Earlier this year, the company GG Strains gained national media attention when it was issued a trademark registration for the strain Gorilla Glue #4. (Not as much attention as GG Strains received a couple months later when it was sued by the actual glue company, but that’s a subject for another blog post.) A trademark registration, you ask? For a strain name? Not so fast—it was a Colorado state registration for GORILLA GLUE #4, and the Colorado Secretary of State also issued a registration for an accompanying design mark, both in Class 031, covering “medical cannabis, the specific Gorilla Glue #4 hybrid cannabis plant strain.” These registrations are surprising, given that as a matter of law, a cannabis strain name cannot function as a trademark.
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.
Avoiding Copyright and Trademark Infringement on the Internet
There are over a billion websites on the web. Although about 75% are inactive, a Google search suggests several hundred thousand are dedicated to cat videos. If you’re not in the cat entertainment industry, that still leaves tens of millions of websites containing words, logos, images, audio, or video that might seem perfect for your website or social media.
It’s tempting to repurpose content as your own. But beware—the internet is rife with infringement possibilities. Here are some common issues we’ve flagged to steer you clear of infringement. Keep in mind, the best course of action is to confer with counsel before you “borrow” content.
Enter In re PharmaCann LLC, in which the TTAB again confirmed that to qualify for a federal registration, the use of a mark in commerce must be lawful and any goods or services the mark covers must not be illegal under federal law.
PharmaCann submitted federal trademark applications for PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana,” and “dispensing of pharmaceuticals featuring medical marijuana,” both of which the Examining Attorney categorically refused as not in lawful use in commerce. The Examining Attorney also included in the record two articles discussing PharmaCann’s intention to operate a medical marijuana dispensary in Illinois, where PharmaCann is located and where dispensing medical marijuana is lawful.
After California voters approved Proposition 64 in November of 2016, several laws relating to cannabis changed immediately, many laws will remain unchanged until 2018, and still other laws remain in a “grey area.” One of the those “grey areas” is how exactly California will handle the laws surrounding labeling of edible cannabis products.
In January 2017, Assemblymember Ed Chau of California’s 49th District introduced AB 175, a bill that, if passed, would require a manufacturer to submit all packaging and labeling to the Bureau of Marijuana Control for approval prior to introducing any edible marijuana product into commerce in California. Additionally, any time a manufacturer proposes to make a material change to the packaging or labeling of an edible marijuana product, that packaging and labeling must be submitted to the Bureau for another review.
By: Nicole A. Syzdek
In an utterly unsurprising opinion issued on October 27, 2016, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office, once again affirmed that marijuana paraphernalia is illegal under the Controlled Substances Act (CSA), and trademark registration will be refused if there is evidence showing the applicant did not possess a bona fide intent to lawfully use the mark in commerce.
In the present case, Applicant, JJ206, LLC d/b/a JuJu Joints, filed federal applications to register the marks POWERED BY JUJU and JUJU JOINTS for use in connection with “smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes” in International Class 34.
Applicant explicitly identified the goods in its application as vaporizing devices for cannabis or marijuana, which makes it crystal clear that Applicant’s devices are designed and intended for use with federal illegal substances. Because the identified goods are illegal under the CSA, the Board determined that it was “a legal impossibility” for Applicant to possess the required bona fide intent to lawfully use the mark in commerce in connection with the applied for goods.
By: Nicole A. Syzdek, Associate, Brand & Branch LLP
On October 20, 2016, RX Green Solutions, LLC (“RX”)—a manufacturer and distributor of natural-based products used for the cultivation of plants—filed suit in the U.S. District Court for the District of Colorado seeking a declaratory judgment against The Green Solution, LLC, a company operating a chain of Denver-based cannabis dispensaries.
This is one of only a handful of federal trademark lawsuits we've seen between cannabis businesses. Assuming the case does not settle too quickly, its outcome will be instructive for cannabis companies seeking to enforce their trademark rights. It may also serve as a good reminder to think carefully about potential risks before firing off a round of cease and desist letters.
Earlier this year, sociologist James I. Bowie published an article for Slate Magazine arguing that the marijuana leaf has become so ubiquitous in cannabis branding as to be visually indistinct. "Marijuana Branding Needs a Makeover," the headline declared. Bowie's position understandably created some controversy among cannabis activists, but it came as no surprise to trademark attorneys who have long been helping our clients balance a desire to honor marijuana's heritage with the need to create a distinct -- and therefore protectable -- cannabis brand.
According to Bowie,
The problem with the leaf in a marijuana business logo is that it is so commonly used that it acts as a symbol of merely the general category, rather than of the specific brand. Such visual clichés can be found in many fields, stemming from tradition (such as the use of striped poles as symbols for barbers) or obviousness (like dentists employing tooth logos). . . . This is fine when the category is more important than the brand. If you need a quick haircut or your molar is killing you, you’ll look for the first striped pole or tooth logo you can find. Because legal pot is still a novelty, the leaf itself is enough to attract business. But as marijuana becomes legally available on a more widespread basis, its branding is going to have to move beyond the generic leaf to incorporate more distinctive visual elements.
As trademark lawyers we can certainly understand Bowie's perspective. The marijuana leaf tells patients and customers that you sell cannabis. A distinctive brand communicates much more.
But it's complicated. Many cannabis businesses incorporate marijuana imagery into their branding to honor those who fought to bring about what today we call the "cannabis industry," and to root themselves in a long tradition of cannabis cultivators and activists. The iconic value of the marijuana leaf and the history it represents should not be understated.
If your company is considering adopting a trademark that incorporates traditional marijuana imagery, it's critical to understand what makes a trademark distinctive, and why adopting a commonly-used word or image may make protecting and enforcing your brand both difficult and costly.