A New York District Court recently denied a preliminary injunction to stop use of the mark WOODSTOCK in association with cannabis and cannabis-related products, in part because cannabis and cannabis-related products were found not to be in the “zone of expansion” of the movant, despite movant’s federal registrations of WOODSTOCK for smoker articles.

Woodstock Ventures (WV), owner of several WOODSTOCK registrations for entertainment services, sued Woodstock Roots (WR) in 2018 for allegedly infringing WV’s trademark rights in WOODSTOCK by selling marijuana goods. WR, an entity that has also used the name for years and has federal registrations of WOODSTOCK for smoker’s articles, including “Smokeless cigarette vaporizer pipes for use with either tobacco-based e-liquids or e-liquids derived from the mature stalks of industrial hemp exclusive of any resins,” countersued and moved for a preliminary injunction to stop WV from selling cannabis and cannabis-related products with the WOODSTOCK mark.

The Court ruled that WV’s use of WOODSTOCK on recreational marijuana and vaping devices was not likely to infringe the trademark rights of WR. While other factors were also found to favor WV, the Court found in favor of WV in part because 1) there is no proximity of the goods in the market place because as part of the federal trademark application process, WR expressly disavowed that the applied for smoker’s articles, including vaping devices, were intended for use with recreational marijuana, and 2) cannabis and cannabis-related products are not in the “zone of expansion” of WR, again because WR expressly disavowed intended use with respect to recreational marijuana when applying for the federal trademark. The Court emphasized that it “cannot give weight to [WR’s] alleged intent to expand into the area of selling recreational marijuana, because the sale of recreational marijuana is illegal under federal law.”

Interestingly, there was no discussion of WR’s actual use of the WOODSTOCK mark for marijuana and marijuana related goods, despite the fact that WV initiated this suit in federal court against WR because of that actual use. As we’ve noted here before, obtaining and protecting IP rights in cannabis-related products can be tricky. But if you want to do so, we’re here to help.