## Facts

- Morgan Brown (d/b/a “Herbal Access”) applied to register the standard-character mark **HERBAL ACCESS** for “retail store services featuring herbs” in International Class 35, disclaiming “herbal.”
- The application was based on use in commerce, with claimed use beginning in July 2014.
- The examining attorney refused registration under Lanham Act §§ 1 and 45 on the ground that the identified services, as actually rendered, included the sale of marijuana.
- The record included a storefront specimen displaying the mark and a green cross symbol associated with medical marijuana, plus Internet evidence indicating the store advertised and sold marijuana.
- Washington state law permitted certain marijuana-related activity, but marijuana remained a Schedule I controlled substance prohibited under the federal Controlled Substances Act (CSA).
- Brown argued the identification “retail store services featuring herbs” was facially lawful and did not necessarily refer to marijuana.

## Issues

1. Whether the Lanham Act’s “use in commerce” requirement for service mark registration includes a requirement that the use be lawful under federal law.
2. Whether an applicant can obtain federal registration where the identification is facially lawful but the evidence shows actual use of the mark in connection with marijuana sales prohibited by the CSA.
3. Whether state-law authorization (and related federal enforcement posture) can satisfy the “use in commerce” requirement when the conduct remains unlawful under federal law.

## Decision

- The Trademark Trial and Appeal Board affirmed the refusal to register **HERBAL ACCESS**.
- The Board held that “use in commerce” under Lanham Act §§ 1 and 45 requires lawful use, meaning the goods or services must not be illegal under federal law.
- Because the evidence showed the retail services included marijuana sales, the applicant’s use was not lawful under the CSA and could not support federal registration.
- The Board treated state-law legality as irrelevant to federal registrability where federal law prohibits the underlying conduct.

## Legal Principles

- “Use in commerce” for federal trademark registration requires **lawful** use in commerce.
- Use is not lawful if the identified goods or services, as actually offered, involve conduct prohibited by **federal** law, including the Controlled Substances Act.
- A facially lawful identification does not cure unlawful use when the record shows the mark is used for services that include federally illegal goods.
- State-law authorization does not establish lawful use for federal registration when the activity is unlawful under federal statute.

## Conclusion

The TTAB denied registration because the applicant’s mark was used in retail services that included marijuana sales, which are unlawful under the CSA; without lawful use in commerce under federal law, the Lanham Act’s registration requirements were not met.


In re Morgan Brown, 119 U.S.P.Q.2d 1350 (T.T.A.B. 2016)