As ardent followers of this weblog are effectively conscious, one particular of my favored pastimes is maintaining tabs on who is suing whom in the cannabis sector for trademark infringement. These lawsuits serve as good examples for my consumers of what NOT to do when selecting a brand for their enterprise. The final couple of years have offered a couple of major-name cannabis trademark lawsuits, which includes the Gorilla Glue dispute and the Tapatio Foods lawsuit.
This time, it is the United Parcel Service (UPS) suing a group of cannabis delivery providers for trademark infringement. The lawsuit was filed in the U.S. District Court for the Central District of California on February 13, 2019 and alleges trademark infringement against United Pot Smokers, UPS420, and THCPlant, all of which marketplace and sell cannabis items. These providers, according to the complaint, present delivery and logistics solutions by means of the web sites www.upsgreen.com and www.ups420.com.
In its complaint, UPS accuses the defendants of infringing its household of trademarks, which involves its well-known shield logo, and states that the defendants “intended to capitalize off UPS’s in depth goodwill and reputation.” UPS allegedly sent numerous cease and desist letters to the defendants, which have been unwisely ignored.
The lawsuit involves claims for trademark infringement, trademark dilution, false designation of origin, deceptive marketing, and unfair company practices, and involves a request for damages, an finish to defendants’ infringement, and manage more than defendants’ web sites.
We’ve produced this point quite a few occasions ahead of, but it warrants repeating: Cannabis providers are not immune from trademark infringement claims, and ought to pick out brands that do not infringe the rights of third parties, which includes third parties outdoors of the cannabis sector. For ease of reference, right here are numerous previous weblog posts relating to trademark infringement, and how to pick out a brand that will not get you sued:
And right here are the aspects a court will take into consideration in assessing no matter if one particular mark is probably to be confused with one more, proving trademark infringement (AMF Inc. v. Sleekcraft Boats):
- Strength of the mark
- Proximity of the goods
- Similarity of the marks
- Proof of actual confusion
- Advertising channels made use of
- Sort of goods and degree of care probably to be exercised by the purchaser
- Defendant’s intent in picking the mark and
- Likelihood of expansion of the solution lines.
The two most standard aspects I advise our cannabis consumers evaluate ahead of they choose a brand are 1) is your mark comparable to or the very same as an current mark, and two) are you intentionally “riffing” off an current brand? Bear in mind that parody is not a defense to trademark infringement that will ordinarily fly in a industrial setting. When you pick out a mark as a “parody” of an current brand, probabilities are you are truly infringing a registered trademark, and possibly diluting a well-known mark, which is precisely what is alleged right here, in the UPS case. And the reality that you knew of the senior trademark would certainly play against you in litigation, as your infringement would be deemed willful.
These two aspects are only the starting of the evaluation. There are situations exactly where comparable, or even the very same brand names can coexist if the goods these brands are made use of on are absolutely various and marketed by means of separate channels to disparate groups of customers. The evaluation for likelihood of confusion can be rather complicated.
Prior to adopting a new brand name, we advise consulting with an skilled trademark lawyer and we also advise possessing them execute a trademark clearance search to assure your brand will not be infringing any current registrations.