Tobacco giant, Kool, brought a copyright infringement case against a California-based cannabis company, Bloom. The cannabis lawsuit stated that although the Bloom logo was not identical to Kool, it held enough similarity to confuse the two. The likeness refers specifically to the interlocking O’s featured in both logos.
Kool has been an established tobacco brand operating for decades, registering its logo as a U.S federal trademark in 1949. Unfortunately, because cannabis is still not federally legal, brands cannot register their logo in the same manner that tobacco companies can. In lawsuit cases such as these, the court tends to favor larger companies that have been established for longer. Unsurprisingly, they sided with Kool, instructing Bloom to immediately stop using the logo and prohibiting them from using any logo that features interlocking O’s in the future.
While many might be under the impression that copyright issues occur only when identical names are used, there are actually several factors to be considered. Kool can make their case against Bloom under the DuPont factors. These factors outline cases in which copyright infringement is determined based on the “likelihood of confusion.” Since the logos do feature similarities as well as being similar goods (smokables), Kool used these DuPont factors to solidify their case:
- The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The number and nature of similar marks in use on similar goods.
Bloom launched their brand in California in 2016 and has since expanded into Nevada as well. Featuring a range of products, Bloom specializes in cannabis concentrates and vape pens. With the final lawsuit decision, Bloom must destroy all packaging that may feature the logo. This includes contacting all retailers carrying the product to have them take it off the shelves. Bloom has already removed the logo from their website, replacing it with O’s that are just slightly touching. The products featured on their website currently show blank branding as the team redesigns the look and feel of the brand.
While the news is heartbreaking for Bloom, perhaps other companies occupying and entering the cannabis space can take this as a lesson when brand planning. Checking for previously registered trademarks that may be similar and staying clear of anything that might even closely resemble a tobacco product are good places to start.
Large corporations outside of the cannabis industry are paying close attention to emerging brands that may step a little too close to their territory. Wrigley brand, Skittles, opened a lawsuit against cannabis brand Zkittlez and Girl Scouts of America even cracked down on the use of the “Girl Scout Cookies” strain, now referred to as GSC. While it may seem like a killer marketing plan to mimic mainstream brands, the repercussions could end up being expensive legal fees.