The USPTO won’t register a trademark for the sale of marijuana. Morgan Brown tried to register the name of his Washington State store, Herbal Access, as a trademark for the sale of “herbs”. Morgan’s specimen of use was a picture of the store with a neon green cross on it. For those not in the know, the green cross signals the location of a medical marijuana dispensary. Seeing that, the intrepid examining attorney visited Morgan’s website and, sure enough, Morgan sold marijuana. The examining attorney refused registration based upon an unlawful use of the trademark in commerce. While the State of Washington allows the sale of medical marijuana, federal law does not. Registration would be barred as long as it’s a federal offense to sell marijuana. The refusal was confirmed on appeal to the TTAB.

WHY YOU SHOULD KNOW THIS. Morgan’s experience points to the little known list of matters that can’t be trademarked. In addition to illegal matters, they include: (1) immoral, deceptive or scandalous matter; (2) the flag of any nation and any US state or municipality; (3) the name, likeness etc. of a living individual without their consent and of a deceased president during the lifetime of their surviving spouse; and (4) a geographically misdescriptive name in connection with wine and spirits. Getting back to Morgan, there are a few unanswered questions. Could Morgan have done anything different to at least get registration for the other "herbs" he sells? Maybe. Could he have submitted a specimen that was related to legal herbs only? It would have been worth the try. At least he might have gotten a registration for the legal parts of his business. Could Morgan have tried to register the trademark with the Washington State Trademark Office? Probably. It could have given him protection for use of the name in connection with marijuana within the State of Washington.

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