Hoban Law: CBD, Amazon Distribution Channel and Trademarks

Amazon.com is the largest on-line retailer in the United States and has overcome numerous obstacles to arrive in this position.  This author has worked with enforcement of IP rights including trademark on platforms including eBay and Amazon since the 1990’s.

Authored by Kevin Fortin

Experience

Kevin H. Fortin is a patent attorney and business advisor focused on the cannabis industry.   Over the last ten years, he has helped others in building IP portfolios, branding, and licensing.  Licensing trademarks and non-core technologies can be done in a strategic way to provide additional revenue streams and reach other strategic goals.  Specialized skill in drafting and filing patent applications for cannabis-related inventions and processes.

Prior experience includes experience at one of the largest patent firms in the US and 6 years with a multinational corporation involved in patent licensing.

 

THE ARTICLE

In the early days, trademark owners selling products at Amazon could use their trademarks to eliminate knock-off sales.  Amazon created a system of regulations for itself and various procedures for limiting the sales of knock-offs on its platform.  Now Amazon seems to be requiring various vendors of CBD products to hold a registered trademark.

The benefits to Amazon of this new requirement are multi-fold.  By requiring a registration, the issue of knock-offs is reduced before it happens.

Another benefit is that the US Trademark Office, which does not register trademarks for illegal products, is now Amazon’s first-tier policing mechanism for regulatory compliance.  Amazon’s regulatory compliance burden is now minimized by the combination of its new policies regarding trademarks for CBD products and a stricter policing policy against CBD trademarks of the US Trademark Office.

The Trademark Office Refuses Registration of CBD Products

The challenge for CBD vendors is that while the farm bill is in full force, CBD is technically illegal under many circumstances.  The FDA has determined that CBD isolate is technically a drug in many ingestible forms, and its regulations prohibit selling “drugs”.  The Trademark Office now refuses registration of CBD products.

CBD is Different Than Hemp Extract Containing CBD

CBD is, however, different than hemp extract containing CBD.  Since hemp extracts are not consistent it is not being used as a drug in the pharmaceutical world.  CBD isolate, which is very consistent, is being used as an ingestible drug.  Some legal experts will say that there is a “grey area” surrounding the sales of hemp extract containing CBD.  The US Trademark Office has registered trademarks in the past for hemp extract products, but is not always consistent.  It has also refused registration, and this is quite common.

Solutions:  Many sell topicals including CBD or hemp extract, and obtain trademark registration for their name.  The name can be used later for a broader swath of products.  Others can license a trademark that is already registered from a third party and control the distribution of the third party branded CBD products.  Both are viable ways of developing and owning rights to a registered trademark.

Questions about this subject matter can be directed to Kevin@hoban.law.

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Author Bios

Canada
Matt Maurer – Minden Gross
Jeff Hergot – Wildboer Dellelce LLP

Costa Rica
Tim Morales – The Cannabis Industry Association Costa Rica

Nicaragua
Elvin Rodríguez Fabilena

USA

General
Julie Godard
Carl L Rowley -Thompson Coburn LLP

Arizona
Jerry Chesler – Chesler Consulting

California
Ian Stewart – Wilson Elser Moskowitz Edelman & Dicker LLP
Otis Felder – Wilson Elser Moskowitz Edelman & Dicker LLP
Lance Rogers – Greenspoon Marder – San Diego
Jessica McElfresh -McElfresh Law – San Diego
Tracy Gallegos – Partner – Fox Rothschild

Colorado
Adam Detsky – Knight Nicastro
Dave Rodman – Dave Rodman Law Group
Peter Fendel – CMR Real Estate Network
Nate Reed – CMR Real Estate Network

Florida
Matthew Ginder – Greenspoon Marder
David C. Kotler – Cohen Kotler

Illinois
William Bogot – Fox Rothschild

Massachusetts
Valerio Romano, Attorney – VGR Law Firm, PC

Nevada
Neal Gidvani – Snr Assoc: Greenspoon Marder
Phillip Silvestri – Snr Assoc: Greenspoon Marder

Tracy Gallegos – Associate Fox Rothschild

New Jersey

Matthew G. Miller – MG Miller Intellectual Property Law LLC
Daniel T. McKillop – Scarinci Hollenbeck, LLC

New York
Gregory J. Ryan, Esq. Tesser, Ryan & Rochman, LLP
Tim Nolen Tesser, Ryan & Rochman, LLP
Cadwalader, Wickersham & Taft LLP

Oregon
Paul Loney & Kristie Cromwell – Loney Law Group
William Stewart – Half Baked Labs

Pennsylvania
Andrew B. Sacks – Managing Partner Sacks Weston Diamond
William Roark – Principal Hamburg, Rubin, Mullin, Maxwell & Lupin
Joshua Horn – Partner Fox Rothschild

Washington DC
Teddy Eynon – Partner Fox Rothschild