The tide of cannabis legalization continues to sweep across the country, with both New Jersey and New York legalizing adult recreational use and starting to set up the regulatory and licensing systems to allow legal cannabis businesses. However, as previous strictures on cannabis use and commerce fall away, some cannabis entrepreneurs seem to be treating the newly legal market as a wild frontier, especially for trademarks. We have reported before on Mondelez’s action against “Stoney Patch” and Ben & Jerry’s problems with HALF BAKED, and now New York City is addressing a similar issue.
Last month, New York City filed a complaint against Robert G. Lopez alleging that his various New York City and cannabis-themed marks that ape the NYC logo, the logos of the City’s Departments of Parks and Recreation, Sanitation, and Transportation, and the Central Park sign design, all of which are federally registered, infringe New York City’s trademarks. Not only has Lopez been using his versions of the mark on apparel, but he has registered them with New York State and applied for federal registration. He has even brought an action against a California dispensary alleging that they are infringing his rights in those marks. Robert G. Lopez v. Cookes SF LLC, et al. No. 21-cv-5002-RA (S.D.N.Y.).
Lopez, who styles himself “TradeMarkRob,” is no stranger to trademark litigation, having filed more than 40 trademark infringement suits in the Southern District of New York. Before this action was even filed, Lopez was on social media, asserting his marks were protected as fair use and parody, and offering New York City a license to use them for $2.5 Million. When the City filed its complaint, Lopez made another Instagram post threatening counterclaims against the City’s registrations.
This week, the City filed a motion for a preliminary injunction. The case will be worth watching, whether you’re a brand owner worried about new cannabis companies using your brand and claiming that associating your brand with their marijuana sales is “parody,” or you’re looking to enter the new cannabis market and want to be careful about your branding. Either way, an intellectual property lawyer can help you.
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