387 F. Supp. 3d 306
S.D. Ill.2019Background
- Plaintiffs (Woodstock Ventures) own federally registered WOODSTOCK marks for entertainment and merchandise and began selling WOODSTOCK‑branded recreational marijuana in late 2016.
- Defendants (associated with Radio Woodstock) hold federal registrations for WOODSTOCK on "smokers' articles" (e.g., electronic cigarettes, vaporizer pipes, rolling papers) filed in 2013 and assert common‑law use for decades.
- Defendants sued and sought a preliminary injunction (filed Aug. 27, 2018) to enjoin Plaintiffs from selling WOODSTOCK‑branded cannabis and vaping devices, alleging trademark infringement and likelihood of consumer confusion.
- The parties presented evidence and testimony at a multi‑day hearing; the court considered Polaroid factors for likelihood of confusion.
- The court found Defendants’ mark conceptually strong but commercially weak, the marks as used create different overall impressions (different fonts/logos/packaging), products differ in nature and channels (Plaintiffs sell cannabis in state dispensaries; Defendants disavow marijuana use), no evidence of actual confusion or bad faith, and federal illegality of marijuana undercuts a claimed natural zone of expansion.
- The court denied the preliminary injunction for failure to show likelihood of success on the merits (likelihood of confusion); the court also noted Defendants’ delay in seeking relief, which undermines irreparable‑harm claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants likely to succeed on trademark infringement (likelihood of confusion) | Plaintiffs: their WOODSTOCK use on cannabis is native and distinguishable (different presentation/logo); no confusion | Defendants: they own registrations for smokers' articles and Plaintiffs' cannabis/vapes overlap, causing confusion | Denied — no likelihood of confusion under Polaroid factors |
| Priority to use WOODSTOCK on smokers' articles | Plaintiffs: they had prior use of WOODSTOCK on smokers' articles since 1994 | Defendants: constructive priority from federal filings (2013) and registrations | Not resolved; court assumed arguendo Defendants’ priority but still found no likelihood of confusion |
| Whether Defendants can claim natural zone of expansion to include cannabis | Plaintiffs: WOODSTOCK cannabis is separate and federally illegal; cannot rely on trademark protection for illegal goods | Defendants: cannabis and related products are a logical expansion of smokers' articles | Rejected — court will not credit expansion into federally unlawful cannabis; prior PTO representations disavowing marijuana use also undercut claim |
| Irreparable harm / timeliness for preliminary injunction | Plaintiffs: delay and lack of evidence of confusion undercut irreparable harm | Defendants: asserted irreparable harm from brand dilution and marketplace overlap | Court found delay (notice in July 2017; motion in Aug. 2018) undermines urgency and irreparable‑harm showing; balance disfavors injunction |
Key Cases Cited
- Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) (preliminary‑injunction standard described)
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (likelihood of confusion suffices to show irreparable harm)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (Polaroid eight‑factor likelihood‑of‑confusion test)
- Juicy Couture, Inc. v. Bella Int'l Ltd., 930 F. Supp. 2d 489 (S.D.N.Y. 2013) (assessing similarity of marks by overall impression and presentation)
- W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567 (2d Cir. 1993) (factors for mark similarity and commercial strength)
- CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626 (9th Cir. 2007) (trademark rights require lawful use in commerce; PTO/TAB policy on illegality)