Half-baked Specimens Doom HERBAL ACCESS Application at TTAB

The Trademark Trial and Appeal Board (the "Board") has drawn a line in the sand for legal purveyors of marijuana seeking federal trademark registrations.

In its first ever precedential decision in a case involving marijuana dispensing services, the Board affirmed the refusal to register Morgan Brown's use-based application for the mark HERBAL ACCESS for use in connection with "retail store services featuring herbs." In re Morgan Brown, Serial No. 86362968 (TTAB 2016). The Board agreed with the Examining Attorney that the mark was not being used lawfully in commerce.

What, you might ask, is unlawful about the sale of herbs? Presumably nothing, unless the applicant submits a specimen which prompts the Examining Attorney to review the applicant's website which shows that the applicant is a medical marijuana dispensary. In filing the application, Brown provided a specimen showing the mark on a Facebook page, both in the location associated with the owner of the Facebook page, and in a picture of a door, presumably leading into the HERBAL ACCESS retail location. The specimen also showed the applicant using a green cross as its profile picture.

That green cross sparked the Examining Attorney's curiosity about the nature of the services, and led the Examiner to check out the Applicant's web site. That was the Applicant's undoing. The Examining Attorney refused the application on the grounds that "herbs" includes a marijuana, which is a substance that cannot be lawfully distributed or dispensed under federal law. The Examining Attorney argued that the specimen submitted by Brown, as well as his website (http://herbalaccess.com/) established that he was involved with a per se violation of federal laws. The specimen shows a green cross, which has become the symbol of the organized medical marijuana industry in the United States, and the homepage of the website contains the rather unambiguous statement "Your Access Is Granted! Call or stop by today and find out why people consider our marijuana to be the best of the best!" with a number of marijuana plants pictured:

Brown appealed, but the Board was unmoved. Citing a litany of cases, the Board explained at the outset that it has "consistently held that, to qualify for a federal service mark registration, the use of a mark in commerce must be 'lawful.'" Relying on this case law, the Board determined that even if a product or service may be lawful within a state —€“ such as the sale of marijuana in certain states —€“ it is irrelevant to the question of federal registration, which deals exclusively with the question of legality under federal law.

The Board also noted that while the USPTO generally presumes that the use of a mark in commerce is lawful, registration will be refused based on lawful use in commerce if:

1. A violation of federal law is indicated by the application record or other evidence; or
2. When the applicant's application-relevant activities involve a per se violation of a federal law.

See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)

Looking at the specimen and the webpage, the Board determined that it was clear that Brown was using the mark in connection with the sale of marijuana, which falls within both the services identification ("herbs") and the prohibitions of the Controlled Substances Act. This led the Board to conclude that "Applicant's retail store services include sales of a good that is illegal under federal law, and therefore encompasses a use that is unlawful." On this basis, the Board affirmed the refusal to register HERBAL ACCESS.

This decision follows a long line of refusals of marks related to marijuana sales and so is not surprising in that regard. The Board evidently felt that it was high time for it to issue a precedential decision on the question, and perhaps thereby deter future applicants from trying creative workarounds like using "herbs" in the goods description.

Having read the decision, it is also clear that there were some arguments that were not made, which remain unsettled as to their efficacy. For instance, if Brown had amended the identification to specifically exclude marijuana, he should have been able to avoid this refusal because "herbs" would no longer encompass marijuana —€“ though this solution assumes that he was actually selling other herbs, and not just marijuana, and that he could produce a specimen that did not ignite the Examiner's suspicions. Indeed, it also raises the intriguing question whether, if Brown had submitted a specimen showing the use of the mark in a more innocuous manner, would the Examining Attorney have simply accepted the application without looking at his website or investigating the meaning of a green cross in the herbal industry. A seemingly obvious takeaway is that one should not submit a specimen that even indirectly links your mark to any illegal activity (even if it may be legal in certain states).

*It is always good to remember that the use of a mark on clothing may encounter a refusal based on ornamental use, which is a blog topic for another day.

Authors: John P. McCormick, Robert M. O’Connell, Jr.