By: Riva Smith
On July 26, 2021, the iconic ice cream company, Ben & Jerry’s, filed a notice of opposition against a marijuana company, MJ Munchies, Inc. (“MJ”), with the Trademark Trial and Appeal Board (“TTAB”)[1]. MJ filed two applications in October 2018 seeking registration for the HALF-BAKED mark covering dessert items and beverages.[2] Ben & Jerry’s objects to MJ’s applications on several grounds, including the likelihood of confusion with Ben & Jerry’s 25-year-old HALF BAKED registrations, covering ice cream, and frozen confections.[3] Ben & Jerry’s also alleges that the maturation of MJ’s applications to registrations would dilute Ben & Jerry’s brand and bring them into “contempt, or disrepute.”[4] This case is just the beginning of a long line of many marijuana-related trademark issues.
Following the state-level legalization of marijuana for both medical and recreational use, there has been an influx of business owners stepping into the space, seeking brand protection, and receiving lawsuits in response. In May 2021, the Wrigley Company, a giant candy and gum manufacturer, filed a lawsuit against a hemp and marijuana company, Terphogz, LLC (“Terphogz”), alleging that the company’s “Zkittlez” brand violated Wrigley’s trademark for the Skittles candy brand.[5] Wrigley contends that it invested nearly fifty years and millions of dollars, carefully cultivating the goodwill symbolized by the Skittles mark.[6] Terphogz filed for trademark protection with the US Patent and Trademark Office for its “ZKITTLEZ” mark and was unsuccessful.[7]
Similarly, in Ferrara Candy Co. v. Top Cannabis, Ferrera, a top American candy manufacturer, sued Top Cannabis, a cannabis company, for trademark infringement and dilution.[8] The items at issue were Top Cannabis packaging resembling Ferrera’s well-known candy products, including its famous NERDS and NERD ROPE candy.[9] In the complaint, Ferrera cited its ownership of the U.S. federal trademark registrations of the NERD marks, covering “candy” in Class 30.[10] The court found in favor of Ferrera, citing Ferrera’s longstanding commercial success throughout the United States.[11] The opinion addressed the dilution claim by citing that the NERD and NERD ROPE products were marketed to parents as a fun and enjoyable treat for children, contrary to Top Cannabis marketing purposes.[12]
Likewise, Ben & Jerry’s has a strong case against MJ and will likely succeed. Ben & Jerry’s presents the classic likelihood of confusion argument that alleges that MJ’s planned use of the HALF-BAKED mark will confuse consumers in the marketplace and mislead them to associate MJ’s dessert products with Ben & Jerry’s.[13] Further, the dilution and tarnishment claims are likely to succeed as well.[14] When considering the Ferrera case, the court is likely to cite Ben & Jerry’s 43-year-old commercial success in the U.S. and note that the registration of MJ’S HALF-BAKED mark would likely tarnish Ben & Jerry’s reputation by causing consumers to associate Ben & Jerry’s HALF BAKED products with marijuana.[15] Lastly, trademark law intends to prevent consumer confusion and protect brand identity, which MJ is infringing on Ben & Jerry’s brand.
Overall, Marijuana companies seeking brand protection may feel defeated. As societal beliefs and laws change regarding marijuana, terms such as “half baked” may become closely associated with the marijuana industry, making them everyday terms. In this case, consumers would then start to associate the term “half-baked” with marijuana instead of an ice cream flavor. At this point, marijuana companies could challenge the distinctiveness of the term, citing that the term no longer identifies an exclusive source.[16] Therefore, the term would no longer be a badge of origin but rather a generic term, and the trademark registration would be dead and buried, and companies like Ben & Jerry’s would fall victim to “genericide.”[17]
[1] See Ben & Jerry’s Homemade v. MJ. Munchies, No. 91270686 (T.T.A.B., filed July 26, 2021).
[2] See id.
[3] See id.
[4] See id.
[5] See WM Wrigley v. Terphongz, No. 121-CV-02357 (N.D. Ill. filed May 3, 2021).
[6] See id.
[7] See U.S Trademark Application Serial No. 90609941 (filed Mar. 29, 2021); see also U.S Trademark Application Serial No. 88233663 (filed December 18, 2018).
[8] See Ferrara Candy Co. v. Tops Cannabis, No. 220-cv-10349-SVW-PD, 2021 U.S. Dist. LEXIS 104794 (C.D. Cal. May 4, 2021).
[9] See id.
[10] See id.
[11] See id.
[12] See id.
[13] See David Siegel, Ben & Jerry’s Opposes Marijuana Company’s Pending Applications for HALF-BAKED Trademark, nat’l l. rev. (Sept. 19, 2021, 11:13 PM), https://www.natlawreview.com/article/ben-jerry-s-opposes-marijuana-company-s-pending-applications-half-baked-trademark.
[14] See id.
[15] See id.
[16] See Simon Tulett, Genericide: Brands Destroyed by Their Own Success, BBC NEWS (Sept. 24, 2021, 7:43 PM, https://www.bbc.com/news/business-27026704.
[17] See id.
