The recent trademark infringement case involving a cannabis company provides a great example of a branding concept that may be difficult for customers to convey. This is the concept of “likelihood of confusion” where two brands are not identical, or even so close together, identical.
According to news reports, “ITG, owner of menthol cigarette brand Kool, has sued a California cannabis company, Capna Intellectual (trading as Bloom Brands), for breaching its logo.” The two logos are shown below for comparison:
The KOOL trademark was registered as a US federal trademark in 1949 and has become known to consumers, and especially to smokers / tobacco users. Brands that have been registered for a very long time and have been recognized in the household tend to offer a greater scope of protection than newer, lesser-known brands.
Comparing the two design brands – KOOL and BLOOM – I’m sure a lot of people are wondering how these brands could be considered similar enough for a claim for trademark infringement. While the study of the similarity of two marks is very subjective, it is possible that two marks made up of different words may be viewed as confusingly similar if the “overall commercial impression” created by the marks is too similar. A key part of ITG’s argument is that the interlocking “O” design is iconic and distinctive enough to offer broad protection, and that a brand incorporating this design on smokable cannabis products could lead consumers to believe that the brands are related or come from the same source.
I often hear from customers that they have searched for the brand they want to register and that they assume they are aware that there have been no registrations for the exact same brand. That’s just not the case, which is why I always recommend doing a full brand release search before launching a new brand. And it is important to remember that the likelihood of confusion is based on a number of factors known as du Pont factors:
- The similarity or dissimilarity of the marks as a whole in terms of appearance, sound, connotation and commercial impression;
- The relationship of the goods or services as described in the application and registration (s);
- The similarity or dissimilarity of established, likely continued, trading channels;
- The conditions under which and buyers to whom sales are made, ie “impulse” versus careful, demanding purchase;
- Number and type of similar trademarks used for similar goods; and
- The existence of a valid declaration of consent between the applicant and the owner of the previously registered trademark.
When adopting a trademark for your business, you should consider these factors when determining the feasibility of your trademark application in the light of existing registrations for similar trademarks. These factors are also useful in assessing the strength of ITG’s claims against the owner of the stylized BLOOM trademark. There is certainly an argument that the inclusion of the interlocking “O’s” makes these two brands quite similar in appearance and that this results in a similar overall commercial feel. In addition, the goods in question (cannabis goods vs. tobacco goods) are arguably somewhat related, as there has been a lot of talk by large tobacco companies trying to get into the cannabis industry.
Another lesson cannabis companies should learn from this particular case is that when developing your brand, it is very important to avoid choosing a brand that is similar to a tobacco company’s brand. I currently have a client who has received a cease and desist letter from a major tobacco company, and in virtually all cases the tobacco companies will have deeper pockets than the cannabis companies to fight these types of battles.