In its 22nd precedential decision of 2016, the Trademark Trial and Appeal Board (TTAB) affirmed the refusal to register HEMP HOME HEALTH. In re Heather Harley and Carolyn Jones, Serial No. 86409857 (TTAB Aug. 24, 2016) (precedential).

Heather Harley and Carolyn Jones applied to register the mark HEMP HOME HEALTH (HOME HEALTH disclaimed) for “Home health care services” in Class 44. During the course of prosecution, the application was refused on the grounds of deceptiveness under Section 2(a) of the Trademark Act and mere descriptiveness, or, alternatively, deceptive misdescriptiveness under Section 2(e)(1). The Examiner also requested information on the significance of “hemp” in connection with the claimed services, and whether the services complied with the Controlled Substances Act (CSA), 21 U.S.C. §§ 801-971 (the 1970 statute that established federal U.S. drug policy). The Examiner also twice issued advisory actions on a potential refusal under §§ 1 and 45 of the Trademark Act for unlawful use of the mark in violation of the CSA.  Eventually, the Examiner issued a final office action based on Section 2(e)(1) mere descriptiveness and deceptive misdescriptiveness, and on the request for information.

Rather than address the merits of the refusals, the Applicants addressed on appeal the Examiner’s advisory action (which were not a basis for refusal), arguing that the Trademark Office is not authorized to ban “terms associated with hemp,” that use of the term “hemp,” in and of itself, does not indicate a violation of the CSA, and that there was no evidence that Applicants’ services were “related to hemp.”  The Applicants also argued that refusal under Section 2(a) was unconstitutional under In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2015) (holding unconstitutional the disparagement provision of Section 2(a)).

The TTAB affirmed the refusal to register, holding that the Applicants did not address on appeal the bases for the final refusal, which were the only grounds for appeal – i. e. mere descriptiveness, deceptive misdescriptiveness and failure to comply with the Examiner’s information requirement.    (In a footnote, the TTAB clarified that In re Tam was limited to disparagement under Section 2(a) and that deceptiveness under the section was acknowledged by the majority to be constitutional. “The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. …Applicants’ failure to address these refusals is a basis for affirming the Examining Attorney’s refusal of registration on all grounds.”

“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”