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

As NBC Los Angeles recently reported, now that regulations in the year-old recreational marijuana industry are beginning to settle, some companies are revamping their whole image in an effort to appeal to a wider audience. (Years of “reefer madness” propaganda, a spotty patchwork of state medical marijuana statutes and a spate of federal raids hadn’t helped the industry’s image.)

Building on this previously-untapped market, long-time dispensaries are taking a new tact on branding, while those just breaking into the market are working on forging their recognition for the first time. Unfortunately, because federal law – specifically the U.S. Controlled Substances Act – remains at odds with the now-majority of states that legalize the drug in some form, not all types of intellectual property protection are available to marijuana businesses. Nonetheless, acting on available protections now can help combat copycats in the present while better positioning them to seize further opportunity if/when the government does repeal the CSA.

What Exactly is My Marijuana Business Brand and Why Does it Matter?

All businesses need some degree of differentiation to effectively promote, get people to know who you are, recognize you and cultivate loyalty. A “brand” is everything about you – from your name, your theme, slogan, the type of products/services you offer – down to the colors and font you choose. But as an L.A. marijuana intellectual property rights attorney can explain – not all of that is protected due to the unique legal status of marijuana businesses.

By protecting your brand, you are protecting what makes you distinct from other businesses. The whole idea of intellectual property law is to promote innovation and creativity by awarding those who generate it – while depriving the copycats of those same rights. Innovation and creativity are investments. Intellectual property protections give you a way to make sure no on else profits form your ideas.

What Intellectual Property Protections Are Available for California Cannabis Companies?

Trademarks are symbols, designs, phrases or words that identify you and set you apart from the competition. Typically, you’d protect this by registering your trademarks with the U.S. Patent Office. Unfortunately, trademark protection is usually not available because of a clause in the U.S. Trademark Act that requires registrants to show they aren’t using their trademark in illegal transactions. Marijuana is illegal under federal law.

What you can usually still file for is copyright protection, which doesn’t have this same requirement. You can theoretically argue commonlaw copyright without every needing to register for anything so long as the work is wholly original, somewhat creative and tangible/can be reproduced. Your marijuana intellectual property lawyer may advise you though to register whatever copyrighted material you can to be safe.

However, while copyright laws may protect a logo (image), they probably won’t extend to your brand name, tagline, slogan, etc. That falls under the purview of a trademark. You can submit all of this for copyright protection and not receive a flat-out rejection (copyrights aren’t vetted the way trademarks are), but you may not be able to enforce anything in the copyright but the images.

It’s important that whoever your cannabis business attorney is has experience in intellectual property law and understands how best to ensure your own work is protected from infringement – and also that you have solid legal standing if you’re accused of infringement by another company.

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

Additional Resources:

Rebranding Weed: One Year Into California’s ‘Green Rush,’ Cannabis Industry Wants to Change Pot’s Image, Feb. 11, 2019, By Jonathan Bloom, NBC Los Angeles

More Blog Entries:

Why Small Marijuana Businesses Need a California Cannabis Attorney, Dec. 22, 2019, Los Angeles Marijuana Intellectual Property Attorney Blog