You’ve been selling GRINS brand candy bars. You think it’s about time to register GRINS as a trademark but, whoops, another company has already applied to register GRINS for candy.
Most of the time, your only choice is to completely rebrand but, sometimes, there’s a way forward.
I see getting a trademark registration like a game of chess. There are rules and pieces that can move certain ways. If the pieces are lined up the right way, I can move them to get what my client wants.
One of those tactics is called an “opposition.”
Here’s how the chess board has to look for an opposition to work:
You were using GRINS before the other company’s “priority date”.
You were also using GRINS before the other company’s “first use” of GRINS.
The other company’s application to register GRINS hasn’t been “published for opposition” yet or was published within the last 30 days.
If the application was published for opposition more than 30 days ago, you’ve lost the chance to oppose. If you still want to try for GRINS, you can wait until the trademark is registered and then try to cancel it.
Weed is now legal in all but six states[i] in the U.S. It’s time for the industry to start behaving like grownups.
That includes respecting the trademark rights of other companies. Here are just a few of the registered trademarks owned by other companies that are being used as the name for strains of marijuana and/or THC or CBD products:
Girl Scout Cookies®
“But, wait,” I hear you cry, “Isn’t it okay to name a cannabis strain GORILLA GLUE because no consumer would ever confuse a company that makes glue with a company that makes cannabis products?”
That’s true, but famous trademarks have broader rights. Someone can be infringing on a famous mark even if there’s no “likelihood of confusion.” The owner of the famous mark can sue on the basis of dilution[ii] by showing:
it owns a famous trademark;
the use by the other party started after the mark became famous; and
the use of the trademark;
creates an association . . . that impairs the distinctiveness of the famous mark; or
I don’t see the Girl Scouts of America having any problem proving that: 1) THIN MINTS is famous, and 2) associating THIN MINTS with weed harms its reputation. In fact, Wrigley is already suing the user of “Zkittlez” as infringing on Wrigley’s famous mark SKITTLES. It’ll be interesting to see how this pans out.
Shout out to Michael O. who brought the Skittles lawsuit to my attention.
[i] It’s actually still illegal everywhere in the U.S. because of federal law but, as of May 2021, every state has decriminalized or legalized at least some uses of marijuana except: South Carolina, Georgia, Tennessee, Kansas, Wyoming and Idaho.