In a precedential opinion, In re Morgan Brown, the Trademark Trial and Appeal Board affirmed an examiner’s refusal to register the trademark HERBAL ACCESS for use in connection with “retail store services featuring herbs,” on the grounds that the applicant was using the HERBAL ACCESS mark for the sale of marijuana, which is illegal under federal law. To qualify for a federal service mark registration (under Lanham Act §§ 1 and 45, 15 U.S.C. §§1051, 1127), use in commerce must be lawful.

Although the application only identified “retail store services featuring herbs,” the refusal was based on the submitted specimen of use (a retail storefront with a green cross symbol, which signifies marijuana) and a web search by the examiner showing that the applicant’s website states that it sells marijuana. The store is in the state of Washington, where marijuana has essentially been legalized, but federal law prohibits the manufacture, importation, possession, use, and distribution of marijuana under theControlled Substances Act. Marijuana is a Schedule I prohibited drug under the CSA with no federally acknowledged medical uses.

The examiner did not request additional information about whether the applicant actually provided retail services featuring lawful herbs, as identified in the HERBAL ACCESS application. It is unclear whether the store actually sold lawful herbs, but the TTAB considered the possibility that the store actually sold lawful herbs to be irrelevant.

Given the evidence showing that the applicant’s mark was being used in connection with sales of marijuana, and because the “herbs” identified in the application could encompass marijuana, the TTAB found that the applicant’s “retail store services include sales of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.”

The problem with this decision is that the TTAB relied on a broad interpretation of the lawful use in commerce requirement, interpreting it to mean that “any goods or services to which the mark is applied must comply with all applicable federal laws,” rather than just the identified goods or services for which federal trademark protection is actually being sought. Despite the lawful use in commerce requirement being a basis or precondition for obtaining a federal registration under the Lanham Act, the TTAB construed the requirement to be applicable to uses of the mark with goods and services that are not even being asserted as bases for establishing federal trademark rights in an application.

This interpretation that “any goods or services to which the mark is applied must comply with all applicable federal laws” has become the standard boilerplate language used by USPTO examiners for Sections 1 and 45 unlawful use refusals in office actions, and, unfortunately, the TTAB has now adopted it (emphasis added). This interpretation is attributed to the following excerpt from In re Midwest Tennis & Track Co., 29 USPQ2d 1386 (TTAB 1993): “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce,’ and [that the sale or] the shipment of goods in violation of [a] federal statute ... may not be recognized as the basis for establishing trademark rights” (emphasis added).

The fact that a lawful use of a mark is required as a basis for establishing federal trademark rights similarly means that the unlawful sale of goods cannot be recognized as the basis for establishing federal trademark rights. However, construing this to mean thatany goods or services that are actually offered under a mark in the real world must comply with all federal laws in order to obtain a federal trademark registration for other goods and services is outside the scope of the lawful use in commerce requirement.

Further, in finding that “herbs” encompasses illegal marijuana, the TTAB is essentially telling examiners that, for purposes of the lawful use in commerce requirement analysis, they can now consider whether any identified good or service in an application can encompass illegal goods and services, even though these goods and services are not contemplated by the application. The TTAB analogized this analysis to how goods and services identified in an application are interpreted broadly in descriptiveness refusals because “if [an] application matures into a registration, it will be presumed to include all types of specific goods and services that fall with[in] the identification in the registration.” While this principle is generally true, it is incompatible with the lawful use in commerce requirement. Once a mark is registered, the identification in the registration cannot, by law, contemplate unlawful goods or services; otherwise, the registration would be void for not having had a valid basis for establishing federal trademark rights becauseunlawful uses in commerce simply cannot be a basis for federal trademark rights under the Lanham Act.

To summarize the impact of this opinion, if an applicant is seeking a federal trademark registration based on lawful use of a mark with goods or services (satisfying the lawful use in commerce requirement), the application can still be refused for not being in lawful use in commerce if any unlawful goods or services are additionally provided under the mark in the real world and if the application could be read to encompass these unlawful goods or services. This is the case even though use of the mark for those unlawful goods or services is not being asserted as the basis of the application, and the applicant is not seeking federal trademark protection for the mark as used in connection with those unlawful goods or services.

In re Morgan Brown is a classic example of a case resulting in an outcome that is likely correct, but the legal analysis relied upon to get that outcome misconstrues the law in a way that has broad implications and sets a poor precedent. Realistically, the refusal was probably the right outcome in this case because the HERBAL ACCESS mark is likely onlyused for the sale of illegal marijuana “herbs,” which cannot be the sole basis of a valid federal trademark application. However, the TTAB’s overreaching interpretation of the lawful use in commerce requirement could have been avoided had the examiner:

  1. issued the refusal due to an insufficient specimen of use, as the specimen showed that use of the mark might only be for unlawful services, and the specimen needed to show the mark as used in the sale or advertising of the retail services for lawful herbs (see C.F.​R. § 2.56(b)(2)); and
  2. requested additional information concerning circumstances surrounding the mark, including its use, to determine if the store actually used the mark for the sale of any lawful herbs (an examiner has authority to request more information under 37 C.F.R. § 2.61(b)​).

The TTAB, similarly, could have affirmed the refusal on the grounds that the specimen of use was insufficient, as it did not show use of the mark for the identified services.

For trademark law practice purposes, In re Morgan Brown is a good reason not to forget the importance of state trademark registrations if marijuana is legalized in the state and the state recognizes it as a basis for establishing state trademark protection. The opinion also suggests that when applying for a federal registration, trademark practitioners with clients whose goods or services are related to marijuana: (1) should not submit specimens that solely highlight use for illegal goods or services; (2) should only be applying for the lawful goods or services that the client provides, such as information services; and (3) should consider expressly excluding marijuana goods and services if any good or service in the application could be viewed by an examiner as encompassing a marijuana-related good or service.

Whether federal trademark protection should be granted for marks used in connection with marijuana goods or services will continue to be a growing issue (one that may implicate constitutional rights). With more states legalizing marijuana, there will surely be more cases (and possibly changes to federal laws) on marijuana that will affect how marijuana is viewed under federal trademark law – and we may see these effects in the not-too-distant future.