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MAY 26, 2023
Recent trademark lawsuits include one that contends cones and hemp papers amount to paraphernalia.
The claims made by Big Tobacco against major cannabis companies and the celebrities behind them are often outrageous, if not laughable. In recent trademark lawsuits, a tobacco company claimed that pre-rolled cones, organic hemp papers, and more staples of the rolling paper industry amount to paraphernalia.
The latest claim is that pre-rolled cones, organic hemp papers and hemp gum are intended for use with pot—but not traditional rolling papers—which some tobacco companies sell.
“Big Tobacco is coming for legal marijuana,” The Boston Globe reported, referring to Marlboro owner Altria’s endeavors in pot. And while some Big Tobacco companies are attempting to buy their way into the industry, others have a different tactic: attacking competitors. Here’s a few trademark lawsuits targeting the industry that appear to have ulterior motives.
Big Tobacco’s Trademark War on Cannabis
High Times was informed of a smear attempt on cannabis consumers—and a hypocritical argument, at best. Republic Brands, a tobacco company owned by Don Levin, manufactures and sells OCB, Top, Job, and Zig Zag rolling papers. Republic sued RAW’s parent company, HBI International in an injunction announced on Feb. 9, and RAW founder Josh Kesselman recently took a lot of heat. (RAW is a more popular rolling paper brand.) High Times was eventually pulled into the vortex of this lawsuit as well as evidence that rolling papers are intended for pot.
RAW was under fire for alleging its papers were made in Alcoy, Spain, home of legendary Bambú papers, among other claims. In Republic’s filings, they sought to invalidate RAW’s trademark by arguing that Republic wanted to make cones and other materials used for the consumption of cannabis illegal. Republic’s attorneys argued in federal court that “…cones were developed in the 1990’s specifically to hold marijuana. They are marketed primarily for that purpose today.” Republic’s attorneys argued pre-rolled cones are in violation of the Controlled Substances Act as related to drug paraphernalia.
The court filings include several social media images of Miley Cyrus and Wiz Khalifa using the cones, drawn from RAW ads. Republic further pointed to RAW’s ads with High Times Magazine as evidence that the rolling papers are used primarily for pot and should be illegal. Court filings included photos involving The Emerald Cup, High Times back issues, and Cannabis Cup posts.
HBI International also filed a counterclaim against Republic. The jury found that HBI International violated the Illinois Uniform Deceptive Trade Practices Act by claiming its rolling papers were manufactured in Alcoy. The jury, however, sided with HBI’s counterclaim that Republic infringed on one of its copyrights and trade dress, awarding HBI with over $1 million in lost profits and statutory damages.
The company has repeatedly brought lawsuits against smaller competitors to bolster their market presence, the counterclaim contends.
Trademark Wars Continue
RAW isn’t the only business under fire. Law 360 reported last February that Kool menthol cigarette maker ITG sued Capna Intellectual, which does business as Bloom Brands, claiming that the company violated state and federal trademark law by stealing the Kool’s signature logo. (Some have argued that menthol cigarette makers unfairly targeted Black communities.)
In this case, the interlocking O’s of the logos were under scrutiny, though one could argue that other logos like the Dolce & Gabbana logo look similar as well.
Court filings say Bloom filed a trademark application with the U.S. Patent and Trademark Office in 2019 seeking to register the similar mark for e-cigarette and vape sales. The company called Bloom’s acts deliberate “and intentionally carried out in bad faith, or with reckless disregard for or with willful blindness to ITG’s rights in the Kool marks, for the purpose of trading on ITG’s reputation and diluting the Kool marks.”
“Here, a fundamental part of ITG’s argument is that the interlocking ‘O’ design is iconic and distinctive enough to be afforded broad protection, and that a mark that incorporates this design on smokable cannabis products could lead consumers to believe that the brands are affiliated or originate from the same source,” Harris-Bricken reports in its Canna Law Blog.
Candy companies, and food companies such as Tapatio have gone after copycat cannabis brands as well. Often lawsuits of this nature have multiple motives at play, with the goal of taking out competitors.
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