We’ve written extensively about the trademark protection strategies employed by cannabis businesses in light of the challenges they face to obtain federal trademark registrations for their cannabis goods and services. Recently, a court order in a motion for preliminary injunction involving the use of the famous WOODSTOCK mark raised some issues related to those strategies, and serves as a reminder that federal prohibition of marijuana truly does have far-reaching implications for state-legal cannabis businesses.
A summary of the case is warranted here. Plaintiffs are the producers of the 1969 Woodstock music festival and have made use of the WOODSTOCK mark in conjunction with concerts, motion pictures, TV programs, and other merchandise. The plaintiffs own a number of federal trademark registrations for the WOODSTOCK mark that cover entertainment services, clothing, and other merchandise. Plaintiffs claim that marijuana is within their “natural zone of expansion” for their trademark rights.
Defendants, on the other hand, contend that they have used the WOODSTOCK mark for more than thirty-five years in connection with the radio station Radio Woodstock as well as in conjunction with a variety of goods and services. Defendants also content that more than five years ago, they obtained federal registration of the WOODSTOCK mark in Class 34 for smokers’ articles and related goods and services, including tobacco-free e-cigarettes for medical purposes, vaporizer pipes, and cigarette rolling papers.
Where things get tricky is that Plaintiffs began using the Woodstock mark in conjunction with marijuana and marijuana products and in their counterclaims, Defendants allege that Plaintiffs are actually infringing Defendants’ federal trademark rights in Class 34 and sought a preliminary injunction. Defendants claim that plaintiffs’ use of the WOODSTOCK mark on marijuana and marijuana-related products “overlaps with, and is inextricably related to, the goods covered by [Defendants’] common law and federally registered rights for the WOODSTOCK mark for smokers’ articles.”
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The court ultimately denied the Defendants’ motion for preliminary injunction, stating that “Defendants have not demonstrated a likelihood of success on the merits of their trademark infringement claim, because they have not demonstrated a likelihood of confusion arising from Plaintiffs’ use of the WOODSTOCK mark for recreational marijuana and vaping devices and Defendants’ use of the WOODSTOCK mark for ‘smokers’ articles.’” While this is only a decision on the motion for preliminary injunction and not a decision on the merits of the case, the court’s ruling is still important.
Many businesses in the cannabis industry have struggled to find a means for protecting their brands, and common practice is to rely on a combination of federal trademark protection for ancillary goods and services, and state trademark protection. This strategy is not bulletproof, however, and this court decision indicates why. Here, the court didn’t think that consumers were likely to be confused by two parties selling smokers’ articles and cannabis under identical marks. The court noted that the Defendants had “expressly disavowed the notion that their products are intended for use with recreational marijuana” during their trademark prosecution process, something that was necessary for them to procure federal trademark protection, but is now a fact that can be used against them in their argument for likelihood of confusion.
There were a number of other deficiencies in the pleadings for the motion for preliminary injunction, and the standards to prevail on such a motion are difficult to meet. But we will be following this case very closely to see how the court ultimately rules on the merits, because this is an issue that will have broad implications for brand owners in the cannabis space.