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.
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.