TTAB Finds Supplements Related to CBD Cosmetics, But Not to Candles or Vape Pens

The Board rendered a split decision in this appeal from a Section 2(d) refusal of the mark LOVA for "Non-medicated facial serum; body oil; non-medicated body balm; hemp-infused cosmetic and bath products, namely, bath bombs; any hemp and CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis" in Class 3, and for hemp-infused candles (Class 4) and vape pens (Class 34). The USPTO found confusion likely with the registered mark LOVA NATURALS for "dietary supplements; nutritional supplements" in Class 5 (NATURALS disclaimed). The Board upheld the refusal as to the Class 3 goods, but reversed as to the candles and vape pens. In re Pioneer IP Interests LLC, Serial No. 88637739 (June 7, 2023) [not precedential] (Opinion Judge David K. Heasley).

Applicant argued that its class 3 goods are limited to CBD (hemp) products, whereas the cited registration makes no reference to CBD, which "makes all the difference in distinguishing the respective goods." Moreover, if the registrant's class 5 products contained CBD they would be unlawful under the Controlled Substances Act and could not be encompassed by the cited registration. Examining Attorney Tasneem Hussain maintained that the registration contains no limitation as to ingredients and could cover CBD-containing supplements.

A key issue . . . is whether Registrant’s identified “dietary supplements” and “nutritional supplements” may be construed to contain CBD or other forms of hemp, similar to that included in Applicant’s cosmetic products, candles, and vape pens.

The Board acknowledged the principle that a registration cannot be construed to encompass illegal goods (see, for example, Satinine Societa v. P.A.B. Produits, 209 USPQ 958 (TTAB 1981)). However, it observed that it is not illegal for supplements to contain hemp.

Because Cannabis-derived products meeting the “stalks and seeds” exception were lawful both before and after the Farm Bill became law, the cited Registration can be construed to contain those non-CBD “hemp” ingredients lawfully, without changing its application filing date or adding the “not less than 0.3% THC” language.

Comparing the involved goods (as so construed), the Board found that registrant offers its supplements for “beauty repair” and claims that its product diminishes wrinkles and reduces cellulite, among other skincare benefits. Thus, the goods have "shared cosmetic purposes."

The Board also found "some overlap in channels of trade: two of the third-party websites offer both CBD-based cosmetics and non-CBD based supplements, as does one of the third-party registrations."

Consequently, when we compare Applicant’s cosmetics with Registrant’s supplements, we find that “the respective products are related … and … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.

It was a different story as to applicant's candles and vape pens. "Overall, neither the rationales nor the third-party evidence advanced by the Examining Attorney establish that Applicant’s candles and vape pens are related to Registrant’s dietary and nutritional supplements in the mind of the purchasing public, or that the same purchasing public would shop for them and encounter them in the same channels of trade."

And so, the Board affirmed-in-part and reversed-in-part.

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TTABlogger comment: Note the Board's reliance on extrinsic evidence regarding the use of registrant's products for cosmetic purposes.

Text Copyright John L. Welch 2023.