Door Dash is a well-known company of food delivery services and is the owner of numerous DOOR DASH trademark licenses. Greenerside Holdings, LLC (” Greenerside” ) applied to register its
With the US Patent and Trademark Office, the company’s” Supply of medical cannabis only derived from cannabis with a delta-9 tetrahydrocannabinol THC attention of not more than 0.3 % on a dry weight base, using car company.” The program was opposed by Door Dash, who claimed Greenerside’s mark might have been confusing with its DOOR DASH mark.
Door Dash had allegedly engaged in” brand bullying,” so Greenerside pressed for an affirmative defense of filthy hands.
The Board made the observation that the Lanham Act does not explicitly or implicitly address” mark bullying” Otherwise, the Act allows a brand owner to resist or withdraw filings for strangely similar marks and protect its tag from employs that would infringe its rights.
It is crucial that a brand user abide by the law. If a trademark owner does n’t comply, there is a chance that those rights may be completely eroded or lost. A number of marks that contain a specific word used or registered for a particular product may make it less possible that consumers will use that name as a resource indicator. Therefore, it is incumbent on brand masters to stop the use and registration of names that are confusingly similar to their own names.
If upholding freedom is required, what precisely makes a” brand bully”?
A renowned expert on trademark bullying defined” trademark bullying” as” the conduct of a trademark owner who 1 ) asserts an “unreasonably inflated view” of the exclusive use of its mark, 2 ) is overly aggressive in making demands that are not proportional to the conduct being conducted, 3 ) is a sizeable company with substantial assets when compared to 4 ) the smaller business owner accused of using a confusingly similar mark. 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11: 92 (5th ed. Westlaw 2023 ) ( citing Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wisc. L. Rev. 625, 642 ( 2011 ).
Greenerside alleged, among other things, that Door Dash engaged in” trademark bullying” because: 1 ) Door Dash previously opposed a” significant number of applications” on “dubious, weak, or exaggerated” grounds, 2 ) Door Dash frequently opposes applications at the Board, and 3 ) Greenerside is a small business that suffers harm through Door Dash’s activities.
The Board has determined that a trademark owner” seeking ] to protect its rights in its registered marks, and precluding ] the registration of what it believes to be a confusingly similar mark” does not fall under the category of unclean hands or” trademark bullying.” Door Dash, Inc. v. Greenerside Holdings at 5 citing Time Warner Entm’t Co. v. Jones, Opp. No. 91112409, 2002 TTAB LEXIS 462, at *2 n. ( TTAB 2002 ).
In this case, Door Dash was merely seeking to defend its freedom. Delivery services are provided or planned by both Door Dash and Greenerside. Both parties ‘ signs include the phrase” Entrance,” followed by a second word that begins with “d.” Hence, it is apparent that Door Dash considers the possibility of confusion between its DOOR DASH and Greenerside’s mark.
Greenerside was stricken from its Answer because it did not adequately defend its racial defence of filthy fingers. The Board appears to have tacitly recognized that Door Dash was only enforcing its rights in accordance with the Lanham Act.
The hemp business is just beginning to grow. As a result, some companies may not have the economical means of a well-established product. However, that does not imply that enforcing brand protections against cannabis brands constitutes a bully. Rather, such protection may be excellent of protecting a valuable product. That is perhaps why the Board deemed this circumstance justiciable. Therefore, cannabis businesses should be cautious when making complaints before the Board.
