TRADEMARK INFRINGEMENT: Consumer confusion between Leafs By Snoop Dogg and Toronto Maple Leafs?

Rapper and entrepreneur Snoop Dogg, a.k.a. Calvin Broadus, could be facing a legal battle over the logo of his marijuana product line. Snoop filed a U.S. trademark application for a gold leaf logo and the word mark “LEAFS BY SNOOP” on November 17, 2015 for cigarette lighters. The logo features a gold, seven-pointed leaf with the words “Leaf By Snoop” in white block letters on it, and is used on the rapper’s branded line of marijuana products.

The application is now being challenged by a Canadian hockey team, the Toronto Maple Leafs, for being confusingly similar to its own logo – a blue maple leaf with white text that says “Toronto Maple Leafs.” The Maple Leafs, whose marks are owned by Maple Leaf Sports & Entertainment, registered their mark in connection with clothing and hockey exhibitions. The Maple Leafs recently requested an extension to oppose Snoop’s trademark application.

Generally, parties who want to challenge a trademark application have two opportunities to do so, either by filing an opposition before the trademark is approved, or by filing a cancellation of an approved mark before it has become incontestable, generally five years after registration.

An opposition is similar to filing a complaint in a lawsuit. For instance, the applicant will be able to respond to the opposition, and the parties may conduct discovery and present expert testimony in support of final briefs on the issues. Ordinarily, parties that oppose a trademark application have one month to oppose a mark after it is published for opposition, but extensions are routinely granted by the examiner’s office.

While there are various grounds on which to oppose a trademark application, the most common grounds for opposition is a likelihood of confusion with another trademark. In other words, would the average consumer confuse goods or services associated with Snoop’s trademark with the Maple LeafsL, or vice versa?

The test, which is the same test used for trademark infringement, involves the weighing of multiple factors; primarily, the similarity of the mark and goods or services provided, but also, the sophistication of the average consumer, the proximity of the trade channels in which the goods or services would be sold or marketed in, the relative fame of the senior mark, the intent etc.

In this case, it seems unlikely that consumers would confuse Snoop’s pot products or cigarette lighters with the Maple Leafs related merchandise or events. While the two marks do feature a leaf with white text on top of it, the similarities seem to end there. For instance, the goods provided are in widely divergent industries, namely marijuana and marijuana-related products as opposed to sports and entertainment. As a result, the consumers would likely be sophisticated, familiar with at least one of the respective brands, and encounter the marks in very specific trade channels. On top of the stylistic differences between the leaf shapes and the clear text, Snoop has claimed the color gold as part of the trademark, whereas the Maple Leaf’s team colors are blue and white.

These are only a few considerations the Maple Leafs will need to consider before filing an opposition to Snoop’s trademark application. It will be interesting to see whether they proceed with the opposition.

KHS represents clients in domestic and international trademark registration and prosecution as well as trademark infringement. To learn more about the firm’s trademark services, contact Shahrokh Sheik.

 

TRADEMARK INFRINGEMENT: Consumer confusion between Leafs By Snoop Dogg and Toronto Maple Leafs?