In late August, Buds R Us, a small medical marijuana dispensary in Detroit, Michigan, received a cease and desist letter from counsel for Toys R Us, Inc., the international toy company, alleging trademark infringement. At issue are two marks—the word mark BUDS R US, and a design mark featuring a giraffe with bloodshot eyes smoking a cone joint. The marks are used in connection with cannabis and related goods. The letter claimed that use of these marks by Buds R Us creates a likelihood of consumer confusion with the TOYS R US word mark and the design mark depicting Geoffrey the Giraffe, the Toys R Us mascot, both of which are used to sell toys. In response, Buds R Us decided to change its name and branding.
There are a few key lessons here for cannabis companies.
Before investing time, money, and energy in building your brand, carefully consider whether your mark could be associated with a larger, more powerful brand. If that possibility exists, ask yourself whether it’s worth expending resources for and whether your company could defend itself in a conflict with the bigger brand.
Trademark infringement can include mimicry. If you’re considering a trademark, color scheme, or design that even slightly resembles another brand’s, think twice and call us first.
Be aware that big brands take enforcement very seriously. Many companies have entire departments dedicated to searching the globe for infringements—they scour the internet and hire on-the-ground investigators throughout the world. No company or infringement is too small to find.
If you intend to use a trademark parody, at minimum be prepared for harassment from well-known companies. Additionally—and specific to the cannabis industry—if a parody consists of a scandalous or offensive alteration to the mark being parodied, a court will very likely order you to stop using your mark. Examples of scandalous parodies enjoined by courts include the sale of posters stating ENJOY COCAINE similar to the ENJOY COCA-COLA mark owned by the Coca-Cola Co. and the sale of underwear using the mark GENITAL ELECTRIC along with a logo similar to the GENERAL ELECTRIC mark owned by General Electric Company. Given that cannabis is still a controlled substance under federal law and in many states, a trademark parody involving anything marijuana-related will likely be considered scandalous or offensive and therefore not allowed.
The takeaway? Consult us before launching your brand. We can conduct clearance searches for your proposed mark and advise you of infringement risks, saving you time and money in the long run.