It’s an interesting time for marijuana related businesses. At the state level, several states have given them a green light. On the federal level, however, the light is still very much red. In states where marijuana laws have been eased, entrepreneurs have been actively developing businesses around pot culture. But these entrepreneurs run into problems with federal trademark registration because the US Patent & Trademark Office is federally regulated. Trademark examiners have typically rejected marijuana related marks. However, one Colorado based web producer has passed the federal hurdle for his trademark application on Ganjagonia – a marijuana themed web cartoon, but now faces a more traditional trademark challenge from an actual company, as the outdoor retailer Patagonia is challenging his trademark application.
Chris Hoover, the producer of the marijuana themed animated web series, filed a trademark application on Ganjagonia in May of 2016. The application went through the Trademark Office without issue. Then like all allowed applications, it moved on to the publication for opposition phase. This is a 30-day window that allows for anyone who may be injured by registration to oppose the mark before it registers. When the Ganjagonia application published for opposition, it was challenged by Patagonia.
In its opposition filing, Patagonia asserts that Ganjagonia is deceptively similar to Patagonia. Patagonia claims this will cause consumer confusion and Ganjagonia’s connection to drug use is likely to tarnish Patagonia’s reputation. The outdoor retailer argues that the category Ganjagonia filed in, “animation production services” will overlap with videos, films, and other web based productions that Patagonia uses in conjunction with its brand. All of this together, Patagonia argues, will dilute its built-up brand equity. Will registration of the mark GANJAGONIA for “Animation production services “ create a likelihood of confusion with PATAGONIA for clothing and outdoor related products? The U.S. Trademark Trial and Appeal Board (TTAB) will make this determination. The opposition will now proceed through the TTAB and a decision will be made as to whether Ganjagonia can register.
This will be an interesting case to watch as it combines the emerging elements of marijuana related branding, likelihood of confusion, and possibly free speech and parody issues. There is no doubt that most big business retailers will want to avoid connection to marijuana based brands, but with more and more acceptance of marijuana and startup businesses around the culture, how will their branding play out? If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.