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MLSE wants Snoop to drop 'Leafs' logo like it's hot

Originally published in AdvocateDaily.com

The latest trademark faceoff between the Toronto Maple Leafs and rapper Snoop Dog will be one to watch on both sides of the border, Toronto intellectual property lawyer John Simpson tells AdvocateDaily.com.

CTV News reports that lawyers for Maple Leaf Sports & Entertainment (MLSE) issued a filing elaborating on their concerns about the American rapper's attempt to trademark “Leafs by Snoop” for use in a line of cannabis and related products, claiming that the “unusual spelling of Leafs could lead to confusion.”

MLSE counsel also argue that Snoop’s gold leaf logo is too similar to the hockey team's throwback badge, the article states.

Simpson, principal of IP and new media law boutique Shift Law, explains that the dispute is not about infringement but rather Snoop's entitlement to register a trademark.

“The case that MLSE will have to make is that the average consumer is going to confuse ‘Leafs by Snoop’ with the Toronto Maple Leafs,” he says.

“If you conducted a survey, I don’t think you would find that many people would be confused by the two,” says Simpson, who is not involved in the matter and comments generally. “I think in Canada, MLSE will have a hard time proving that consumers will be confused by the similar names and logos.”

He says he suspects MLSE's motivation is, in part, to protect the goodwill and reputation of its brand.

"They may feel the similarities could potentially tarnish or depreciate the goodwill associated with the hockey team. Despite cannabis being legal in Canada, there's still a stigma associated with it, and I imagine that what's largely behind this opposition. However, that concern is not a ground of opposition," Simpson says.

"The only grounds of opposition are — at least the most relevant one here — would be that consumers are likely to be confused.

He says, south of the border, Snoop may have difficulties registering the mark because of United States Patent and Trademark Office (USTPO) restrictions on illegal goods and services. He says while two of Snoop’s applications have been cleared and are now formally opposed, the USPTO can still object.

“In my experience with trademark applications, the USTPO will do its research and look at your website or wherever else you are advertising your goods or services. When Snoop has to file specimens of use and the USTPO sees that the ‘smoking accessories’ are intended for use with weed — an illegal product at the federal level — there may be issues,” Simpson says.

“It is still open to MLSE to oppose the U.S. applications on the basis that ‘Leafs by Snoop’ should not be federally registrable for ‘smoking accessories’ because they are intended for consuming cannabis,” Simpson adds.

He says Snoop’s U.S. applications are for hemp fabric, clothing and smoking accessories, while the Canadian applications also cover cannabis plants and oils.

“They may be trying to get around the federal restriction against cannabis-related products by seeking protection around the margins through smoking accessories and hemp fabrics,” Simpson notes.

He says ‘Leafs by Snoop’ could also face hurdles in Canada due to regulations under the Cannabis Act that prohibits celebrity endorsements. Some of the products are currently for sale at the Ontario Cannabis Store under the name “LBS.”

Whatever transpires, Simpson says it will be interesting to see if this battle goes into overtime.

“I think MLSE is used to going up against low-profile and less deep-pocketed companies that will cave, so it will be interesting to see how this one plays out.”

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