Registration of Marks Used in Conjunction With "Unlawful" Goods/Services

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By Theresa Wang

A state’s decision about what is legal or illegal is not relevant to the Board, as demonstrated in the recent TTAB decision, In re Morgan Brown (Herbal Access), Serial No. 8636298 (July 14, 2016).  Here, the applicant sought a registration for the text mark HERBAL ACCESS for use in conjunction with “retail store services featuring herbs” in International Class 035.  In support of its application for the HERBAL ACCESS mark, applicant had submitted specimens of use featuring photos of its store and screenshots of its website, both of which featured references to marijuana and green crosses, which the Office Action notes, “has become the symbol of the organized medical marijuana industry.”  Because the retail store’s inventory included marijuana, a substance that is illegal to dispense or sell under federal law, the Examining Attorney rejected the registration pursuant to 15 U.S.C. sec. 1051 and 1127.  On appeal, the Board disagreed with the applicant’s argument that the registration should be allowed because its services description said only that it sold “herbs,” not marijuana.  To this, the Board noted that goods and services descriptions could not be intentionally tailored around an actual usage to “sidestep refusals.” Affirming the rejection of the application, the Board specified that marijuana’s legality in Washington state, where the retail stores were located, did not matter -- “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.”

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