Leafs in dispute with Snoop Dogg over cannabis trademark

Snoop Dogg’s logo could be counter to Cannabis Act marketing rules, says David Lipkus, a partner at Kestenberg Siegal Lipkus LLP and trademark agent.

The Toronto Maple Leafs have opposed a trademark owned by celebrity Snoop Dogg’s cannabis brand, but apart from its alleged similarity to the team’s logo, the brand, on its own, may also fail to be compliant with Canada’s regulations governing the marketing of cannabis products, say IP lawyers.

The Cannabis Act prohibits marketing that appeals to minors or has a direct or indirect endorsement or testimonial.

“That, to me, is celebrity endorsement,” says Lipkus. “I don't know how that that issue will be overcome by the applicant.”

Neil Milton of Milton IP in Ottawa says there has been a “crazy flood” of people registering cannabis marks, but these marks have little value given the regulations, which prevent companies from displaying them nearly anywhere.

“Our current cannabis legislation essentially shuts down your ability to use these trademarks. You can’t market and advertise with it,” he says. “So, are you going to spend hundreds of thousands of dollars on a brand that you can’t even really use? You can’t put it on a billboard. You can’t advertise it. You can’t sponsor a film festival. All you can do is put it in four-point font on a package that’s behind a counter.”

Filed to the Canadian Intellectual Property Office in June 2016 by Calvin Broadus (known as Snoop Dogg) using Bennett Jones LLP as an agent, the logo in question is a seven-pointed, neon-green marijuana leaf with capitalized white text reading “LEAFS BY SNOOP” within. Following the approval of a trademark, it is advertised in the trademarks journal and the public is given 60 days to oppose the application. Maple Leaf Sports Entertainment sought an extension of time to consider filing an opposition and filed its opposition in September 2018.

Lorne Lipkus, a founding partner at Kestenberg Siegal Lipkus LLP, says that if LEAFS BY SNOOP gets past the cannabis advertising regulations, the trademark issue will rest on whether the logo is “confusingly similar” to the Toronto Maple Leafs logo to a “casual consumer.”

“The test involves whether a casual consumer — somewhat in a hurry — is going to look at that and associate the source of the product to someone that has a registered trademark, in this case being the Toronto Maple Leafs,” he says.

“It’s a very low threshold,” he says.

“Is it likely to cause confusion in the mind of the average consumer? Interesting question, here, is whether the average consumer is sober or stoned,” says Milton.

This dispute is the first of many involving trademarks where a company will take issue with their brand resembling that of a cannabis product, which they believe will give the consumer a negative reaction because of the association with a formerly illegal drug, he says.

MLSE is arguing that its grammatically incorrect spelling of "Leafs" is unique, as well as the fact that the word appears against a leaf-shaped background. David Lipkus says the combination of the spelling and position of text on a similar background is the “key issue” to whether consumers can be expected to wrongly assume the Toronto Maple Leafs are somehow associated with this cannabis product.

Snoop Dogg also registered another mark — the word mark “LEAFS BY SNOOP” — which MLSE is also opposing. Another identical word mark, registered in October 2016, was made by Craig Lewis of Sainte-Anne-de-Bellevue, Que. and was voluntarily abandoned.

The marks were filed at different times. On the logo, Snoop Dogg has until October to file a counter statement, and on the word mark, he has already done so. For the latter, MLSE has until April 14 to file evidence. David Lipkus says the “real battle” over this trademark dispute will begin once both parties have filed their claims and will see the evidence on which the other is relying.

David Lipkus predicts either the dispute results in a resolution between parties or Snoop Dogg and his brand will abandon the trademark. If the fight goes the distance, the entire opposition proceeding could take up to three years to complete and then it can be appealed to the Federal Court and then the Federal Court of Appeal if the parties remain unsatisfied.

“This can be a very, very lengthy, expensive battle between the parties,” he says.

Generally, trademarks are supposed to be associated with the product a person or company sells, which in the case of a hockey team, is tickets to hockey games, says Milton. But over the last few decades, sports teams have made an effort to get into the business of selling paraphernalia and have “bulked up” their trademark registrations, he says.

This puts Snoop Dogg in a tough position. Milton says that LEAFS BY SNOOP will be up against a highly motivated, deep-pocketed adversary, and given what it will cost and how long it will take to fight the battle, Snoop Dogg will likely abandon the mark.

“Often in these things, what really matters is tenacity,” Milton says. “The Leafs really only have one product, it’s their trademark,” Milton says.

“If someone’s going to drop $100 on a jersey that can be made for $2, the difference is trademarks. So it’s worth an absolute fortune to them.”