Celebrities often protect their personal brand by trademarking their name, nickname, and signature phrases. The marketing power of celebrities is undeniable. They are easily recognizable, memorable and popular search terms on the internet and social media.
Intentional and unintentional use of words and images that are distinctive and recognizable for their celebrity association in connection with a business product or service can lead to backlash, especially when the product or service is controversial, or the celebrity feels the association is harmful to his or her reputation. Not only did someone else make money from the celebrity’s popularity, the value of that celebrity’s brand may be diminished.
Leafly is a digital Cannabis Company that sells legal cannabis. One of its branded products known as “Mr. Tusk” was shortened to “Mr. T” on its website. Lawrence Tureaud, known most of his life as “Mr. T,” has been a huge anti-drug sponsor and advocate since the 1980’s. Furious at the connection of his celebrity trademark and nickname with a drug related product, he demanded that Leafly stop infringing on his trademarked name, “Mr. T.” Leafly responded with a public statement saying, “we pity the absurdity of this claim.”
The suit will center on whether consumers would associate the cannabis product with the Mr. T mark and mistakenly assume he endorsed or otherwise was related to the product. Mr. T will undoubtedly argue that his mark is a “famous mark” entitled to broad enforcement. Leafly will argue that no reasonable consumer associates its cannabis product with the Mr. T character.
In a similar case, Tiffany (NJ) Inc. v. eBay Inc. (600 F.3d 93 (2nd Cir. 2010)), the court ruled against Tiffany’s false advertising claims against eBay. Tiffany claimed eBay allowed sellers to list and advertise counterfeit Tiffany jewelry. Also, by listing Tiffany products on eBay’s homepage, Tiffany also argued that it created an impression of endorsement by Tiffany. The court did not agree that the public would make such an association.
Both Mr. T and Leafly arguments have legal merit. What do you think? Would the average consumer mistakenly make such a connection between a cannabis product and the Mr. T character?
Author BioTracy Jong is among the 5% of U.S. attorneys who are also registered patent attorneys. She is an entrepreneur above all, living the issues and challenges of small businesses every day. She owns Tracy Jong Law Firm and Next Best Move, Inc., a venture focused on helping breweries and cideries beyond legal matters. She understands the issues and challenges of technology start-ups as a principal in two promising start-up ventures, OSCR and Zero Valent Nano Metals. Her favorite trademark and branding work focuses on the craft beverage industry, especially incorporating advanced protection strategies such as design patent and trade dress. She provides business strategy consulting, is a regular speaker to industry groups, and has authored a book on New York liquor law for retailers. For more than a decade, she has taught lawyers, professional engineers and architects through her CLE and PDH courses. She has been published in Buffalo Intellectual Property Law Journal and has published articles in several industry publications. Connect with her at: blog, twitter, facebook, linked in, instagram. Visit her website at www.TracyJongLawFirm.com.