United Parcel Service, Inc. (UPS) filed suit against the operators of United Pot Smokers, UPS420.com, and UPS.green. Their complaint, filed in California’s Central District Court, includes claims of “federal trademark infringement, federal false designation of origin, federal trademark dilution, state trademark infringement, state trademark dilution, state unfair competition, state unfair business practices, state false advertising, and common law trademark infringement.” UPS claims that the logo used by United Pot Smokers is “confusingly similar” to their own and that its continued use would cause “irreparable harm” to their business and brand.
Are They Deluded?
UPS is worried, among other things, about trademark dilution. Trademark dilution weakens the unique nature of a famous trademark by creating the possibility that a consumer could believe there was a connection between the original owner and the newer infringing mark. UPS claims the use of the distinctive “shield” and letters “UPS” could lead a consumer to believe that UPS420, United Pot Smokers, or UPS.green are somehow related to the widespread United Parcel Service. Furthermore, UPS is concerned that a perceived connection with a cannabis company may hurt their reputation. UPS asked the Court to permanently enjoin the defendants as well as grant monetary damages.
What Happens Next: UPS Sues Cannabis Company
February 15, a Federal judge denied UPS’s request for a temporary restraining order. This was to give the defendants a chance to say their piece. Ultimately, if the court finds that there is a likelihood of confusion and that damages would occur, they will likely order that UPS420, United Pot Smokers, and UPS.green stop using the infringing marks.
A hearing is scheduled for March 7.
What This Case Says About Cannabis Trademarks
This isn’t the first case of a major corporation coming down hard against an allegedly infringing mark. Whether it’s the Hershey Company beating down the door of dispensaries selling infringing products or Gorilla Glue coming after the cultivator responsible for the “Gorilla Glue #4” strain, mainstream companies are not afraid to stomp on a cannabis brand.
These fights can cost a lot of money in lawyer and court fees, possible penalties and monetary damages, and potentially the cost of an entire rebrand. In the face of these consequences, every cannabis brand should think long and hard about their trademark before committing. If you are playing off the goodwill of another brand, but simply adding a weed pun, that is not a strong trademark. And companies do themselves a disservice by approaching their brand’s intellectual property this way.
The best intellectual property lawyers will advise their clients, not just offer a continual rubber stamp. A brand name is only as strong as the protections it garners. Playing off the name of an already established brand, adding cannabis leaves to your logo, or using the terms “canna,” “420,” or “green” in your brand name, all make your trademark less protectable.
If you are looking for a cannabis business attorney that will make sure your brand protections are strong, contact Gleam Law, a full-service cannabis business law firm.