MarkIt to Market® - October 2020: Get in the Weeds: Even Brands for (Federally Illegal) Consumables Need to Play by the Trademark Rules

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

In a complaint filed late last month in the Northern District of Illinois, Edible Arrangements, purveyors of fancy fruit bouquets, initiated a trademark infringement suit against cannabis company Green Thumb Industries Inc., based on its use of the mark INCREDIBLES for edible marijuana products. (Edible IP LLC et al. v. MC Brands LLC et al). The suit seeks to enjoin Green Thumb from marketing edible cannabis products in connection with the mark INCREDIBLES, on the ground that it is confusingly similar to Edible Arrangements’ EDIBLE and INCREDIBLE EDIBLE marks. 

While the case garnered headlines, Edible Arrangements likely wasn’t dancing with Mary Jane when it decided to pursue legal action to protect its brand. Instead, the case highlights the land grab currently surrounding CBD and cannabis brands, as even established consumer brands (think Martha Stewart) enter this lucrative space. In fact, Edible Arrangements asserts that cannabis-related products are within the zone of its natural expansion, related to the current food products it sells under its brands.

Lending credence to its claim is the fact that, a few years back, Edible Arrangements made a calculated move to stake its own claim in the CBD space. Perhaps in response to the ubiquitous use of the term “edible” for consumable marijuana products, Edible Arrangements sought to build on its existing consumer goodwill and debuted its CBD company Incredible Edibles in November 2019.

Even though this lawsuit was only recently filed, and is likely far from over, the background and fact that it was filed at all is interesting from a few different perspectives.

First, Edible Arrangements’ pivot to CBD is a textbook example of how to extend the goodwill and equity of a mature brand into an emerging field. Edible Arrangements addressed the potential risk to its EDIBLE brand from the burgeoning “edibles” market by attempting to capture that goodwill for itself – perhaps revitalizing a staid brand in the process.

Second, this case is a good reminder that those seeking to earn a share of the cannabis space would be well-served to think more broadly about goods and services overlap when it comes to trademark clearance and adoption. While a spokesperson for Green Thumb argued that, “[e]ven those who’ve consumed a generous serving of our delicious Green Thumb Mile High Mint bar wouldn’t confuse a pre-cut fruit bouquet delivery business with an edibles cannabis brand” (Marijuana Business Daily), the fact is that today’s brands do span more product categories than ever in the past. Consumers are accustomed to seeing the same brand on their tractors and their work boots, and savvy brands gain market share by expanding to new categories – either internally, or by strategic licensing programs or acquisitions. As cannabis brands become more mainstream, they need to think more like traditional brands, including taking steps to properly clear and protect their intellectual property.

Finally, cannabis brands face somewhat of an unequal playing field when it comes to protecting consumable brands. Marijuana is still illegal on a federal level in the U.S., which means that it is not currently possible to federally register a brand for marijuana or a CBD meant for human consumption. Thus, in a hypothetical reverse of the Edible Arrangements/Green Thumb case, the marijuana company would not be able to rely on a federal registration when asserting a mark for its edible product against an infringing food brand.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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