In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.” Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of use and web site home page contained enough evidence for the examiner to determine that he was indeed selling the federally banned substance. In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016).
Brown does business in the State of Washington, where state law permits adults to possess one ounce of usable marijuana, 16 ounces of marijuana-infused product in solid form, and 72 ounces of marijuana-infused product in liquid form. However, federal law still bans under the Controlled Substances Act (“CSA”) the sale and use of marijuana and “paraphernalia” primarily intended or designed for use in ingesting or inhaling it.
As long interpreted by the TTAB, the Lanham Act governing trademarks requires “lawful” use of the mark in commerce. A mark therefore cannot be registered for goods or services that are illegal under federal law, even if sale of the product or service is lawful under state law. However, a trademark examiner usually will not refuse registration based on unlawful use in commerce unless (1) a court or federal agency responsible for overseeing the applicant’s activity relevant to the application has found the applicant violated the relevant statute or regulation, or (2) the application-relevant activities involve a per se violation of federal law. For example, a TTAB judge found it “unthinkable” to register a mark for use on heroin.
More: http://www.ilnipinsider.com/2016/09/smoke-signals-from-specimen-of-use-support-registration-refusal-for-herb-sales-described-in-application/
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