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:
- Gorilla Glue®
- Girl Scout Cookies®
- Thin Mints®
“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
- harms the reputation of the famous mark.
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.
Featured image ©2014 Mike Mozart used under Creative Commons Attribution License 2.0. Image was cropped for size.
[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.
[ii] 15 U.S. Code § 1125(c).