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.
A trademark assignment is a great option for a complete transfer of ownership rights in a trademark or service mark. An assignment can be useful when reorganizing an entity, acquiring someone’s else’s intellectual property, contributing your assets to a newly formed entity, or bringing all your intellectual property assets under one roof. However, trademark assignments must be valid to be effective. To ensure their validity, certain laws and steps must be followed, or serious consequences could occur.
Recently, an invalid trademark assignment resulted in the cancellation of a trademark registration. In Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, the United States Court of Appeals for the Federal Circuit resolved a dispute hinging on whether Emerald Cities Collaborative, Inc. had a valid assignment from the prior owner for the mark THE EMERALD CITY. The previous owner was an individual unconnected to the company. Even though the assignment agreement indicated plainly that the assignment would become valid only after the mark registered, the Court affirmed the Trademark Trial and Appeal Board’s ruling that the assignment was improper and the mark should be canceled.
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.
The "Spectrum of Distinctiveness"
By: Nicole A. Syzdek, Associate, Brand & Branch LLP
Your brand is everything. A strong brand firmly establishes your presence in the marketplace, increases the value of your company, and makes acquiring (and keeping) customers easier. Creating a strong brand begins with selecting a memorable trademark that keeps your company in the forefront of consumers' minds, ensuring that when they're ready to buy, they'll think of you first.
Selecting a Strong Trademark
Your trademark is an essential component of your brand. A trademark, or "mark," is any word, name, symbol, design, image, or even sound used in commerce to indicate the source of your goods or services and distinguish them from others'. Trademarks are extremely valuable assets and represent the hard-earned goodwill of your business. But not all trademarks are created equal.
When generating brand ideas, many new companies initially select names that describe the goods or services they offer. They may assume that this helps customers quickly and easily understand what the company does, or is good for search engine optimization. Perhaps, but a good marketing team will steer its clients toward a strong and distinctive mark that helps distinguish their products in the marketplace, and away from a mark that merely describes what they do.
Not only do descriptive names make for weak brands, they are typically also not protectable as trademarks. The strength of a particular trademark is evaluated on a spectrum of distinctiveness ranging from the strongest fanciful marks to the weakest descriptive marks, which may not be protectable at all.