A company legally selling marijuana has had its application for a trademark rejected because of the nature of its business. Setting a precedent, the Trademark Trial and Appeal Board (TTAB) confirmed an earlier decision to refuse the request by company owner Morgan Brown to register the "Herbal Access" mark for "retail store services featuring herbs". Brown had disclaimed the exclusive right to use the term "herbal," but the Examining Attorney rejected his claim after discovering the true nature of Herbal Access’ services.

At face value, "herbal" suggests nothing illicit. However, the submission was accompanied by a specimen of a Facebook page, which prompted the Examining Attorney to dig further into the activities of Herbal Access. The page depicted Brown’s mark, retail location, and a profile picture of a green cross. This cross is popular with the medical marijuana industry, and prompted the attorney to examine the website of Herbal Access in more detail. The attorney concluded that Herbal Access was per se in violation of the law, as its homepage claimed that it was selling the "best of the best" of marijuana, over a background image of marijuana plants.

The United States Patent and Trademark Office will generally assume that a mark in commerce is lawful. The registration of a mark is refused, based on a lawful use in commerce, only if the applicant’s actions involve a per se violation of federal law or the applicant’s record indicates prior violations.

Since federal law prohibits the distribution or dispensation of "herbs" of this nature, the Executive Attorney refused the application. Brown appealed, and the TTAB upheld the decision. To qualify for such a mark, the TTAB noted, the "use of a mark in commerce must be ‘lawful.’" Marijuana’s legality in some states is irrelevant in this case, for the application concerned federal registration, which concerns legality under federal law. Brown’s use of the Herbal Access mark falls within the prohibitions of the Controlled Substances Act.

The decision is pretty straightforward. The TTAB has often refused applications on for marijuana-related marks. It’s importance rests in the precedent this case sets. It suggests that the TTAB hopes to dissuade marijuana suppliers from creatively skirting the nature of their product by using generic descriptors like "herbs."

The refusal also raises an interesting question. Had Brown’s specimen involved the Herbal Access mark in a milder context, might the Executive Attorney have granted the application without further study of the company’s activities? One simple takeaway from the TTAB’s rejection is that applicants should not offer specimens that imply their mark concerns any sort of illegality. For now, Herbal Access means no legal access for Mr. Brown.