CASAA Call to Action: Vaping is a disruptive technology which is currently enjoying it’s golden years. Sometimes referred to as the wild wild west. Although this will (not if) certainly change, today any Tom, Dick, or Jane can launch a web site selling ejuice or hardware with almost no barriers to entry. In many respects this is a good thing since very talented entrepreneurs are able to sell their creations. The other reality is that many Vaping vendors are not properly schooled in “best practices”, “governance”, and “compliance”. Which brings me to the subject of this post which is Trademark infringement. I’m not an attorney and I’m not offering legal advice. I’m trying to point Vaping vendors in the right direction so they comply with US Trademark law. I’ve seen numerous Trademark infringement issues in my 20 years plus of web experience.
Recently, General Mills sent cease and desist letters to companies who have been marketing flavors labled as “cinnamon toast crunch” a cereal brand owned by General Mills which has been a long time favorite for generations. Make no mistake, General Mills is serious and a huge company with numerous attorneys who will hammer an infringing web site into oblivion if they continue to sell ejuice labeled as “cinnamon toast crunch”. They own the Trademark which is referred to as a “mark”. No need to believe me, fortunately you can search the United States Patent and Trademark Office database to either confirm an existing Trademark or insure that your “name” does not infringe. General Mills owns both a word mark and design (image) Trademark. The following screen capture displays the first page of my search. You can see the owner of each Trademark via the respective links:
If you work real hard you can become a double infringer via your use of the name “cinnamon toast crunch” and the image. That’s two counts against you!
Understandably, you might be wondering who would be ignorant enough to continue to infringe on General Mill’s Trademarks after all the publicity their enforcement actions received. Try this Google search for a quick look at current infringers. Here is one of the first articles dealing with this issue and titled General Mills, Girl Scouts Go After Makers Of Liquid Nicotine Over Trademarked Names which contains this text:
“The Girl Scouts are none-too-thrilled about seeing “Thin Mint” being tossed around as a nicotine flavor, especially because of the youngster-friendly image of the Scouts.
“Using the Thin Mint name — which is synonymous with Girl Scouts and everything we do to enrich the lives of girls — to market e-cigarettes to youth is deceitful and shameless,” a rep for the organization told the Tribune.
Tootsie Roll Industries, the makers of Tootsie Rolls are also asking nicotine companies to please stop trying to cash in on its candy brand that has been getting stuck in kids’ teeth for over a century.”
I’ve bolded an important point in the above fair use extraction. Here is PROOF that some members of the Vaping community have no concern for protecting the children. That’s the spin and it works. This infringement and the optics of same plays directly into the hands of our opponents (ANTZ) and gives them a tremendous amount of traction as they continue to hammer Vaping into oblivion. Yes, I understand that when you were a kid you loved the stuff and today it’s a romantic journey back to your youth. I get that. But the opposition spin on these infringements is killing us. When Atomized Labs corrected their Trademaek infringement actions, they decided to name a line of ejuice “Infringment” which was clever. Nicopure Labs, LLC, who manufactures e-cig products under the EVO and Halo brands went looking for Trademark infringers and lowered the boom.
Maybe some vendors think they can outsmart the “mark” holders with clever names like “3 Flaming Musketeers” as an example. While I’m not an attorney you better hire one fast IF Mars, the candy giant who owns the “3 Musketeers” Trademark decides to hammer you into oblivion with a C&D. Your cute little name creates confusion in the marketplace and contains the two words (3 Musketeers) which infringe. Don’t worry, your not alone in your infringement, try this Google search for 3 Musketeers.
I respectfully hope I have conveyed my thoughts with respect to Trademark infringement. I’m feeling a little snarky today so I used a little sarcasm to drive home my points. If you are a Vaping vendor it’s time to take a careful look at your products, services, and even your domain name, to see if you are infringing on an existing “Live” trademark. If you plan on launching a new product or services or wish to verify your current products, services, and even your domain name, a search in the United States Patent and Trademark Office database should be performed. If you find an offending name and or image, please change it. In my non lawyer view you can rename your ejuice to “Have a nice Day” and in the description clearly indicate that this flavor is reminiscent of “3 Musketeers™” which is a registered Trademark of Mars and also insert text which reads: Some ejuice descriptions (not the product names) appearing on this site use names/words which are Trademarks™ or Registered® Trademarks of their respective holders. Use of these ejuice description names on this site does not imply any affiliation with or endorsement by the respective Trademark holder. That’s my back of the napkin advice BUT always seek the advice of your local attorney who specializes in IP law and follow their advice. Finally, with more compliance in our industry, we significantly mitigate the efforts of the ANTZ crowd and some legislators who continue to scream the mantra of “protecting the children”.