UPS trademark action against cannabis group is a good reminder that branding you think is “funny” will likely cost you
A little over two weeks ago, shipping and logistics giant United Parcel Service brought suit against a cannabis delivery company, United Pot Smokers and some individuals allegedly associated with the service. You can read a copy of the complaint here (link). UPS filed the complaint after multiple attempts to contact the defendants and resolve the matter prior to bringing the lawsuit.
The complaint against the defendants alleges trademark infringement, dilution, false designation of origin, state trademark causes of action – stating that the defendants use “confusingly similar” branding to UPS.
To give you some sense of what this case was about, you really just need to view the two logos:
The websites associated with the defendants are alleged in the complaint as www.UPS420.com, www.THCplant.com, www.Googleweed.com – the websites all appear to have been taken down, and no response was filed pursuant to the court’s order on UPS’s temporary restraining order request allowing the defendants time to respond by February 28 – so there’s every likelihood that filing the complaint was the trigger to getting the offending behavior terminated.
That’s not surprising given that the complaint went well beyond alleging infringement and made allegations bolstered by website reviews that the websites were scams, that the operations were unlicensed, and likely, if true, drawing much unwanted attention to a business enterprise that would not want to have such facts brought to the attention of their consumers or regulators.
Let’s be clear, we’ve written before on parody, and this is not parody. Many small companies sometimes use the intellectual property of others in marketing themselves, branding, or even in labeling design. In fact, it’s certainly not new or novel to the burgeoning cannabis industry. In 2014 Hershey’s brought suit against marijuana edible makers using punny names like Ganja Joy, Hash Heath, and Dabby Patty.
The Takeaway: Piggybacking on another company’s intellectual property – even if you’re their biggest fan, carries the potential for claims of infringement, dilution, damages and the gamut of IP remedies. Best not to copy another’s logo, trademark, idea, movie, TV show… you get the picture… without permission. After all, treble damages under the Lanham Act are no joke.