Killing the Buzz: The “Highs” and Lows of Marijuana-Related Trademarks

KumarHeadshotThis post is the first in a series by Kumar Jayasuriya, attorney and Ober’s multi-talented Legal Research Manager.

 

May a company register a trademark connected to the use of a controlled substance, such as marijuana?

Recently, a federal court said “Yes.”  Started in 1974, the periodical magazine High Times reports on the medical and recreational use of marijuana and continues to advocate for the relaxation of state and federal drug laws.  High Times’ publisher, Trans-High Corp. (“THC”), owns the trademark HIGH TIMES for use on, among other things, “books about cannabis” and “magazines about hemp.”  In August of last year, THC filed an infringement lawsuit targeting Richard Reimers, a Washington State-licensed marijuana dispensary owner operating under the name High Time Station (“Reimers”).  In response to the suit, Reimers counterclaimed that THC’s trademarks be cancelled because THC had allegedly used them on unlawful goods not listed in the registration certificates.

Reimers’ counterclaim alleged sale of drug paraphernalia and controlled substances based on the claim that THC’s act of printing advertisements by third-party companies in its HIGH TIMES magazine violates the Controlled Substances Act.  In fact, the United States Patent and Trademark Office is expressly permitted by statute to inquire about compliance with federal laws to confirm that the trademark applicant’s use of the trademark in commerce is in fact lawful.  Use of a trademark on unlawful goods is grounds for cancellation.

However, the United States District Court for the Eastern District of Washington dismissed Reimers’ counterclaim upon a finding that a trademark registration is only vulnerable to cancellation if the goods and services listed in the registration are proven to be unlawful. None of the goods and services in the THC registrations were unlawful, said the Court, because the Controlled Substances Act expressly permits publications and advertisements “which merely advocate the use of a similar material, which advocates a position or practice, and does not attempt to propose or facilitate an actual transaction in a Schedule I controlled substance.” 21 U.S.C. 843.

The court dismissed (with prejudice) Reimer’s counterclaim for cancellation of THC’s federal registrations. This is not the last word on trademarks related to  unlawful goods.  In addition to the Reimer case in Washington State, THC has filed similar trademark infringement claims in Texas, New York and Colorado. It is just the beginning for protection of marijuana related marks.  As more and more lawful marijuana-related businesses spring up in the wake of marijuana legalization, trademark use will be only one of the many issues that presents a case of first impression to the nation’s courts.

Trans-High Corp., Inc. v. Richard Reimers, No. 2:14-CV-00279-LRS, (E.D. Wash. Jan. 12, 2015).

 

.bank is here!

On September 25, 2014, the Internet Corporation for the Assigned Names and Numbers (ICANN) granted the application of fTLD Registry Services (FRS) to operate a new Top Level Domain (TLD) exclusively for the banking industry: .bank. When general registration for the new TLD opens next year, banks and other members of the banking community will be able to operate through custom websites such as Local.bank, as opposed to the traditional LocalBank.com. To avoid the internet land rush for .bank extensions expected during the general registration window, banks with federally registered trademarks can get a 30-day head start towards TheirTrademark.bank by applying (and paying) for a spot on ICANN’s Trademark Clearinghouse registry. (more…)

Appropriation of famous logo is trademark infringement? You be the judge.

Banksy on branding. The elusive street artist is seemingly frustrated with his own commercial success. To him great street artists need to remain criminal to keep their art pure. Most appropriation art could violate commercial law but is not criminal, unless it involves a violation of Copyright law’s DMCA. The image above is not a copyright infringement, but is potentially trademark infringement and dilution of Coca Cola’s famous trademarks in the shape of the bottle and the coca-cola script.

If Banksy’s use of Coca Cola’s trademarks are a fair use there would not be an infringment. The test for trademark fair use is different from copyright fair use. In fact there are a few trademark fair use tests. (more…)

Performance Artist FORCE Launches Spoof with Long Legs

FORCE's Pink Loves Consent

A group of performance artists from Baltimore known as “FORCE: Upsetting Rape Culture” took advantage of a much anticipated media event to bring attention to the importance of consensual sex. The VS All Access Victoria’s Secret fashion show is an such an event, gluing billions of eyeballs to its prime time telecast.

For FORCE, the VS All Access television event was the perfect opportunity to launch its own fashion campaign, Pink Loves Consent, by spoofing Victoria’s Secret’s PINK brand. (more…)

Mexico becomes third Latin American country to join the Madrid trademark filing system

Mexico

In June I posted about Columbia’s accession to the Madrid Protocol and noted that Mexico was taking steps to follow suit. Late last month Mexico’s Secretary of Economy deposited documents completing the country’s accession to the Madrid Protocol for the International Registration of Marks with the World Intellectual Property Organization, bringing to 89 the total number of members of the international trademark filing system. The treaty will enter into force in Mexico on February 19, 2013. As regular blog readers know, the Madrid System for the International Registration of Marks offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally. Spanish was introduced as a working language of the Madrid system in 2004 and Mexico becomes the fourth Spanish speaking country in the Madrid system. Among the other Spanish speaking nations is Cuba which was the first country in the Latin American region to accede to the system, a step it took in 1995.

New Zealand became the 88th nation to accede to the system in October of this year (effective starting on December 10, 2012) with the curious exclusion that trademark registrants that designate New Zealand via the Madrid Protocol will not have the protection of their marks extended to the tiny island territory of Tokelau (population about 1400) although a domestic New Zealand trademark application does extend to the island. The Philippines joined the system in April bringing to 4 the total number of additions this year to 4.

Can a celebrity’s post mortem right of publicity enter the public domain?

Banking on a dead celebrity’s right of publicity being public domain is an extremely dangerous advertising practice. Rights of publicity are a suite of legal rights that have developed from invasion of privacy and trademark law since the early 20th Century. There is a web of state and federal laws that can protect dead celebrities– even celebrities from states like New York that specifically do not recognize a post-mortem right of publicity. And the laws can protect rights of publicity for as much as 100 years after death.

As a young lawyer, a common task was determining which state laws apply to a dead celebrity so to determine whether his or her name or image could be used for free.  The analysis is extremely detailed. Which law applies, New York (no protection) or California (broad protection)?  Does the use violate the celeb’s trademark or constitute a false designation under federal law?  An article in Slate today made some stunningly dangerous over-simplifications about how a dead celebrity’s persona is protected.

In my entertainment and sports law seminar, we spend a few classes examining the various ways of protecting a persona. A right of publicity protects the commercial value of a celebrity’s persona. A 1941 Texas case involving Davey O’Brien is my hands down favorite for explaining the basis for protecting a celebrity’s right of publicity. The Texas court gets the analysis wrong, and a dissent by Justice Holmes provides the foundation for modern ROP laws.

All American and Heisman award winner Texas Christian University quarterback Davey O’Brien (more…)