Trademark Infringement Leads to Hospitalized Children

The Washington Post® reports that children are mistakenly consuming products containing THC because the packaging looks like popular brands of snacks.

Real Double Stuf® Oreos®

Trademark law doesn’t exist to protect companies that own trademarks: It exists to protect consumers. Consumers have a right to know what to expect from a product based on the trademark on the package. If someone buys a bag with the Nerds® trademark on it, then that package should contain Nerds® candy and not a product containing THC.

THC product

In one of the cases reported by the Post, products containing THC were “accidentally given to 63 people at the Utah Food Bank” resulting in five children being hospitalized.

THC product

As I said before, it’s time for the marijuana industry to grow up and start respecting the rules that govern other businesses. When I wrote before, the only harm was to companies that own famous marks. Today, it’s leading to actual trademark confusion that results in hospitalizations.

Real Cheetos®

One step that could help is to allow manufacturers of THC-infused products to register their own trademarks. A manufacturer of consistently high-quality edibles would want to start building brand awareness and customer loyalty in its own brand. That would be easier if they were permitted to register their trademarks like other businesses. That won’t happen until marijuana is decriminalized at the federal level.*

*When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.” [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37592, Sept. 11, 1989]

The Greatest Trademark On Earth

In 1988, the Utah Division of Travel and Development applied to register THE GREATEST SNOW ON EARTH for “promoting business and tourism.” It claimed to have started using the slogan in 1966.

Ringling Bros. Barnum & Bailey Circus, the owners of THE GREATEST SHOW ON EARTH, were not pleased. In case you think 1966 was a long time ago, Ringling Bros. first used the trademark THE GREATEST SHOW ON EARTH in 1891, and first registered the mark in 1961.

Ringling Bros. didn’t have to prove infringement because THE GREATEST SHOW ON EARTH is a “famous” mark. All Ringling Bros. had to show was that Utah’s use would “dilute” Ringling Bros. mark either by “tarnishing” or “blurring.”

Ringling Bros. opposed Utah’s application by arguing there would be dilution. After almost 6 years, the Trademark Trial and Appeal Board ruled in favor of Utah. Ringling Bros. appealed and still lost.

Since that fateful loss, the Ringling Bros. tagline has been the subject of other trademark riffs. Here are some that made it to registration:

  • THE GREATEST SHOW NEAR SURF
  • THE GREATEST SHOW ON GRASS
  • THE GREATEST SHOW ABOVE THE EARTH
  • THE GREATEST SHOW ON TUNDRA
  • THE GREATEST SHOW ON DIRT

The story of some trademarks goes back a long long way and takes a very twisty route.

Image of Utah license plan (c) 2018 Dick Elbers under Creative Commons License Attribution-ShareAlike 4.0 International. Modified by cropping.

The Super Powers of a House Mark

“House marks do not identify particular goods or services – rather, they identify the provider of a wide variety of goods or services, with such goods or services often themselves identified by a separate trademark or service mark.” 

Trademark Manual of Examination Procedure §1402.03(b)

What’s a house mark? I’ve sprinkled a few into this post to help you grok the concept. After reading this post, you’ll start noticing house marks everywhere.

A house mark’s super power is leveraging brand awareness: If consumers already buy and love your ketchup, they’re more likely to buy your mayonnaise if you use a house mark.

Costco’s adoption of KIRKLAND SIGNATURE® as its house mark is the greatest house mark story of all.

In the early 1990s, Costco sold plenty of its own products but each product used a different trademark: SIMPLY SODA for soft drinks; HEALTH BALANCE for vitamins; ENGINE FORCE for motor oil.

In 1995 Costco adopted a single trademark for all its products: KIRKLAND SIGNATURE®.

Costco had to make a serious effort to adopt a house mark. It had to find a mark that was available for all the goods and services its sells in all the countries where it operates.

That effort really paid off: KIRKLAND SIGNATURE® is now the biggest brand of packaged consumer goods in the U.S. with sales that are larger than much more established brands like Kellogg®.

Thanks to Liz B. for sending me an article that led to this post.