In another reminder of the difficulties facing cannabis companies, the Ninth Circuit ruled that The Herbal Chef LLC could not protect its IP against competitors.
The case is The Herbal Chef, LLC v. AFG Distribution, Inc.
The Herbal Chef LLC is a California LLC (Herbal Chef) that offers catering, educational, and advocacy services involving cooking with infused cannabis.
Herbal Chef sought to protect its brand by filing a trademark application with the U.S. Patent and Trademark office (USPTO) for “The Herbal Chef.”
The USPTO rejected Herbal Chef’s application on the grounds that The Herbal Chef was …”descriptive of a chef who cooks with infused marijuana.” Since marijuana is a Schedule I drug under the Controlled Substances Act granting Herbal Chef’s application would be improper using the USPTO’s logic.
AFG Distribution Inc. (AFG) is a North Carolina corporation that offers baking and cooking products …”including herb and cannabis infusers.”
Unlike Herbal Chef, AFG was successful in obtaining a trademark for “Herbal Chef” for its products.
Herbal Chef filed a lawsuit in Federal district court against AFG for, among other things, federal and state unfair competition and trademark infringement claims. The claim was based on AFG’s cookware called “Herbal Chef”
The court granted a summary judgement in favor of AFG. Herbal Chef appealed the decision to the Ninth Circuit.
The Ninth Circuit ruled in favor of AFG. The Ninth Circuit reasoned that:
- The Herbal Chef is at most a descriptive term (as opposed to suggestive of Herbal Chef’s business),
- Courts can rely on USPTO’s findings whether a mark deserves protection, and
- AFG’s trademark “Herbal Chef” does not impact the distinctiveness of “The Herbal Chef” mark
At a minimum, the court’s reasoning is confusing. At its worst, it goes against all common sense given the similarity of the two marks and the likelihood of confusion for consumers.
In my opinion, this is another example of courts punishing cannabis companies who make any mistake in their IP strategy because courts can always fall back on the illegality of cannabis under Federal law as an explanation.
Cannabis companies should seek out competent IP counsel early on to avoid this situation. Timing is very important because waiting to try and get trademark protection once time and money have been spent on a weak mark could be as it was in this case disastrous.