In Cannabis Trademark Wars, “Wood” v. “Weed” is Closely Watched

A number of cannabis trademark infringement lawsuits have been cropping up nationally. Many involve other dispensaries or ancillary businesses in nearby marijuana markets, but an increasing number pit other plant businesses against pot shops. Horticulture, lumber and other “green product” companies are more likely than other industries to discover an overlap, considering many use shades of green and plant icons in their brand bibles.

L.A. marijuana trademark attorney noted the latest in this trend is an established Idaho lumber company suing a Massachusetts cannabis dispensary. The allegation is that the “tree” logo used by the New England dispensary bears striking similarity to that of the lumber company, using the same green or alternative black color and an encircled tree with six branches.

This, plaintiff tree company says, has the potential to cause confusion among its office supply and wood products customers – one of whom is the U.S. government. As a $5 billion federal contractor in business 55 years, it is compelled to provide a drug-free work environment, which includes cannabis, and conducts random drug-testing of employees. Defendant dispensary, meanwhile, opened just a few months ago. It also uses a green-tree-in-a-circle logo, though their tree has four branches.

The firm is seeking monetary damages and an order that the new company halt use of the trademark.

L.A. Marijuana Attorneys Can Assist With California Cannabis Branding Strategy

Every budding business owner knows branding can be everything. It sets companies and products apart – especially important when you’re banking on the same core product. But Los Angeles marijuana business lawyers know intellectual property has been a tricky spot for cannabis companies leaning on U.S. intellectual property laws, to the fact the U.S. Controlled Substances Act still considers the drug a Schedule I narcotic, subject to the most stringent restrictions.

That doesn’t mean you shouldn’t seek to secure your branding. Some companies have successfully secured copyrights to certain materials, and there are California copyright and trademark laws as well, such as 14200 et seq.  Sometimes, it is the best way to secure your intellectual property.

However, all cannabis firms and ancillary businesses are carefully scrutinized by every agency. Before you begin brand building, have it all reviewed by a Los Angeles cannabis law firm with experience in intellectual property for pot shops.

It’s not enough that two logos or company names or colors are similar. An exact replica may be difficult to defend, but then the question is usually: Who established a legal right to it first?

In fact, there is a series of questions court will ask in weighing whether one trademark is “confusingly” similar to another, thus damaging the trademark owner’s brand or costing actual sales. The groundwork for this was outlined in the U.S. Court of Appeals for the Ninth’s Circuit’s 1979 ruling of AMF, Inc v. Sleekcraft Boats. which specified several factors to be considered:

• How strong the mark is.
• How closely the mark is associated with those particular goods.
• Evidence that consumers have actually been confused.
• Effort by defendant to use the same marketing channels.
• The type of goods/the degree of care likely to be used by the buyer.
• Intent of defendant in selecting the mark.
• How likely product lines are to expand.

Some of these are fairly straightforward. For instance, if the brand of the other company on the other side of the aisle is a household name, that’s a “strong mark,” and you are more likely to be the one infringing. In other cases, though, a determination involves more subjective legal analysis. An example would be trying to determine the defendant’s intent or how careful a buyer would be to be especially cautious in choosing one brand over another.

In this case, the products are unquestionably dissimilar. No one is going to accidentally purchase a marijuana edible when what they really wanted was a solid oak office desk. The marks are not identical. To the extent they’re similar, plaintiff has the advantage, having used it for more than five decades. And while it is true the internet has brought us all closer in touch than ever before, it seems a plausible case could be made that a cannabis company startup in Boston would never have come across the logo of a lumber company more than 2,600 miles away in Idaho.

In cases like this, whether the plaintiff is a greenhouse or college horticulture program or whether you’re the one pursuing a trademark infringement case, experienced cannabis trademark lawyer on your side is an imperative.

Often, these cases can be avoided altogether with careful brand research before you launch or rebrand.

The Los Angeles CANNABIS LAW Group represents growers, dispensaries, ancillary companies, patients, doctors and those facing marijuana charges. Call us at 949-375-4734.

Additional Resources:

Wood vs. weed: Idaho lumber company sues NETA over logo, April 19, 2019, By Shira Shoenberg, Boston Business Journal

More Blog Entries:

New Legal Ground: L.A. Sues Unlicensed Pot Shop Over Pesticides, May 3, 2019, Los Angeles Cannabis Trademark Attorney Blog