The rise in legalization of marijuana across the United States has brought an array of intellectual property considerations, and Patagonia is the latest to come into the fray. The California-based outdoors brand initiated an opposition proceeding with the U.S. Trademark Trial and Appeals Board (“TTAB”) to block Colorado-based individual Chris Hoover from federally registering the mark, “Ganjagonia.”
For the uninitiated, numerous requirements must be satisfied before a trademark may be registered with the U.S. Patent and Trademark Office (“USPTO”) and thus, receive nationwide protection. Following initial application, the mark is then published in the USPTO’s weekly publication, the Official Gazette, to give others a chance to file an opposition. Any party who believes it may be damaged by registration of the mark then has thirty days to either file an opposition to registration or request to extend opposition time.
Parties looking to oppose an applied-for mark must initiate a proceeding before the TTAB – the body within the U.S. Patent and Trademark Office (“USPTO”) responsible for hearing and deciding certain kinds of trademark cases, including opposition and appeals – and Patagonia has done just that in connection with Hoover’s Ganjagonia application.
Hoover is attempting to register the Ganjagonia mark in class 041, which covers animation production services such as “publishing or printed matter, books and electronic books; entertainment services, namely, providing information and commentary in the fields of authors, books, literary works and recommendations as to the same; providing a web site where users can post ratings, offer reviews and recommendations on literary works, books and printed matter.”
In its Notice of Opposition, Patagonia claims that “[Hoover’s] Ganjagonia mark – which is highly similar to PATAGONIA in that it only changes the first few letters – is intended to be used on services that are identical to ... the services that Patagonia offers under its famous PATAGONIA mark.” Given the “deceptively similar” nature of Hoover’s mark, Patagonia asserts that it will “likely cause the public to believe that [Ganjagonia] or its services have been authorized, sponsored, or licensed by Patagonia.”
Moreover, Patagonia argues that the Ganjagonia mark is likely to “dilute [the] PATAGONIA mark, which became famous long before [Hoover] filed its application or made any use of its Ganjagonia Mark.” According to the company, it has been using its name for over forty years in connection with the design, development and marketing of outdoor apparel and related products, and thus, has become famous around the world for “innovative apparel designs, quality products, and environmental and corporate responsibility.”