Marijuana LitigationThis week’s Cannabis Case Summary comes to us from the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board. The case reviewed a USPTO Examining Attorney’s decision to deny a cannabis business’s application to register the name “HERBAL ACCESS” as a federal trademark. As we have written before, the difficulty of protecting cannabis-related intellectual property under federal law is a serious challenge for cannabis businesses that invest in building a recognizable brand.

The applicant, Morgan Brown, sought to register the mark “HERBAL ACCESS” in connection with its “retail store services featuring herbs.” The Trademark Examining Attorney who reviewed Brown’s application denied it on the basis that the herbs Brown was selling included cannabis, which is outlawed by federal law.

In doing so, the Examining Attorney cited two rules that bar registration of certain marks. Generally, trademark registrations will not be granted when a violation of federal law is indicated by the application record or by other evidence, or when the application-relevant activities involve a per se federal law violation. The Examining Attorney did not exclude Brown’s registration under the first rule, but concluded it violated the latter.

To draw this conclusion, the Examining Attorney identified several aspects of Brown’s application that indicated a per se violation of federal law. As explained in the Administrative Trademark Judge’s decision, the materials included the following:

  • A picture of a green cross that, per a review of multiple online retailers such as Amazon, constitutes “the symbol of the organized medical marijuana industry.”
  • An image of a cannabis plant inviting customers to “stop by” to “find exactly what [they] are looking for.”
  • A map showing the establishment’s location with the wording “Marijuana For The Masses.”

Brown stated that the establishment “may also sell marijuana,” which, as Brown acknowledged, is “admittedly illegal under the CSA [Controlled Substances Act].”

In light of the foregoing, the Examining Attorney denied Brown’s application, and the Administrative Trademark Judge affirmed its denial.

The takeaway: USPTO Examining Attorneys have been around the block and euphemisms like “herbal retail” will not trick them nor prevent them from denying your application. In many instances, the cost of prosecuting, defending, and appealing a denial of a federal trademark registration is probably not worth the unlikely benefit that trademark registration would afford cannabis businesses. Our advice is that you explore protecting your marks under state law as an alternative.

In re Morgan Brown, U.S.P.T.O. Trademark Trial and Appeal Board, Serial No. 86362968 (July 14, 2016).

NOTE: The above is part of our plan to summarize all cannabis civil cases with a published court decision. By civil case, we mean any case that involves cannabis or the cannabis industry that is not a strictly criminal law matter. These cannabis case summaries are intended both to keep you up to date on cannabis laws as interpreted by the courts and also to serve as a resource for anyone conducting cannabis law research. We also will seek to provide key unpublished cannabis law decisions as well, when available.