A major shift is happening in this country regarding the legalization of marijuana. At least four states have legalized marijuana and more than twenty states have passed laws permitting the use of marijuana for medical issues. As entrepreneurs open up their new businesses selling marijuana and accessories they want to brand their businesses and products. These entrepreneurs are encountering obstacles under federal law when they file trademark applications with the United States Patent and Trademark Office (USPTO).
In July 2014, a retail store in the state of Washington opened for business selling herbs under the name HERBAL ACCESS. The owner of the store filed a trademark application with the USPTO in August 2014. The trademark application included two specimens showing the mark, HERBAL ACCESS, in use on a Facebook page which shows the front of the building in which the store is housed along with a close-up photograph of the front door that has the words HERBAL ACCESS on the glass door and another photo of a lighted green cross in the window. The applicant filed in International Class 35 for “retail store services featuring herbs.”
The Trademark Examining Attorney and ultimately the Trademark Trial and Appeal Board refused to register the mark HERBAL ACCESS in Class 35 for retail store services featuring herbs. The reason, “the herbs offered for sale in applicant’s retail store included marijuana, a substance which cannot be lawfully distributed or dispensed under federal law.” See In re Morgan Brown, Serial No. 86362968 (TTAB 2016)
A trademark cannot be registered with the USPTO if the mark is used to sell a product or service that violates federal law. In this case, the applicant’s services violated the federal Controlled Substances Act (CSA), 21 USC §§812, 841(a)(1), 844(a). The CSA prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a).
The Trademark Examining Attorney did not just accept the screen shot of the Facebook page that was attached to the trademark application. He viewed the entire Facebook page and the website for www.herbalaccess.com. According to the TTAB opinion, the applicant’s website included the following language:
“Call or stop by today and find out why people consider our marijuana to be the best of the best!”
The website also included a map showing the location of the store that included the words “Marijuana for the Masses.”
In addition, the green cross that was on the original specimen is a symbol of the organized marijuana industry according to the research conducted and listed by the trademark examining attorney.
Three lessons can be learned from this case:
1) If you are selling products and services that are legal in the state where you conduct business but not legal under Federal law you cannot obtain a federal registration for your trademark through the USPTO.
2) If you file a trademark application with the USPTO and attach a screen shot of your Facebook page or website as a specimen, you can expect the trademark examining attorney to go to the Facebook page and website and thoroughly examine the entire page and website. It is entirely proper for the trademark examining attorney to look at evidence beyond what is attached to the application such as the entire website and Facebook page.
3) Make sure you hire a lawyer who will properly advise you on the status of the law regarding trademark applications.
Crystal Broughan is an intellectual property law attorney with Marks Gray, P.A. If you would like to learn more about Marks Gray’s intellectual property law services please contact Ms. Broughan at [email protected] or 904-807-2180.