The Hershey Company was not amused to discover that a Seattle cannabis dispensary was selling edible products named “Reefer’s Cups” and “Mr. Dankbar.” But an expression of displeasure wasn’t enough. The candy giant went on to sue the Seattle Conscious Care Cooperative for trademark infringement.
They settled out of court, along with a Colorado company called TinctureBelle, which The Hershey Company also sued for infringing on package design trademarks.
When cannabis puns and big brands collide, the law is usually on the side of the trademark owners. “The Hershey Company’s trademarks are iconic and among our company’s most important assets,” The Hershey Company’s Jeff Beckman told Seattle television station KIRO 7. “They are recognized by consumers around the world, and our company has spent as many as 120 years building the trust and equity in these iconic brands. Consumers depend on our brand names to represent a level of quality and dependability. These entities have used Hershey’s trademarks, without authorization, to trade on Hershey’s goodwill and reputation, and to draw greater attention to their products; these unauthorized uses of Hershey’s trademarks also make the products more appealing to children. We have always vigorously protected our brands and will continue to do so whenever we believe that others have infringed on these valuable intellectual assets.”
There’s an important lesson to be learned here: Think twice before invoking the image of a big-name brand in your cannabis products or marketing. That little R in a circle (®) or TM superscript (™) are legal statements that indicate something is declared and owned intellectual property.
These brand assets can be worth millions of dollars, and the USPTO requires owners to police and enforce their rights throughout the lifetime of their registration. Allowing another company to use a name that potentially infringes on its trademark rights can weaken a brand’s legal protections.
Understandably, established corporations do not look kindly on brands that mimic their trademarks — especially when those companies are in the cannabis business. Here’s what you need to know about trademarks, registered marks, and copyrights to help steer clear of lawsuits.
A trademark (™) can be used to safeguard words, phrases, symbols, graphics, and other advertising devices designed to brand a company and its products in ways that distinguish it from competitors. They must be approved by the United States Patent and Trademark Office (USPTO), but brands can use the superscript ™ while they’re the still applying for trademark registration.
If you use a word, phrase, symbol, or graphic that has been registered with USPTO and granted as trademarked, the trademark owner has to prove they were using it before you (applying to register the trademark helps establish that timeline) and demonstrate that your use of the trademark confuses the public from distinguishing the source.
After the trademark is approved by the USPTO, its owner can use the more powerful registered trademark ® symbol. This indicates that the federal patent office has recognized the trademark, creates a legal “presumption of ownership,” allows the trademark owner to pursue action in federal court, and is the starting point for international trademark recognition.
Registering a trademark gives you powerful rights — especially in the United States. It’s why registered trademark infringement cases often settle out of court: A properly registered trademark gives its holder the right to demand treble damages against any infringer.
Trademark registrations generally last 10 years and must be renewed perpetually to remain enforceable.
You can protect your intellectual property without the aid of an attorney — which you’d otherwise need to determine that what you plan to register is unique — by adding a copyright sign ®. No formal application to the USPTO necessary. It’s a legally recognized symbol of ownership that basically says, “I own this.”
The copyright symbol can be applied to any original work of music, literature, drama, visual art (your logo), and architecture. As the copyright holder, you have the exclusive right to distribute, reproduce, and profit from it.
In some ways, it’s like an unregistered trademark ™ symbol. Companies use the © symbol to indicate intellectual property ownership, but have relatively little legal recourse to protect it unless they take the step of formally registering it with the United States Copyright Office. This gives the owner enforceable copyright protection that remains in effect for 70 years after their death.
That timeframe offers perspective into the difference between trademark and copyright protection. Trademarks generally apply to commercial terms and images, protecting the company’s name and other things that communicate its brand identity — such as logos and slogans. Copyrights primarily protect the rights of individuals who create intellectual property such as music, movies, or even software.
Competition in the cannabis industry is already making it a crowded field, so why take a derivative approach with brand or product names, anyway? Differentiate your brand with a unique name and logo. You won’t have to worry about trademark infringement lawsuits, and you’ll be able to use the same protection for yourself.
Take a deeper dive into our unique perspective on cannabis marketing.