U.S. CBD makers in court over clashing trademarks

U.S.-based CBD Industries LLC, retailer of “cbdMD”-branded products, has filed a trademark infringement lawsuit against Louisiana-based Majik Medicine, saying that company’s use of the trademark “CBD MD” is confusing consumers.

CBD Industries, based in North Carolina, claims that Majik Medicine’s 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.” The complaint was filed in U.S. District Court for the Western District of North Carolina.

Majik Medicine has registered a trademark for “CBD MD” at the U.S. Patent and Trademark Office (USPTO) which should never have been issued, CBD Industries claims in the suit. The company requests the court to cancel the CBD MD trademark, and bar Majik Medicine from using it in the future. CBD Industries is seeking $75,000 in damages and attorneys’ fees.

CBD Industries 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.

‘No valid basis’

“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,” the suit suggests. “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 Medicine applied for the CBD MD trademark in 2016. It was issued by USPTO in 2017, before changes in U.S. law that resulted from passage of the 2018 Farm Bill, which legalized industrial hemp federally.

“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,” the lawsuit states.

$30 million in sales

CBD Industries was formerly registered as cbdMD and still trades under that name. The company sells CBD-based health & beauty topicals, and has been an aggressive advertiser including across American cable television channels. CbdMD reportedly has sales of roughly $30 million and “has been enthusiastically received by the consuming public,” according to the lawsuit.

Majik Medicine LLC was founded in 2011. The company sells herbal cosmetics, extracts and tinctures.

CBD Industries itself is facing an unrelated lawsuit filed last year in the same North Carolina federal district court. That case was brought by consumers who say the the company’s negligence resulted in two data breaches that caused customers’ personal and financial information to be compromised.  The case was brought by two private plaintiffs who claim their personal information including credit card numbers, email addresses, billing addresses and bank account numbers were stolen as a result of CBD Industries’ failure to protect their data.