Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In what may be seen as a significant blow to the cannabidiol (CBD) industry, the Trademark Trial and Appeal Board issued an opinion upholding an Examining Attorney’s refusal to register the “CW” (for Charlotte’s Web) mark in connection with “hemp oil extracts sold as an integral component of dietary and nutritional supplements” finding that these products could not be the basis of a lawful use in interstate commerce as required for a federal trademark registration. As a result of the 2018 Farm Bill, CBD with less than 0.3% THC is generally outside the Controlled Substances Act. Thus, sales of CBD-containing products with less than 0.3% THC would seem to be a lawful use in interstate commerce. The U.S. Patent and Trademark Office, however, has relied upon provisions of the Food, Drug, and Cosmetic Act (FDCA) to continue to find that sales of CBD-containing food and supplement products with less than 0.3% THC remains a non-lawful use in interstate commerce; and thus, federal trademark registrations for such products continue to be denied. Basically, the FDCA prohibits the sale in interstate commerce of a food, or dietary or nutritional supplement, that contains a compound (e.g., CBD) under clinical investigation as a new drug. So, federal trademark registrations for such products remain elusive.
2. In a follow up to a recent Takeaway (Takeaway No. 1), a judge in the Western District of Washington denied a motion to alter or amend the judgment and/or for a new trial based on the defendant’s argument that the Supreme Court’s recent opinion in Romag v. Fossil rendered the prior damages award essentially moot. Romag resolved a circuit split and held that a finding of willfulness was not a requirement for an award of defendant’s profits in a trademark case. In the present case, willful infringement was found and an award of defendant’s profits was made. The argument that Romag changed the analysis for damages and required a new trial was rejected – in a Minute Order, the district court found that “the Romag Court did not cast any doubt on the validity of an award of profits that is based on willful infringement.” Thus, it would appear to be a weak argument, at least based on Romag, to attempt to secure a new trial in a trademark case where defendant’s profits were awarded after a finding of willful infringement.
3. A recent opinion from the Federal Circuit relied on Section 101/Alice to invalidate a patent directed to an interactive video game for learning to play guitar. The claims were functional in nature and the patent did not identify any technological improvement to the computer that would support patentability. Thus, the Court concluded that the patent was directed to nothing more than standard guitar teaching practices, which was deemed to be an abstract idea. One clause in claim 1 of the asserted patent was potentially interesting in that it described a step of changing the difficulty of the fingering notations for a song in real time based on the user’s performance to that point. The patent, however, did not provide any details of “how” such real time changes were implemented. Thus, there was nothing found to be patentable.
