A federal judge on Tuesday ruled that apparel brand NYC New York Cannabis cannot use cannabis-themed versions of famous New York City logos, Law360 reports. Robert Lopez, the owner of the brand, had modified several of the city’s logos, such as replacing the broadleaf on the Department of Parks and Recreation logo with a cannabis leaf.
U.S. District Judge J. Paul Oetken granted the city a preliminary injunction finding that New York City would be “likely to succeed on the merits of its claims” because it proved “that it owns the city trademarks by proffering certificates of registration for the several marks which defendant allegedly copied.” He added that the trademarks are “incontestable” and have “distinctiveness and secondary meaning” and that the alleged copying “gives rise to a presumption of a likelihood of confusion.”
“Defendant’s NYC New York Cannabis marks are virtually identical to, or are substantially indistinguishable from, the city’s registered marks.” — Oetken, City of New York v. Lopez, via Law360
Lopez runs a retail store in Lower Manhattan, two online stores, and sells through social media accounts. According to the complaint outlined by Law360, he also modified the New York City Sanitation Department logo to read “Department of Cultivation” and a Department of Transportation logo that was altered to “New York Cannabis.”
Oetken added that while the city doesn’t currently sell cannabis-themed products, it could “bridge the gap” in the future as agencies get involved in cannabis regulation. The injunction was necessary, according to Oetken, because without it the city would suffer irreparable injury, the decision will serve the public interest, and there is an interest in preventing consumer confusion and protecting federally-registered trademarks.
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