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Snoop Dogg, Maple Leafs could face off over mark registration

Originally published in AdvocateDaily.com

Toronto intellectual property lawyer John Simpson says a trademark registered by rapper and cannabis enthusiast Snoop Dogg could face opposition from the Toronto Maple Leafs.

The Globe and Mail reports Calvin Broadus (aka Snoop Dogg) filed a trademark application for "Leafs by Snoop" with the U.S. Patent and Trademark Office late last year.

“According to the application, the trademark — which is featured on Snoop Dogg’s marijuana product line sold in Colorado — includes the words Leafs by Snoop ‘presented on three lines and superimposed over a golden leaf design,’” the article states.

Last month, NHL Enterprises was granted a 90-day extension of time on behalf of Maple Leaf Sports and Entertainment Ltd. (MLSE) to investigate Snoop Dogg’s trademark registration.

Simpson, principal of Shift Law, says this move by the NHL and MLSE is a purely administrative procedure.

"In the United States and Canada, there is an opportunity in the course of every trademark application for anyone to oppose the application on the basis that the mark is confusingly similar with an existing mark,” he tells AdvocateDaily.com. “There are other grounds for opposition but basically this is an administrative process. Before you get your trademark registration, it has to pass through this opposition process.”

He explains that during this process, trademark owners — particularly owners of large trademark portfolios like MLSE — will be advised by their counsel of pending applications to register confusingly similar trademarks.

Simpson says besides both logos featuring a leaf and the word “Leafs,” there is a potential overlap in services between both companies.

“They're both, in very different ways, in the entertainment business,” he says. “MLSE could object to this trademark as they're both in the entertainment industry. There is a lot of long-standing goodwill associated with the Toronto Maple Leafs iconic logo — it's not just some design they started using three months ago."

He says trademark confusion might be difficult to prove as the average consumer probably won’t confuse branded cannabis with a professional hockey team.

"Unless someone smokes way too much pot, confusion isn’t likely,” Simpson says. “A more likely argument is that the mark tarnishes or dilutes the goodwill of the existing mark. The customer knows they're not buying pot from the Toronto Maple Leafs but the similar mark tends to undermine the distinctiveness and value of the existing mark.

“That being said, tarnishment is a very amorphous concept in trademark law,” he says.

Simpson notes tarnishment refers to bringing a brand into disrepute, while dilution refers to losing some of the distinctiveness.

“In the case of Leafs by Snoop, there might be an argument for tarnishment,” he says. "Kids who grew up dreaming of playing for the Toronto Maple Leafs — and the wholesome attributes that come with that brand — all of sudden, there's something in the back of their mind that a similar brand is used to sell pot-related material and other accessories.”

“It will be interesting to see what evidence would be filed in a case like this,” he adds

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