Tag Archives: Trademark

In or Out – Trademarks for Recreational Marijuana

Recreational marijuana sales, still illegal under U.S. Federal law, cannot be protected by Federal Trademarks.

The Federal Government, with a blind eye to the legality of recreational marijuana sales and use in many states, refuses to recognize any legal sales or protect the branding of any such sales by registering associated trademarks. (But they will accept the tax revenue.) At the same time those involved in the legal sale of marijuana products, unable to file for trademarks, are also increasingly the subject of trademark infringement suits. Such is the case of the recently filed Trans-High (High Times Magazine) v. Reimers, et al. case of Eastern Washington. 2:14-cv-00279 (E.D. WA. Aug. 25, 2014).

In the complaint, the publishers of High Times Magazine claim the defendants’ operation of a legal marijuana vendor doing business as High Time Station infringes their registered trademarks. Legitimacy of the complaint aside, it needs to be acknowledged that the plaintiff is seeking to enforce rights against defendants that are excluded from the system. This degree of inequality and unfair protection is something that will eventually be acknowledged. With the current “corporations are people” position of the law (right or wrong) an equal protection argument seems ripe. Why should a company (or person) be subject to the protections of a law (trademark) when they are denied access to that same law?
As the economy of legal recreational marijuana sales grows, expect the trademark system to quickly reverse course and allow the registration of associated trademarks. Also expect there to be a growing number of Plant Variety Protection (PVP) filings as people begin to legitimize the protections of their strains such as “Purple Diesel Bus” and “Brazilian Brain Bomb.”

A brave new world to be sure.

Complaint: Trans-High v. Reimers, et al. case of Eastern Washington. 2:14-cv-00279 (E.D. WA. Aug. 25, 2014).

A Clean Slate – Fortres Grand v. Batman (Warner Bros.)

On August 14 the 7th Circuit issued its Fortres Grand v. Warner Brothers opinion (No. 13-2337) clarifying that the gist of any trademark infringement claim is consumer confusion.

As per the opinion, this case is all about:

Fortres Grand Corporation develops and sells a desktop management program called “Clean Slate.” When Warner Bros. Entertainment used the words “the clean slate” to describe a hacking program in the movie, The Dark Knight Rises, Fortres Grand noticed a precipitous drop in sales of its software. Believing Warner Bros.’ use of the words “clean slate” infringed its trademark and caused the decrease in sales, Fortres Grand brought this suit. Fortres Grand alleged that Warner Bros.’ use of the words “clean slate” could cause consumers to be confused about the source of Warner Bros.’ movie (“traditional confusion”) and to be confused about the source of Fortres Grand’s software (“reverse confusion”).

 The 7th Circuit clarified that injury related to trademark rights is based on “confusion about ‘origin, sponsorship, or approval of … goods’” and not “general confusion ‘in the air’.” And goods subject to a trademark claim must be “real goods in commerce.”

After reviewing the several (there are 7) factors to be considered the 7th Circuit held, “Fortres Grand has not and could not plausibly allege that consumers are confused into thinking Fortres Grand is selling [software] licensed by Warner Bros. Fortres Grand’s real complaint is that Warner Bros.’ use of the words “clean slate” has tarnished Fortres Grand’s “clean slate” mark by associating it with illicit software. But this type of harm may only be remedied with a dilution claim.”

While this might be promoted as a “movies can’t infringe trademarks” opinion, that is not what this case is about. As the court makes clear, the facts implicate a dilution claim not a confusion claim. Fortres Grand alleged consumers were confused and the court simply stated that since Warner Bros. had no real “clean slate” product, then no reasonable consumer could be confused.  Had Warner Bros. sold or given away a software add-on named “Clean Slate” to promote the movie as a marketing tool, then Fortres Grand would certainly have had a claim for the software marketing component.

While sensational in its parties, there is no new law in this case.

Move along now.

(Full 7th Cir. Opinion: Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 13-2337, Aug. 14, 2014)

Danzig / The Misfits – Claims dismissed

On August 6, Judge Klausner dismissed Glenn Danzig, The Misfits former front man’s claims against his former bandmate Caiafa (Jerry Only) regarding licensing and sales of band related merchandise.

This was not the first suit between the parties. A 1992 suit was settled in 1994. “The 1994 Agreement contained a paragraph entitled “Merchandising” that provided that Plaintiff and Caiafa would share ownership of The Misfits’ name, trademarks, logos, and artwork that existed during the Classic Misfits Era.”

Subsequent to the settlement Caiafa, as a joint owner of the name and logos, then filed a number of trademarks related to The Misfits name and graphics, and then went on to license merchandise to retailer Hot Topic.

Danzig brought a number of claims, including Lanham Act (Trademark), breach of contract, and interference with business advantage. The court found as customer Hot Topic clearly knew Danzig was not involved in their licensing, there could be no Lanham Act / misrepresentation claim.

Danzig’s claims are dismissed, but there is leave to amend as to the claims for breach of contract and interference with business advantage.  Still pending are Danzig’s separate cancelation proceedings before the USPTO.

An amended complaint, if filed, is due by August 15.

 

A copy of the order:  Danzig_031119462929