In past issues, Kanna Knowledge has covered some jaw-droppingly obvious trademark infringement cases from cannabis products, usually brought on by someone’s mistaken idea that “nobody will notice” or “we’re too small for them to bother with.” Both of which, of course, are famous last words in the courts.
Recently, we’ve found more complaints where the plaintiffs were awarded damages. The defendants in these cases all asserted “parody” as their defense, but the courts did not allow it — with good reason. While television skits on Saturday Night Live can and regularly do parody registered trademarks for the purpose of political or social commentary, without associated sales of any competing goods or services, attempting to market lookalike products with similar cannabis‑themed names is going too far.
So we have New York Cannabis, a line of designer clothing, styling its logo as a direct copy of the City of New York’s own registered trademark with its well-known chunky block lettering. Even though the City does not sell cannabis-related products, it certainly may so in the future — and does license its mark to apparel manufacturers making competing products. The City was able to show documented consumer confusion over whether or not it was behind New York Cannabis’s caps and hoodies. An open-and-shut case of bad faith that of this writing has a federal court granting a preliminary injunction against the manufacturer.
And we have the online networking site LeafedIn, which launched as a direct competitor, in the same space as, the well-known business networking site LinkedIn. This could have been a slam dunk in the courts, but the defendants wisely consented to a trademark infringement settlement with the LinkedIn brand. The details have been kept private, but the site is now known as LeafedOut which apparently all parties find acceptable.
But not so much for cannabis delivery companies United Pot Smokers, UPSGreen and UPS420, all being sued by United Parcel Service for infringement on its registered trademarks — including its famous shield logo. The lawsuits also include claims for deceptive advertising, false designation or origin, trademark dilution, and control of the defendants’ websites. Litigation is in progress, but the offending sites have been taken down.
Remember, today’s brand giants are not going to sit back when a cannabis company, no matter how small, attempts to riff on their own successful trademark. They either do not want to be associated with a still federally-illegal substance, or want to protect their future options down the road. Which may be why, over the years, Hershey’s has prevailed in multiple lawsuits against such copycat cannabis-infused chocolate edibles as “Mr. Dankbar,” “Reefer’s Peanut Butter Cups,” and “Ganja Joy.”