Global logistics monstrosity United Parcel Service, better known by the infamous abbreviation UPS, is going after a rinky-dink cannabis firm called United Pot Smokers for federal trademark infringement.
The case, which was filed with the courts just last week, could end up being a cautionary tale for other cannabis operations out there borrowing familiar logos and other copyrighted materials to promote their own goods and services. The overall message coming from the big dogs of American industry is: “Hey pot peddlers, get your own identity or suffer the consequences.”
When Imitation Isn’t the Sincerest Form of Flattery
The complaint, which alleges that United Pot Smokers – owned by Brendon and Mayumi Kennedy — has blatantly ripped off the UPS “Shield Logo,” was recorded in U.S. District Court for the Central District of California on Feb. 13. In it, the plaintiff suggests that United Pot Smokers, a medical marijuana company, is operating several websites, including UPS.green and UPS420.com, that are branded with imagining that closely resembles the ones used by UPS since it was founded in 1909.
But this rip-off goes far beyond just the logo, according to the complaint. The United Pot Smokers websites describe themselves as being a “nationwide logistics expeditor” and “operational courier,” and employs the use of a variety of additional language that mimics the popular delivery service.
Furthermore, the lawsuit indicates that there are no licenses for the United Pot Smokers (or its websites) documented with either the California Secretary of State or California Bureau of Cannabis Control. It even goes as far to suggest that some of the company’s properties are “scam websites” designed to “defraud medical marijuana patients.”
United Pot Smokers has a “reputation for unlawful and unprofessional conduct, including offering sham services,” according to the complaint. A listing from Ripoff Report is used to cosign this claim.
The United Parcel Service is concerned that its customers will get the two companies confused – something the company believes could ruin its reputation if the courts to not step in and take action.
“Defendants’ unauthorized use of the famous UPS® Mark and UPS® Shield Logo is likely to cause confusion, mistake, or deception as to the origin, source, and sponsorship of Defendants’ products and services,” the lawsuit reads.
“This has “harmed and is continuing to harm UPS’s valuable reputation and goodwill with respect to its UPS® Family of Marks,” it continues, “as consumers are likely to associate Defendants’ illegal activities with UPS. This association is likely to dilute the UPS® Mark and UPS® Shield Logo through both tarnishment and blurring.”
Business as Usual
Although it might seem petty for UPS to pursue a complaint against the United Pot Smokers organization, this is just how business works in the real world. No company can use logos from other businesses without permission.
As it stands, marijuana is now legal in over half the nation for medicinal and recreational use, which allows cannabis companies to operate legitimately under state law. But in doing so, they must also adhere to the same copyright and trademark laws as any other arms of legitimate commerce.
So swiping the logo from one of the largest logistics companies in the United States was probably not the best move by United Pot Smokers. Perhaps they thought they would fly under the radar. But legal experts say now is the time for cannabis operations to start paying more attention to this detail.
“Cannabis companies are not immune from trademark infringement claims, and must choose brands that do not infringe the rights of third parties, including third parties outside of the cannabis industry,” wrote Alison Malsbury for the Canna Law Blog.
This is not the first time a cannabis company has been in trouble for borderline trademark infringement.
Hershey’s, a Fortune 500 company, sued a couple of cannabis companies back in 2014 for selling edible pot products (Ganja Joy, HashHeath, Dabby Patty) that mimicked the confectioner’s popular candy brands.
Hershey’s also sent out cease and desist letters to a few other cannabis companies a couple of years ago over a similar complaint. Oakland’s popular dispensary Harborside was on that list, but the case was eventually dismissed after attorneys for Harborside indicated they were prepared for litigation.
In the latest case, UPS is asking the courts to permanently prohibit United Pot Smokers from using its logo for any reason in the future. The lawsuit is also seeking financial compensation for damages and legal fees.
Legal experts say cannabis businesses should seek legal assistance with trademarks rather than risk sparking a litigious never.
“Before adopting a new brand name, we recommend consulting with an experienced trademark attorney and we also recommend having them perform a trademark clearance search to ensure your brand won’t be infringing any existing registrations,” Malsbury said in the same blog post.
She also issued a stern warning to any other cannabis entrepreneurs who want to get jokey: “Remember that parody is not a defense to trademark infringement that will typically fly in a commercial setting.”
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