Rapper and entrepreneur Snoop Dogg is facing a trademark showdown with a Canadian ice hockey team over the logo of his LEAFS BY SNOOP marijuana product line. In August, Maple Leaf Sports & Entertainment (“MLSE”), which owns the Toronto Maple Leafs, requested an “extension for time to oppose” a number of trademark applications in connection with Snoop’s mark, and has subsequently followed up by filing a formal trademark opposition with the Alexandria, Virginia-based Trademark Trial and Appeal Board (“TTAB”) – a body within the U.S. Patent and Trademark Office (“USPTO”) responsible for hearing and deciding certain kinds of trademark cases, including oppositions.
Not exactly a lawsuit, the matter between the Toronto Maple Leafs’ owner and the famed West Coast rapper - who recently got the Vetements treatment - is being handled with the TTAB. For the uninitiated: Before a trademark may be registered with the USPTO (and enforced by a trademark holder on a nationwide basis as a federally registered mark, as opposed to on a state-by-state basis for common law marks), a number of requirements must be satisfied.
For instance, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. After the mark is published, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process.
According to MLSE’s Notice of Opposition, which asks the TTAB to refuse registration for pending trademark applications for LEAFS BY SNOOP, “Nearly 90 years ago, the Maple Leafs adopted as one of their key brand names the trademark LEAFS. They have used their LEAFS mark in U.S. commerce since 1927. The LEAFS mark reflects a highly unusual and distinctive spelling, since the plural of the English language work ‘leaf’ is usually presented as ‘leaves.'” The opposition states that the rapper’s “use of the LEAFS BY SNOOP plus design mark first began 90 years after the Maple Leafs' first use of their LEAFS marks.”
MLSE continues to note: Snoop’s “proposed LEAFS BY SNOOP mark is confusingly similar to the Maple Leafs' LEAFS marks. [Snoop] has appropriated the entirety of the LEAFS marks in his LEAFS BY SNOOP mark ... such similarity is exacerbated by the design elements of the LEAFS BY SNOOP mark. The applicant's design mark uses a white font enclosed within a wide-shaped leaf with three large segments at the top of the mark, a design echoing and highly similar to the Maple Leafs' marks.”
According to a joint statement from the NHL/MLSE/Snoop’s representatives: “We have been actively discussing a possible resolution of this matter, and those discussions are ongoing. Facing a non-extendable deadline to file a trademark opposition, the Maple Leafs made this submission in order to maintain the status quo. The parties have requested a suspension of the opposition proceeding to allow their discussions to continue. They have no further comments on this matter at this time.”