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This article first appeared on WTR Daily, part of World Trademark Review, in August 2019. It is reprinted here with permission. For further information, please go to www.worldtrademarkreview.com.

• Woodstock Roots sought to enjoin Woodstock Ventures from selling cannabis and cannabis-related products under WOODSTOCK mark
• The court found that Woodstock Roots had failed to demonstrate a likelihood of confusion between Woodstock Ventures’ use of WOODSTOCK for recreational marijuana and its use of WOODSTOCK for smokers’ articles
• This is a victory for the original owner of the WOODSTOCK brand as it seeks to expand its offerings to include marijuana-related goods

A recent case in the U.S. District Court for the Southern District of New York has given Woodstock Ventures (the owners of the Woodstock music festival) the right to use the mark WOODSTOCK to sell cannabis products in commemoration of the 50th anniversary of the famous music festival.

Background

The dispute arose in February 2018, when Woodstock Ventures filed a complaint against a company named Woodstock Roots, alleging that recreational marijuana falls within the “natural zone of expansion” of their other products, and that Woodstock Roots should not be permitted to offer cannabis-related products. Woodstock Ventures owns numerous federal trademark registrations for the mark WOODSTOCK for various goods and services, including entertainment services, clothing, paper products, bedding, tents and beverage glassware. Woodstock Ventures began using its mark in 1969 in connection with its famous festival. 

On the other hand, Woodstock Roots is a Pennsylvania-based company, manufacturing hemp-related products since 2017. It owns two registrations for the mark WOODSTOCK, covering smokers’ articles and related goods and services, including “tobacco-free electronic cigarettes for medical purposes” and “smokeless cigarette vaporiser pipes.”

Woodstock Roots counterclaimed that cannabis and cannabis-related products fall within the “natural zone of expansion” of their smokers’ articles and, therefore, Woodstock Ventures was infringing their WOODSTOCK trademark. Then, in August 2018, Woodstock Roots moved for a preliminary injunction, seeking to enjoin Woodstock Ventures from selling cannabis and cannabis-related products under the WOODSTOCK mark.

Decision

Ruling in favour of Woodstock Ventures and refusing to issue a preliminary injunction against it, the court held that Woodstock Roots had failed to demonstrate a likelihood of confusion between Woodstock Ventures’ use of its WOODSTOCK mark in connection with recreational marijuana and vaping devices and Woodstock Roots’ use of its WOODSTOCK mark in connection with “smokers’ articles.” The opinion focused on a likelihood of confusion analysis by examining the factors enumerated in Polaroid Corp v Polarad Elecs Corp (287 F2d 492 (2d Cir 1961)).

Reviewing the strength of Woodstock Roots’ WOODSTOCK mark, the court concluded that, even though the WOODSTOCK mark itself is inherently distinctive, Woodstock Roots had failed to provide sufficient evidence of sales, media coverage and advertising. 

Next, the court examined the similarity of the marks and rejected Woodstock Roots’ assertion that they were identical. Instead, the court noted distinct differences between the fonts of the two marks (Woodstock Ventures’ bubble font versus Woodstock Roots’ standard font), as well as the fact that Woodstock Ventures used a unique dove and guitar logo, and Woodstock Roots used the term ‘American Products’ in close proximity to its mark.

Turning next to the proximity of the products in the marketplace, Woodstock Roots argued that its “cannabis-related ‘smokers’ articles’” were confusingly similar to Woodstock Ventures’ recreational marijuana and vaping devices. The court noted that, in correspondence with the U.S. Patent and Trademark Office (USPTO), Woodstock Roots had rejected “the notion that their products are intended for use with recreational marijuana.” This undercut Woodstock Roots’ argument that the goods were confusingly similar. The court referred to Constellation Brands Inc v Arbor Hill Assocs Inc (535 F Supp 2d 347, 366 (WDNY 2008)), which concluded that:

two alcoholic beverages sold in similar channels are not related because ‘the nature of the two products is clearly different, since… Arbor Hill is a traditional wine, while Arbor Mist is a mix of wine and fruit juice, with a lower alcohol content than most wine.’

The court also rejected Woodstock Roots’ claim that cannabis-related products are within the logical zone of expansion of its smokers’ articles, because the sale of recreational marijuana is illegal under federal law and Woodstock Roots already “represented to the USPTO that their trademark covering ‘smokers’ articles’ would not be used to market marijuana.”

In examining the remaining factors, the court failed to find any evidence of actual confusion or bad faith. Finally, the court found the quality of the products and consumer sophistication also contributed to the conclusion that there was no likelihood of confusion.

Comment

The ruling comes as a win for the original owner of the WOODSTOCK brand as it seeks to expand its offerings to include marijuana-related goods in a legal landscape in which marijuana is increasingly becoming legalised for medical and recreational purposes.