November 28 2016
The Trademark Trial and Appeal Board (TTAB) recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling is especially relevant in view of the growing number of states legalising marijuana. As with any other retail establishment, the owners of shops specialising in the legal (at state level) distribution and sale of marijuana are looking to brand their services. The recent decision in In re Morgan Brown(1) continues the US Patent and Trademark Office's (USPTO) prohibition on such registrations.
Morgan Brown filed for registration of the mark HERBAL ACCESS in standard characters for "retail store services featuring herbs", with a disclaimer of the term 'herbal'. The examiner refused registration, concluding that – based on Brown's specimens and website – the applied-for mark would be used in connection with the sale of, among other things, marijuana-related products which are illegal under the federal Controlled Substances Act.
The TTAB agreed with the examiner's finding and affirmed the refusal to register. Under consistent TTAB precedent, use of a mark in commerce must be lawful to qualify the mark for federal service mark protection. 'Lawful' means that the applied-for goods or services cannot be illegal under federal law, and lawfulness under state statute is irrelevant to the discussion of legality under federal law. The USPTO does presume lawful use of a mark in commerce under federal law; however, refusal can be warranted where:
In Brown's case, the examiner found a per se violation of law and used Brown's submitted evidence to bolster the refusal. Brown's specimen of use showed various ways in which marijuana was marketed for sale in his facilities, including several green crosses, pictures of marijuana plants and the wording "Marijuana for the Masses". The specimen also showed Brown's encouragement of potential consumers, via his website, to contact his dispensary and inquire about purchasing marijuana. The entirety of the evidence thus demonstrated that the services Brown intended to offer under the applied-for mark encompassed providing a drug whose active component (Tetrahydrocannabinol) was still a Schedule 1 controlled substance under the Controlled Substances Act.
While Brown admitted the illegality of the sale of marijuana under the act, he argued that his specified services were "retail store services featuring herbs" and that herbs per se were not illegal substances. However, the fact that the mark could be used in conjunction with the sale of some legal products (eg, herbs other than marijuana) did not sway the TTAB. Further, Brown's argument that the examiner recorded no evidence showing use of the mark "specifically in connection with one particular herb: marijuana" was unpersuasive in light of his admission that he "may sell marijuana" and the well-known colloquial use of the term 'herb' to reference marijuana.
While the illegal nature of marijuana is not news, In re Morgan Brown is interesting because it demonstrates the growing practice of the USPTO to look beyond the language used by applicants, in an effort to determine any sort of hidden agenda in the manner in which the goods or services are described in a trademark application. Trademark applicants seem increasingly savvy to the prohibitions on registering marks for products and services that are illegal at the federal level. However, the fact that some things such as marijuana are legal in some states incentivises applicants to build brand awareness and to take steps to protect that brand. The growing practice of examiners to look not only at the evidence submitted by the applicant but also at the applicant's website (and other online references) will make it all the more difficult for applicants to craft a recitation in a way that successfully hides the intention to use a mark in connection with federally prohibited goods or services.
For further information on this topic please contact Timothy J Kelly or Kathryn E Easterling by telephone (+1 212 218 2100) or email (firstname.lastname@example.org or email@example.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
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Timothy J Kelly