The U.S. Trademark Trial and Appeal Board (the Board) affirmed the refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs" in the matter of In re Morgan Brown, Serial No. 86362968 (T.T.A.B. July 14, 2016) [precedential]. The Board based the refusal to register on its finding that the services at issue were illegal under federal law, so it was not being used in lawful commerce.

The applicant's own specimen of use demonstrated that the applicant's retail store was engaged in the business of selling marijuana in Washington State. While the Board noted that marijuana has been legalized for adults in the state, it found this state legalization immaterial in light of the continued federal prohibition on possession of marijuana under the Controlled Substances Act, 21 U.S.C. §§ 801, et seq. It held that federal registration requires the mark to be used in commerce lawful under federal law.

The Board also rejected the applicant's argument that the services which were listed on the application, "retail store services featuring herbs," were themselves legal under federal law. The Board found that there was objective evidence that marijuana is considered a "herb" and, accordingly, its sale would be covered by the registration of the mark if it were allowed. As it found this to be impermissible under federal law, it denied registration.

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Originally published by International Trademark Association Bulletin.

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