness by the product’s marketer, a utility patent on the feature, and the limited ways to design a product.

Addressing each consideration in turn, the court first determined that “every feature of Pocky's registration relates to the practical functions of holding, eating, sharing, or packing the snack.” Specifically, it noted that the uncoated handle of each stick allows people to eat it without getting their hands dirty, and the shape of the stick itself makes the cookie easy to hold, eat, and share.  Second, the court stated that Ezaki Glico promotes the design through advertisements, which tout its useful features and state “Pocky lends itself to sharing anytime, anywhere, and with anyone.”  Third, the court found Ezaki Glico’s utility patent irrelevant to the functionality analysis of the trade dress features as none of the claimed features in the manufacturing method overlapped with its trade dress.  Thus, any consideration of the utility patent by the district court was in error, though immaterial.  Finally, even though there were alternative cookie designs available to Lotte, the court determined there was ample evidence that the product design was functional.

In conclusion, recognizing the separate domains of patents and trademarks, the court held that Ezaki Glico could not rely on its (now invalid) trade dress to prevent competitors from using the functional features of the cookie and affirmed the district court’s decision, stating, “That's the way the cookie crumbles.”

Sparks Fly As Second Circuit Considers Costco’s Fair Use of “Tiffany” Engagement Rings

(Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020)).

In August, the Court of Appeals for the Second Circuit vacated and remanded a multi-million dollar judgment against Costco, finding the wholesaler’s evidence created a genuine question as to the likelihood of customer confusion and sufficiently supported its fair use defense for its use of the term “Tiffany” in connection with the sale of diamond engagement rings.

On Valentine’s Day, 2013, after becoming aware of Costco’s use of the word Tiffany on jewelry display cases and point-of-sale signs, Tiffany & Co. brought suit in the District Court for the Southern District of New York.  It alleged that Costco was liable for various Lanham Act and New York law violations, including trademark infringement, counterfeiting, unfair competition, and false advertising.  In response, Costco argued that its use of the word “Tiffany” to describe certain rings’ setting styles was not infringement but “fair use.”  The district court determined Costco was liable for trademark infringement, unfair competition, and counterfeiting and awarded Tiffany damages in the amount of $21,010,438.35.

In September 2017, Costco appealed the judgment arguing the district court “erroneously rejected Costco’s fair use defense and held Costco liable for trademark infringement and counterfeiting as a matter of law.”  The Second Circuit agreed.

First, the court considered the district court’s determination that no reasonable jury could find that Costco’s use of the word “Tiffany” was not likely to cause confusion with Tiffany’s registered mark.  In making this determination, the district court employed the eight-factor Polaroid test, and on appeal, Costco contested the district court’s analysis of three of the factors:  “whether Costco’s customers were actually confused, whether Costco adopted Tiffany’s mark in bad faith, and whether the relevant population of consumers was sufficiently sophisticated to avoid confusion.”

With respect to actual customer confusion, the Second Circuit determined that Costco had provided sufficient evidence to raise a question as to actual customer confusion through an expert report, which highlighted flaws of the report provided by Tiffany.  Turning next to the district court’s conclusion that no rational finder of fact could find that Costco acted in good faith in using the Tiffany mark, the Second Circuit stated that “Costco’s admitted intent to sell jewelry that looks like Tiffany’s . . . cannot be enough to justify a finding that Costco acted in bad faith.”  Finally, the court determined that a jury could reasonably conclude through Costco’s evidence that purchasers of diamond engagement rings “would be sufficiently attentive discriminating as to recognize that Tiffany had nothing to do with Costco’s diamond engagement rings.”  As a result, the Second Circuit concluded that a reasonable jury could conclude from Costco’s evidence that the term describes a style of setting that is not unique to rings sold by Tiffany.

Next, the court turned its attention to Costco’s fair use defense, which was rejected by the district court based on Costco’s insufficient evidence that it used the “Tiffany” term in good faith.  For Costco to be successful in its defense, it must establish “that it used the allegedly infringing term ‘(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.’”  First, based on Costco’s production of documents demonstrating that it displayed “Tiffany” in the same manner it displayed descriptive setting information for other rings, the court found a jury could conclude that Costco did not use the term as a trademark.  Second, the court determined that a jury could also find that Costco used the term descriptively through its evidence that the term had an independent descriptive meaning in the industry.  Third, the court determined that evidence supporting the first two requirements was sufficient for a jury to reasonably conclude that Costco had used in the word in good faith.  As a result of these findings, the court vacated the district court’s judgment as to counterfeiting as well and remanded the case for trial.

Federal Circuit & TTAB Decisions

The Federal Circuit Holds Color Trade Dress May Be Inherently Distinctive

(In re Forney Indus., 955 F.3d 940 (Fed. Cir. 2020)).

Forney Industries filed a trademark application on the Principal Register for the color mark shown below for packaging for welding and machining goods.  

Forney sought to register the mark without a showing of secondary meaning, and the USPTO Examining Attorney refused registration on the ground that the mark was not inherently distinctive and required proof of acquired distinctiveness to be registrable on the Principal Register.

On appeal to the TTAB, the Board reached the same conclusion—that the mark was not inherently distinctive, holding (1) a color mark can never be inherently distinctive (whether on a product or its packaging), and (2) a color mark for packaging cannot be inherently distinctive without a defined peripheral shape or border.  Forney appeal to the Federal Circuit. 

The Federal Circuit held that the TTAB erred in both holdings.

First, the Federal Circuit held that the TTAB erred in holding that a color mark is incapable of being inherently distinctive.  The court relied on the following three Supreme Court trade dress decisions.

• Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), for the proposition that trade dress can be inherently distinctive.  In Two Pesos, the Supreme Court assumed without deciding that the trade dress in that case—restaurant décor—was inherently distinctive. 
• Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), which implied but did not hold that secondary meaning may be required to protect color alone as a trade dress.  The trade dress at issue in Qualitex was a unique shade of green used on dry-cleaning pads. 
• Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205 (2000), which considered the trade dress of a garment design.  While Court—discussing a product design mark—held that “design like color, is not inherently distinctive”; it distinguished this form of trade dress from the restaurant décor in Two Pesos (which it found was more akin to product packaging), noting that “[t]he attribution of inherent distinctiveness to certain categories of . . . product packaging derives from the fact that the very purpose . . . of encasing [a product] in a distinctive packaging, is most often to identify the source of the product.” 

Based on this precedent, the Federal Circuit found that Forney’s multi-color product packaging mark was like the mark at issue in Two Pesos and “falls firmly within the category of marks the Court described as potential source identifiers.”  Because the proposed mark comprised a horizontal black bar with the color red fading to yellow, the Federal Circuit concluded that Forney’s mark could serve as a source of goods in that packaging and the TTAB should have evaluated the proposed mark for inherent distinctiveness.

Second, the Federal Circuit held that the TTAB erred in holding that a color mark for packaging may only be inherently distinctive when defined by a peripheral shape or border.  The court explained that to determine whether trade dress is inherently distinctive, the primary question is whether “the trade dress ‘makes such an impression on consumers that they will assume’ the trade dress is associated with a particular source.”  To answer this question, the court required the TTAB to consider the relevant Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977) factors, including:  “(1) whether the trade dress is a “common” basic shape or design; (2) whether it is unique or unusual in the particular field; and (3) whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods[.]”  Moreover, the Federal Circuit held that whether a packaging trade dress is a source indicator depends on the “overall impression created by both the colors employed and the pattern created by those colors.”  Having found that the proposed mark was not a mere color mark but also a “symbol,” the court vacated the TTAB’s decision and remanded for the TTAB to consider the distinctiveness of the proposed mark under the Seabrook factors.

TTAB Just Says No To Mark for CBD Dietary Supplement

(In re Stanley Bros. Soc. Enters., LLC, 2020 TTAB LEXIS 251, (TTAB June 16, 2020)).

While the cultivation of cannabis is permissible in certain states and situations, making commercial use of the plant is still difficult to do legally, which in turn makes trademark protection for cannabis products difficult to obtain.  In In re Stanley Brothers Social Enterprises LLC, the Trademark Trial and Appeal Board (“TTAB”) provided no relief for such products, issuing a precedential decision affirming the refusal to register a trademark for a cannabis derivative marketed as a dietary supplement.

Stanley Brothers grows cannabis and produces various cannabis derivative products, one of which is an oil extracted from the cannabis plant containing a large amount of cannabidiol (“CBD”).  CBD is a non-intoxicating substance undergoing clinical investigation for potential beneficial uses.  Stanley Brothers calls its product a hemp oil extract and markets it as a general wellness product and dietary supplement.

Stanley Brothers sought to register the mark “CW” for its hemp oil extract.  The Examining Attorney refused registration, citing the provisions of the Trademark Act that prohibit the registration of marks for illegal goods.  Specifically, a commercial mark is unregisterable if the application record shows that the associated product violates federal law in one of two ways:  either the unlawful nature of the use is established by a court or other government agency with “competent jurisdiction,” or the use is per se unlawful.  The Examining Attorney reasoned that Stanley Brother’s hemp oil extract was per se unlawful under the Food, Drug, and Cosmetics Act (“FDCA”).  Because CBD is a biological product or drug undergoing public clinical investigation, introducing foods containing CBD into interstate commerce violates the FDCA.

Stanley Brothers asserted three arguments on appeal, all of which the TTAB rejected. 

First, Stanley Brothers argued that the Industrial Hemp Provision of the 2014 and 2018 Farm Bills excludes industrial hemp from the relevant sections of the FDCA.  The Industrial Hemp Provision allows the cultivation of hemp for certain industrial purposes.  However, the TTAB reasoned that Stanley Brothers’ permission to legally cultivate hemp was irrelevant.  The FDCA governs the addition of botanical compounds undergoing clinical investigation, and CBD is a botanical compound undergoing clinical investigation.  Thus, the TTAB concluded that because the Farm Bills contain no provisions permitting the sale of CBD in food products while CBD is undergoing clinical investigation, the Industrial Hemp Provision did not exclude Stanley Brother’s hemp oil extract from the FDCA.

Second, Stanley Brothers argued that its goods are dietary supplements, not food.  The FDCA defines food as articles used for “food or drink for man or other animals” and “components of any such article,” and includes dietary supplements in that definition.  Using this statutory definition, the TTAB found that Stanley Brothers’ goods were food.  The TTAB also noted Stanley Brothers’ intention to add its goods to beverages sold in different flavors.

Third, Stanley Brothers argued that CBD is exempt from the relevant sections of the FDCA because it was marketed for food before the clinical investigation began.  Stanley Brothers introduced one piece of evidence in support of this argument, namely a press release by the Hemp Industries Association (“HIA”) positing that CBD use in food predated clinical study of CBD.  Unpersuaded, the TTAB noted that the press release was an assertion of the HIA’s position, not a statement of fact, and that the Food and Drug Administration disputes the HIA’s assertion that CBD use in food products pre-dates clinical investigation of CBD.  Due to the absence of any other probative or supportive evidence, the TTAB rejected Stanley Brothers’ claim for an exemption.

Ultimately, because (1) the goods in question (food containing CBD) per se violated the FDCA, (2) CBD was undergoing public clinical investigation, and (3) the record contained no evidence that the marketing of CBD in food pre-dated the clinical investigation, the TTAB affirmed the refusal of Stanley Brothers’ application.