CBD retailer sues over rival’s ‘false, disparaging’ TM use


Rory O'Neill

CBD retailer sues over rival’s ‘false, disparaging’ TM use

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Cannabidiol (CBD) retailer cbdMD is suing rival Majik Medicine over the latter’s use of the ‘CBD MD’ trademark, claiming it is confusing consumers.

CBD Industries, formerly registered as cbdMD and still trading under that name, sells CBD-based products including lotions, oils, and creams.

According to its lawsuit, cbdMD enjoys sales in excess of $30 million and “has been enthusiastically received by the consuming public”.

In the complaint, filed at the US District Court for the Western District of North Carolina, cbdMD argues that Majik Medicine has disparaged its brand and that its use of the ‘CBD MD’ trademark is “likely to cause consumers into erroneously believing that Majik’s products are lawful food and dietary supplements, which they are not”.

Majik Medicine has registered a trademark for ‘CBD MD’ at the US Patent and Trademark Office (USPTO)—which cbdMD says should never have been issued in the first place.

CbdMD has taken issue with a September 2019 post on Majik Medicine’s Facebook page, which says that its offer to settle the trademark dispute was declined with no counteroffer.

“Majik’s post falsely represented that its ‘trademark was properly awarded,’ knowing that its use of the trademark in connection with a CBD food or dietary supplement product was not authorised under the Food, Drug and Cosmetic Act,” said the suit.

“Majik also knew that its CBD MD Mark should be cancelled because, among other things, it fails to function as a mark, and because Majik lacked a bone fide intention to lawfully use the mark,” it added.

CbdMD claims the USPTO’s issuance of Majik Medicine’s trademark in 2017 was unlawful because, at the time, CBD products were illegal under federal law.

“The USPTO instructed that for applications filed before December 20, 2018, that identify goods encompassing CBD or other cannabis products, registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA.

“Such applications did not have a valid basis to support registration at the time of filing because, according to the USPTO, the goods violated federal law. Majik’s filed its trademark application in 2016 and the USPTO issued the registered mark in 2017—long before the change to the law in the 2018 Farm Bill,” said the suit.

CbdMD wants the North Carolina court to cancel the trademark, and issue an injunction barring Majik Medicine from using it in future. The company is also seeking damages in excess of $75,000 for the alleged infringement, as well as an award of attorneys’ fees.

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Cannabis, CBD, cbdMD, Majik Medicine, trademark, Farm Bill, USPTO