Curbing Cannabis Copycats: How To Protect Your Brand's Reputation As Marijuana Companies Try To Make Their Mark

• Published date: 13 August 2021
• Subject Matter: Intellectual Property, Cannabis & Hemp, Trademark
• Law Firm: Morrison & Foerster LLP
• Author: Ms Jennifer Lee Taylor and Sabrina Larson

"The very nature of cannabis-derived products appears to be presenting an unexpected challenge for brand owners seeking injunctive relief-the products are used 'for different purposes' or sold through distinct channels of trade, making it harder for plaintiffs to prove that confusion is likely."

To capture attention in the crowded new field of cannabis-related goods and services, many companies are using other companies' brands to promote their goods and services, including puns in the edibles space. Stoney Patch THC gummies, for instance, features a name and logo similar to the popular Sour Patch Kids gummies. Cannaburst Gummies similarly plays on the famous Starburst candy brand. (See Complaint, Wm Wrigley Jr Co v. Conde d/b/a 2020Ediblez et al., No. 5:21-cv-00777 (C.D. Cal.); Complaint, Wm Wrigley Jr Co v. Packaging Papi LLC et al., No. 1:21-cv-02364 (N.D. Ill.).) Others just copy a famous trademark, add cannabis leaves to the packaging, and claim the product is "medicated," including Medicated Skittles and Life Savers Medicated Gummies.

Not surprisingly, brand owners are responding with lawsuits, alleging trademark infringement, dilution, and unfair competition among other claims. The focus of these lawsuits is generally quick injunctive relief to stop harm to the brand, rather than damages. This makes sense because of the uncertainty of collecting from companies who do not rely on the traditional finance services industry. But injunctive relief is not guaranteed without demonstrating the four preliminary injunction factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities, and (4) the public interest. This article focuses on the first two of these factors.

Irreparable Harm

Some courts have found any association of a plaintiff's trademark with cannabis to be sufficient to establish likely irreparable harm. For example, a court granted United Parcel Service's (UPS's) motion for preliminary injunction to stop United Pot Smokers from using a UPS420 logo nearly identical to UPS's shield logo, but for marijuana shipping services. The court found "UPS would be likely to suffer irreparable injury, absent a preliminary injunction (in the form of prohibiting Defendants' ongoing infringement and dilution of UPS's famous UPS' Mark and UPS' Shield Logo through Defendants' use of the UPS' Mark and a confusingly similar shield logo in connection with businesses selling and...