The tide of cannabis legalization continues to sweep across the country, with both New Jersey and New York legalizing the use of adults for recreation and beginning to set up legislative and licensing systems to allow legal cannabis businesses. However, as previous restrictions on cannabis use and trade disappear, some cannabis entrepreneurs seem to treat the newly legalized market as a wild frontier, especially for trademarks. We’ve previously reported on Mondelez’s action against “Stoney Patch” and Ben & Jerry’s issues with HALF BAKED, and now New York City is addressing a similar issue.
Complaints filed by NYC against Robert Lopez for his cannabis-themed brands
Last month, New York City filed a lawsuit against Robert G. Lopez, claiming that his various New York City and cannabis themes mark that the monkey is the NYC logo, the logos of the city’s parks and recreation, sanitation and transportation departments. and Central Park sign designs, all of which are federally registered, infringe New York City’s trademarks. Not only has Lopez used his versions of the brand on clothing, but he has registered them in New York State and applied for federal registration. He has even sued a California pharmacy claiming they infringe his rights in these brands. Robert G. Lopez v. Cookes SF LLC, et al. None. 21-cv-5002-RA (SDNY).
Lopez, who describes himself as “TradeMarkRob,” is no stranger to trademark litigation, having filed more than 40 trademark lawsuits in the southern district of New York. Before this action was even filed, Lopez was on social media, claiming that his brands were protected as fair use and parody, and offered New York City a license to use them for $ 2.5 million. When the city filed its complaint, Lopez made another Instagram post that threatened counterclaims against the city’s registrations.
This week, the city has demanded a preliminary injunction. The case will be worth seeing, whether you are a brand owner who is concerned about new cannabis companies using your brand and claim that it is a “parody” to associate your brand with their marijuana sales, or if you want to come into the new cannabis market and want to be careful with your branding.
© 2021 Norris McLaughlin PA, All rights reservedNational Law Review, Volume XI, Number 281