Those involved in the cannabis industry — where certain activities are legal in some States, but unlawful under federal law — continue to search for creative strategies and solutions in protecting their trademarks and service marks.

Picking up where Tim left off last Friday, I’ve been giving some thought as to how the Herbal Access business in Washington State might have been able to overcome the “unlawful use” registration refusal recently affirmed by the TTAB.

As you will recall, the mark HERBAL ACCESS was refused registration in connection with “retail store services featuring herbs” because the evidence of record tended to show some of the “herbs” sold included “marijuana”:

“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 [Federal Controlled Substances Act] 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.”

To the extent the In re Morgan Brown decision is appealed, and assuming the TTAB’s ruling withstands scrutiny, what if the Applicant had specifically excluded from the identification of services, the “unlawful” portion of the services being offered, i.e., the sale of marijuana?

In particular, what if the description of services was amended, limited and narrowed to the following with an express exclusion built into the ID: “Retail store services featuring herbs, excluding marijuana”?

It’s hard to argue that the retail store services featuring non-marijuana herbs — provided lawfully under the HERBAL ACCESS mark — could fairly be denied registration, as the applied-for mark and description of services no longer encompass or include unlawful activities.

Obtaining this narrower registration would be better than none, and it might provide some halo effect over activities that might not always be unlawful under federal law.

Better yet, what about these possible descriptions?: “Retail store services featuring herbs, excluding any in violation of federal law” or “Retail store services featuring herbs, excluding any unlawful herbs.”

What I like about these options over specifically excluding “marijuana” from the description is allowing the scope of the ID to flex if federal law changes in the future.

What do you think, how would you attempt to overcome and/or moot the “unlawful use” refusal for cannabis related activities?