TTAB Nixes Trademark for Pot Products
BY JERRY GLOVER
AUGUST 22, 2016
The Trademark Trial and Appeal Board (TTAB), a group within the U.S. Trademark Office, hears cases concerning, among other things, trademarks that have been denied registration by an examining attorney in the Office. One such examiner recently denied registration for the mark HERBAL ACCESS for International Class of Goods 35 (retail store services featuring herbs). In re Morgan Brown, No. 36362968 (TTAB July 14, 2016).
The examiner refused registration arguing that the herbs offered for sale in the applicant’s retail store include marijuana which cannot be distributed or dispensed under federal law (see the federal Controlled Substances Act, 21 U.S.C. Secs, 812, 841(a)(1), 844(a)). The TTAB affirmed the examiner’s decision.
The Board noted that any mark registered in the Trademark Office must be used in lawful commerce so that sale of goods in violation of a federal statute cannot be the basis for establishing trademark rights. The TTAB also noted that it does not matter if a few states have de-criminalized the possession and use of some quantities of marijuana noting that state de-criminalization was irrelevant to the question of lawfulness under federal law.
Applications for trademark registration are presumed lawful under federal law, the Board noted, unless the application and relevant activities of the mark’s owner involves a per se violation of a federal law. That’s what happened here. The mark owner included in its specimen of use two photographs one of which included a green cross prominently displayed on a window with an even large green cross image superimposed over the photograph. The green cross is a symbol adopted by marijuana dispensaries. The owner’s website included a picture of a marijuana plant text that stated, “Call or stop by today and find out why people consider our marijuana to be the best of the best!”. A map was also included in the website showing the location of the retail store that included the working “Marijuana for the Masses.”
Since the applicant’s specimen of use and its website materials proved that the application provided an illegal substance in violation of federal law, a per se violation had occurred. It did not matter that the trademark itself did not include the word “marijuana” or “pot”.