Cannabis companies, for some reason, seem to love clever names predicated on well-known brands. (See e.g. Zkittlez and Skittles or Bloom and Cool). More often than not, these companies end up in trouble. (See Major Food and Beverage Companies Call Out Marijuana Copycats). Although these companies may try a parody defense, it’s not so easy. On the heels of a Supreme Court argument in case involving the parody defense, TOYS R US has filed a federal lawsuit against an unlicensed Brooklyn, New York cannabis retailer ZAZA R US in the Eastern District of New York.
Unbeknownst to me, the term “ZAZA” apparently is a colloquial term that refers to high-grade strains of cannabis. (I guess “weed” and “grass” is outdated). TOYS R US alleges that ZAZA R US operates at least two brick-and-mortar stores with at least one store displaying the allegedly infringing signage seen above. TOYS R US claims this is a blatant and obvious bad-faith effort to trade on the goodwill and fame of TOYS R US.
TOYS R US pleads the usual assortment of claims for trademark dilution, trademark infringement, false designation of origin, and unfair competition under the federal Lanham Act, 15 U.S.C. § 1051 et seq., and New York state law. TOYS R US also seeks permanent injunctive relief to stop ZAZA R US from using TOYS R US’ intellectual property, as well as a significant award of damages that includes disgorgement by ZAZA R US of any profits, actual damages to Toys R US, a royalty payment by ZAZA R US, attorneys’ fees, and costs of suit.
I suspect that whatever fun ZAZA R US was having with its branding is over in the face of an army of serious intellectual property lawyers. We will let you know what happens!
For more on cannabis and intellectual property, see:
- Edible Arrangements v. Green Thumb Industries: Voluntary Dismissal, For Now
- Cannabis Trademark Litigation: Wrigley Wins
- Trademark Infringement Litigation Case Study: Uncle Bud’s
- Trademark Litigation: Happi Hour is Over
- Free Speech and Cannabis Brands
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