The latest case of trademark infringement involving a cannabis company provides a great illustration of a trademark concept that can be difficult to convey to clients, which is the concept of “likelihood of confusion” where two marks are not identical, or even all that close to identical.
According to news reports, “Menthol cigarette brand Kool owner ITG has sued a California cannabis company Capna Intellectual (doing business as Bloom Brands) accusing it of infringing upon its logo.” The two logos are shown below, for comparison:
The KOOL mark was registered as a U.S. federal trademark in 1949, and has become well-known among consumers, and particularly among smokers/tobacco consumers. Marks that have been registered for a very long time and have gained household recognition tend to be afforded a greater scope of protection than newer, less well-known marks.
In comparing the two design marks – KOOL and BLOOM – I’m sure that many people are wondering how these marks could be deemed similar enough for a trademark infringement claim? While the inquiry as to the similarity of two marks is highly subjective, it is possible that two marks that are comprised of different words could be deemed confusingly similar if the “overall commercial impression” created by the marks is too similar. Here, a fundamental part of ITG’s argument is that the interlocking “O” design is iconic and distinctive enough to be afforded broad protection, and that a mark that incorporates this design on smokable cannabis products could lead consumers to believe that the brands are affiliated or originate from the same source.
I often hear from clients that they ran a search for the mark they wish to register, and that because there were no existing registrations for the exact same mark, they assume they are in the clear. That is simply not the case, and this is why I always recommend performing a comprehensive trademark clearance search prior to adopting a new mark. And it’s important to remember that a likelihood of confusion determination rests on a number of factors, known as the du Pont factors:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
- The relatedness of the goods or services as described in the application and registration(s);
- The similarity or dissimilarity of established, likely-to-continue trade channels;
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing;
- The number and nature of similar marks in use on similar goods; and
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark.
When adopting a trademark for your business, these are the factors you should be considering when determining the viability of your trademark application in light of existing registrations for similar marks. These factors are also useful in assessing the strength of ITG’s claims against the owner of the stylized BLOOM mark. There is certainly an argument to be made that these two marks are made quite similar in appearance by the incorporation of the interlocking “O’s”, and that this leads to a similar overall commercial impression. Furthermore, the goods at issue (cannabis goods vs. tobacco goods) are arguably somewhat related, as there has been significant talk of big tobacco companies eying an entrance into the cannabis industry.
Another lesson for cannabis businesses to be gleaned from this particular case is that when developing your brand, you should avoid, at all costs, choosing a mark that is similar to a tobacco company’s mark. I currently have a client that received a cease and desist letter from a large tobacco company, and in virtually every instance, the tobacco companies are going to have deeper pockets than the cannabis companies to fight these kinds of battles.