A marijuana delivery company marketing itself as UPS 420 is being sued by UPS, the national general parcel delivery service, alleging trademark infringement. Not only is the delivery service usurping its name, plaintiffs argue, but are also capitalizing on the famous shield logo that has become synoymous with the larger UPS brand.
As our California cannabis attorneys know, some smaller marijuana dispensaries and delivery services are making the fatal mistake of assuming these huge, name-brand firms won’t take note if they piggyback on the larger firm’s brand recognition. This could not be farther from the truth. Marijuana trademark infringement is taken quite seriously by these big companies. Some have entire legal departments dedicated to identifying and addressing copyright and trademark infringement.
Although trademark infringement can be somewhat of a tricky area of legality for marijuana businesses because, as noted in a recent Los Angeles Cannabis Law Group blog, the U.S. Trademark Act has a specific clause requiring trademark registrants to attest their mark isn’t used to sell illegal goods. As it stands currently, marijuana is still illegal per the U.S. Controlled Substances Act.
Some cannabis companies can get around this provision by instead pursuing a copyright infringement case (depending on the circumstances), but a company like UPS taking action against a marijuana delivery service doesn’t have this problem.
It’s imperative for Southern California marijuana companies to discuss their branding and advertising strategies with an experienced Los Angeles marijuana attorney even before launching them because many of these issues can be subverted before they ever become a painfully expensive problem. We do recognize it can be difficult to overcome the intense challenges of markets across the country that are saturated (making wholly original names and logos increasingly difficult to generate) and disparately regulated (making finding which names are already in use tough).
For something like this, however, using a large brand name and logo like UPS and its iconic shield was doomed almost from the start. It is not a fight this tiny marijuana delivery upstart is likely to win. However, an experienced marijuana trademark infringement attorney may be able to help negotiate much lower penalties and perhaps work out a deal to avoid the need to close shop entirely.
Here, in UPS v. Kennedy, UPS is seeking several relief actions. These include:
An immediate injunction on using any copy or imitation marks similar to the UPS family of trademarks for any advertising, manufacture, sale, etc. of respondent’s products.
An injunction on any representation – direct or indirect – that UPS in any way is involved or endorses respondent’s products or services.
Requirement that respondent turn over any and all merchandise, logos, packaging, promotional materials, products, to UPS so that they cannot be used in the future.
Respondent transfer ownership and control of its website domain names bearing all marks, symbols, name or likenesses to the UPS brand of marks to UPS. (The company counted three domain names total.)
Repay plaintiff for actual damages, enhanced damages (per 15 U.S.C. § 1117 for willful violation of a registered trademark) and attorney fees.
Again, an experienced Los Angeles marijuana trademark attorney may or may not help a client prevail in such a case, but they can almost always help negotiate a better outcome than what would have been possible if the company chooses to go it alone. Do not discount the fact that simply closing shop will not be enough if a court decides a case in favor of a plaintiff and places a lien not only on one’s business but personal accounts.
The Los Angeles CANNABIS LAW Group represents growers, dispensaries, collectives, patients and those facing marijuana charges. Call us at 949-375-4734.
UPS v. Kennedy, Feb. 13, 2019, U.S. District Court for the Central District of California
More Blog Entries:
Cannabis Copyright in California: Protecting Your Budding Brand, Feb. 13, 2019, Los Angeles Marijuana Trademark Attorney Blog