An interesting trademark infringement case was recently filed in Manhattan Federal Court. The case was filed by the publisher of Wine Spectator magazine, M. Shanken Communications against the California-based Weed Spectator, owned by Modern Wellness Inc.
Wine Spectator claims that Weed Spectator has infringed its trademarks by copying the name of the magazine, using the same font on their logo, and by copying Wine Spectator's recognizable 100-point rating scale. Wine Spectator also claims that Weed Spectator created a similar website and social media pages, and uses such similar branding that results in searches for Weed Spectator return with Wine Spectator. Thus, Wine Spectator alleges that this similarity in branding will result in likelihood of confusion for Wine Spectator's three million readers and dilutes Wine Spectator's brand.
Wine Spectator is seeking an injunction against Modern Wellness Inc. from using the Weed Spectator mark as well as triple damages for dilution.
My initial reaction is that Wine Spectator will prevail for the following reasons:
The distinctive word in both Wine Spectator and Weed Spectator is "Spectator". The word "Spectator" is what creates the commercial impression among consumers. Wine and Weed are descriptive terms for the goods and likely do not obviate confusion.
In 2011 a trademark was filed for "Tequila Spectator" in the same class as Wine Spectator (and Weed Spectator) as a publication. The Tequila Spectator mark was denied trademark registration due to likelihood of confusion with, you guessed it, Wine Spectator. Now the argument could be made that while wine and tequila are both alcoholic beverages, weed is not and therefore the subject matters are different. This argument may gain some traction; however, I am not convinced because the conditions surrounding their marketing are likely such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source, i.e. they both fall under the "Spectator" brand.
Should the argument prevail that "Weed Spectator" is likely to cause confusion among consumers with "Wine Spectator", Wine Spectator will also likely be able to prevail in their dilution claim. Given that weed is an illegal substance federally and in many states, there is a valid argument that the association of Wine Spectator with such an illegal substance/activity dilutes Wine Spectator's brand.
Finally, the use of the same font in the logo, the same 100-point scale, and a similar marketing campaign also seem problematic to me. The United States Patent and Trade Office nor the courts exist in a vacuum and are well aware when a company is attempting to use the success of another to its advantage. Now, whether this amounts to infringement remains to be seen.
I look forward to reading the arguments the attorneys present and will continue to follow this case and provide updates. Regardless of the outcome, one thing to note is that this case underlines the importance of consulting a trademark attorney when creating and protecting your brand. A trademark attorney will conduct in-depth searches for you and will put you on notice as to whether there may be similar marks already in use. Furthermore, a trademark attorney will be able to alert you to any potential conflicts, your likelihood of success, and potential consequences should you wish to pursue filing a complicated mark.
Should you have any trademark questions, please feel free to contact O'Neill Tran Law today.