USPTO Makes Cannabis Trademark Go Up In Smoke
This past week the Trademark Trial and Appeals Board of the U.S. Patent and Trademark Office issued a blow to cannabis businesses attempting to protect their brands. In a precedential decision, In re Morgan Brown (click here for full decision), the Board affirmed the refusal to register the mark HERBAL ACCESS for “retail store services featuring herbs.” The HERBAL ACCESS trademark application was submitted by a Washington State cannabis dispensary operating a lawful business under Washington State law. Although the application was not for goods or services which explicitly identified “cannabis” or “marijuana,” the Trademark Office examining attorney determined that the “herbs” being offered for sale by the applicant were in fact marijuana. Thus, the examining attorney rejected the HERBAL ACCESS application on the basis that the use of the mark in commerce was not “lawful,” due to the fact that the retail sale of marijuana remains illegal under federal law, regardless of Washington State law which permits it. The Board affirmed this analysis, stating that the lawfulness of certain services or goods identified in a federal trademark application is determined under federal law.
The Board made two important points in its decision which potential applicants for cannabis-related brands should note. First, the Board made clear that while an application may broadly describe goods or services in a way which does not explicitly identify “marijuana” or “cannabis” the Trademark Office is not precluded from using external evidence (in this case the applicant’s website) from concluding that the identified goods or services encompass cannabis. Second, the fact that an applicant’s goods or services are lawful pursuant to a particular state’s law is irrelevant to the Trademark Office’s determination of whether those goods are lawfully being used in commerce. Unfortunately for cannabis businesses, that determination is to be made under Federal law, and nearly all state law compliant cannabis businesses remain illegal under the federal Controlled Substance Act.
While it appears that cannabis businesses remain precluded from obtaining an above-board federal trademark registration for cannabis goods and services, some of the states in which cannabis is legal do allow a state trademark registration for cannabis and a federal trademark registration will issue for goods and services under a cannabis brand which are not directly illegal (e.g. clothing). But for now, cannabis businesses clearly have an uphill battle in protecting their brand at the federal level.