The Board affirmed a refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs," on the ground that the mark is being used in connection with the sale of a substance (marijuana) that is illegal under federal law. The fact that the provision of a product within a given state may be lawful is irrelevant in connection with federal registration of a trademark or service mark. In re Morgan Brown, Serial No. 86362968 (July 14, 2016) [precedential].

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To qualify for federal registration, a mark must be in "lawful" use, and so any goods or services for which the mark is used must not be illegal under federal law. If provision of the product or service is unlawful under federal law, it is irrelevant that use under state law may be lawful.

The USPTO generally presumes that use of an applicant's mark is lawful under federal law. Registration will not be refused unless either:

(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation; or

(2) when the applicant’s application-relevant activities involve a per se violation of a federal law.

Examining Attorney Jeffrey J. Look relied on an asserted per se violation of federal law, namely, the provision of marijuana.

Applicant's specimen of use featured two photographs of his retail store, depicting a green cross [a symbol of the organized medical marijuana industry] on the door and on the window. His website displayed a map with the wording "Marijuana for the Masses," and depicted a marijuana plant with the text: "Call or stop by today and find out why people consider our marijuana to be the best of the best!" This evidence supported the conclusion that applicant "is engaged in the provision of marijuana via the retail services provided at the facility shown in the specimen and advertised on the website." [Doh! - ed.].

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Thus applicant's services include the provision of an illegal substance in violation of the federal Controlled Substances Act (CSA), 21 USC Sections 812, 841(a)(1), and 844(a), and constitute a per se violation of federal law. Use of applicant's mark therefore includes unlawful activity under the CSA.

Applicant Brown argued that he is seeking to register his mark for the sale of herbs, not for marijuana, and that the sale of herbs is not illegal. The Board, however, observed that "[t]he mere fact that lawful use is also contemplated by the identification does not aid Applicant's cause." According to the Board, "it was entirely proper for the Trademark Examining Attorney to look to evidence such as the Applicant's specimen of use and website to ascertain that the word 'herbs' in the description of services encompasses marijuana."

Applicant Brown did not address or directly rebut the evidence that marijuana is an herb or that he sells marijuana, but he instead feebly argued that the evidence did not show the use of the mark specifically in connection with one particular herb: marijuana. However, the CAFC has rejected attempts to avoid a refusal "where a particular good or service falls within the generalized identification and the evidence shows that applicant's actual usage involves the specific good or service that is the subject of the refusal."

The Board concluded that, because the subject mark is being used in connection with the sale of a specific substance that falls within both the recitation of services and the prohibitions of the CSA, Applicant Brown's services include the sale of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.

And so the Board affirmed the refusal.