We advise our cannabis clients regularly on how to choose a brand name that is eligible for trademark protection. For example, the strength of a mark depends on its distinctiveness – fanciful and arbitrary marks are protectable, while merely descriptive marks are not. But the other key component to choosing a brand name that can be successfully registered as a trademark is choosing a mark that is not the same as, or confusingly similar to, an existing registered trademark.
This “likelihood of confusion” standard often confuses business owners trying to brand their cannabis and ancillary products. Not only can you not use a mark that is the same as a registered trademark, you cannot use a mark confusingly similar to a registered trademark.
The Ninth Circuit, in AMF Inc. v. Sleekcraft Boats, developed the following eight-factor test for determining whether one mark is confusingly similar to another:
- Strength of the mark
- Proximity of the goods
- Similarity of the marks
- Evidence of actual confusion
- Marketing channels used
- Type of goods and degree of care likely to be exercised by the purchaser
- Defendant’s intent in selecting the mark
- Likelihood of expansion of the product lines.
Some of these factors are clear-cut, and some are highly subjective. The Ninth Circuit has repeatedly reaffirmed that this is a flexible test, but it is useful to consider these factors when choosing a name for your brand that may be similar to another registered mark. For example, if the other, similar mark is a well-known brand, or a household name, your risk of infringement goes up. If the goods you are selling are similar to the goods provided by the other brand, your risk goes up. Likewise, if the marks are very similar, if similar marketing channels are used, or if either company intends to expand into the market of the other, your risk of infringement goes up. You will notice that the court also considers the intent of the defendant. This means that if you knew from the outset that your mark was similar to a registered mark, the court is less likely to look favorably on your case.
Last month, the Trademark Trial and Appeal Board (“TTAB”) dealt with the issue of likelihood of confusion in Margaritaville Enterprises, LLC v. Rachel A. Bevis, where the Applicant had applied to register the mark MARIJUANAVILLE for “T-Shirts, Hats, Sweat Shirts, sweat pants, Jackets, Socks” and “Drive-through retail store services featuring coffee and related goods; Retail apparel stores; Retail clothing stores.” Margaritaville Enterprises, LLC, the Opposer, opposed the registration of the MARIJUANAVILLE mark on the ground of likelihood of confusion with its registered MARGARITAVILLE trademark. The MARGARITAVILLE trademark is owned, in part, by Jimmy Buffet, and is a coined term based on Buffet’s famous “Margaritaville” song.
In determining whether a likelihood of confusion exists between MARGARITAVILLE and MARIJUANAVILLE, the TTAB first noted that the fame of the prior mark plays a dominant role in balancing the likelihood of confusion factors. “Margaritaville” was released in 1977 and inducted into the GRAMMY Hall of Fame in 2016. The TTAB concluded that the MARGARITAVILLE mark had been the subject of sustanined and widespread media and popular culture exposure, and was indeed famous, weighing heavily in the Opposer’s favor.
In comparing the similarity of the marks, the TTAB points out that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Furthermore, “the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” This is an important distinction to keep in mind when selecting a trademark.
Here, the Opposer argued that the two marks were similar in sound, appearance, connotation and commercial impression, and the TTAB agreed. The opinion found “both marks are similar insofar as they are single-term 14 letter marks comprised of five syllables, each commencing with the same letter string ‘mar-‘ and ending with the suffix ‘-ville.’ As to their connotation and commercial impression, the record shows a public association between the two terms as representing a similar ‘state of mind’ induced by either a cocktail or marijuana.” On this basis, and after analyzing the other likelihood of confusion factors, the TTAB rejected the MARIJUANAVILLE trademark application.
The lesson to be learned from this (and other cases) is that choosing a mark for your cannabis or ancillary brand that won’t infringe an existing trademark is not as simple as avoiding identical marks. The analysis for likelihood of confusion is nuanced, and it’s important to conduct a full-fledged trademark clearance search with the help of an experienced trademark attorney (preferably one who knows the cannabis industry) for marks that are the same and similar to your proposed mark before you file your trademark application and before you invest in brand development and marketing.