On July 14, 2016, the Trademark Trial and Appeal Board (“TTAB”) decided the matter of In Re Morgan Brown, Serial No. 86362968, affirming the USPTO’s refusal to register the mark “HERBAL ACCESS” on the grounds that the applicant’s use of the mark constituted unlawful use in commerce. In support of their precedential decision, the three-judge panel relied on the holding of Kellogg Co. v. New Generation Foods, Inc., 6USPQ2d 2045, 2047 (TTAB 1988), in ruling that the applicant’s “application-relevant activities” involved a per se violation of federal law (in this instance the Controlled Substance Act (CSA)) and therefore, federal registration would be denied.
The applicant, Morgan Brown, had filed his application with the USPTO seeking registration of the mark HERBAL ACCESS in connection with retail services provided at his Washington State medical marijuana dispensary. The Examining Attorney refused registration, explaining that the specimen of use submitted with the application and the applicant’s website evidenced that the applicant’s services included the provision of an illegal substance – marijuana.
While this recent ruling presents a significant challenge for marijuana retailors seeking federal protection of marks for retail services, it is not without a potential loophole. In a footnote, the TTAB left room for future argument, refusing to rule on “whether use not lawful under federal law, but not prosecuted by federal authorities, is thereby rendered sufficiently lawful to avoid the unlawful use refusal.” This language is in reference to the August 29, 2013 Memo by Deputy Attorney General James M. Cole, outlining the federal government’s policy regarding enforcement under the CSA and reluctance to prosecute marijuana-related activities in states that have legalized and effectively regulate marijuana.