USA – Washington: Cannabis Trademark Strategy in Jeopardy

Gregory F Wesner of Lane Powell writes……

The Trademark Trial and Appeal Board of the U.S. Trademark Office (TTAB) just rejected a popular strategy for protecting cannabis-related marks at the federal level. Many forward-thinking cannabis businesses have applied to register marks for non-cannabis articles that they offer for sale alongside cannabis-containing products: they seek registration for non-cannabis products, and rely on a halo effect to provide protection for the mark when used on cannabis.

That’s out the window now. On July 14, the TTAB ruled in In re Morgan Brown1 that if a mark is used in association with cannabis products, the fact that it is also used in association with non-cannabis products will not protect the mark from refusal. The TTAB’s ruling summary states as follows:

Because the evidence that Applicant’s mark is being used in connection with sales of a specific substance (marijuana) that falls within both the services identification and the prohibitions of the CSA is unrebutted, we find that 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 facts of the case were egregious. The applicant, Morgan Brown, sought to register the mark HERBAL ACCESS for “retail store services featuring herbs,” in International Class 35. The specimen of use of the mark (i.e., how it is presented to customers), which was submitted with the application, did Mr. Brown no favors. He submitted photos of the mark as displayed on what was clearly a pot shop, with a big green cross on the door and a website specimen displaying the following text:

Your Access Is Granted!

Call or stop by today and find out why people consider our marijuana to be the best of the best!

Now Come Check Us Out!

If the TTAB needed an excuse to reject the mark, Mr. Brown gave them one. And, unfortunately, the wording of the decision clearly goes beyond the extreme situation Mr. Brown presented.

Lane Powell is analyzing this case for possible alternative registration strategies, but the options seem pretty narrow on our reading of the decision. It may still make sense to apply to register for non-cannabis products until cannabis becomes federally legal. In light of this case, we strongly recommend that cannabis businesses register their marks in every state where they do business and cannabis use is allowed.

The industry is pushing into new territory. We will continue to update you as these cases come in and our thinking evolves.

Authored By:
Gregory F. Wesner
Lane Powell
Mr Wesner  focuses his practice on patent, trademark, and other intellectual property litigation and related counseling. He can be reached at wesnerg@lanepowell.com or 206.223.7272.

Top 200 Cannabis Lawyers

Cannabis Law Journal – Editorial Board Members

Editor – Sean Hocking

Author Bios

Canada
Matt Maurer – Minden Gross
Jeff Hergot – Wildboer Dellelce LLP

Costa Rica
Tim Morales – The Cannabis Industry Association Costa Rica

Nicaragua
Elvin Rodríguez Fabilena

USA

General
Julie Godard
Carl L Rowley -Thompson Coburn LLP

Arizona
Jerry Chesler – Chesler Consulting

California
Ian Stewart – Wilson Elser Moskowitz Edelman & Dicker LLP
Otis Felder – Wilson Elser Moskowitz Edelman & Dicker LLP
Lance Rogers – Greenspoon Marder – San Diego
Jessica McElfresh -McElfresh Law – San Diego
Tracy Gallegos – Partner – Fox Rothschild

Colorado
Adam Detsky – Knight Nicastro
Dave Rodman – Dave Rodman Law Group
Peter Fendel – CMR Real Estate Network
Nate Reed – CMR Real Estate Network

Florida
Matthew Ginder – Greenspoon Marder
David C. Kotler – Cohen Kotler

Illinois
William Bogot – Fox Rothschild

Massachusetts
Valerio Romano, Attorney – VGR Law Firm, PC

Nevada
Neal Gidvani – Snr Assoc: Greenspoon Marder
Phillip Silvestri – Snr Assoc: Greenspoon Marder

Tracy Gallegos – Associate Fox Rothschild

New Jersey

Matthew G. Miller – MG Miller Intellectual Property Law LLC
Daniel T. McKillop – Scarinci Hollenbeck, LLC

New York
Gregory J. Ryan, Esq. Tesser, Ryan & Rochman, LLP
Tim Nolen Tesser, Ryan & Rochman, LLP
Cadwalader, Wickersham & Taft LLP

Oregon
Paul Loney & Kristie Cromwell – Loney Law Group
William Stewart – Half Baked Labs

Pennsylvania
Andrew B. Sacks – Managing Partner Sacks Weston Diamond
William Roark – Principal Hamburg, Rubin, Mullin, Maxwell & Lupin
Joshua Horn – Partner Fox Rothschild

Washington DC
Teddy Eynon – Partner Fox Rothschild