Snoop Dogg trademark to go up in smoke?
Snoop Dogg's US trademark application for a gold plant leaf with the words 'Leafs by Snoop' has been opposed by the Toronto Maple Leafs, a Canadian professional ice hockey team that competes in the American NHL, on the basis that it is too similar to its existing mark. The rapper's application was filed for goods and services related to the use of marijuana.
The Leaf by Snoop and Toronto Maple Leafs logos both consist of a picture of a leaf with three words written in white letters. Under trademark law, the holder of an earlier trademark registration may oppose a new application on the basis that the sign is similar to their existing mark for similar goods or services, if there is a likelihood of confusion among the public.
For the assessment of likelihood of confusion, the visual, aural and conceptual similarities of the marks and the degree of similarity of the goods and services for which the marks are being registered and/or used are examined. When comparing the signs, the overall impression of the marks are taken into account, with emphases on the distinctive and dominant features of the marks.
Drop it like it’s hot
Snoop will be able to argue a number of points to overcome the opposition:
- It can be argued that the use of a leaf in both signs can be regarded as ‘descriptive’ (in other words, not adequately distinctive), as the marijuana leaf in Snoop’s mark has a direct link with the products that will be sold. The maple leaf in the Toronto Maple Leafs mark relates to the Canadian origin of the ice hockey club - the stylized maple leaf constitutes a dominant element in the Canadian national flag.
- Although both figurative marks contain a leaf with white letters, it can be argued that the visual, aural and conceptual similarity between them is low. For example, the word elements in terms of length and meaning are not similar; the typography and colour of the pixels are dissimilar; and the word elements are pronounced very differently. As trademarks have to be assessed in their totality, the logos therefore have a different overall impression.
- It should also be able to show that the argument of likelihood of confusion between the two marks is not plausible, since the two marks are used for different products and services. Although it is worth noting that the Toronto Maple Leaf logo could argue that it has a greater scope of protection under US law as a ‘trademark with reputation’. When a sign which is identical with or similar to a trademark with a reputation is used in commerce and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the reputed trademark, the holder of the reputed trademark can take legal action against said sign. It is not necessary for the products in question to be similar to each other. Nonetheless, there is a greater burden of proof to be recognised as a ‘trademark with reputation’ under US law. For example, the company must show that there is enough public awareness of the brand (often more than 80%) through market research.
Dennis Wilke works in Novagraaf's Competence Centre in AmsterdamTweet