Ads, Pot Promotion Not Enough To Bogart ‘High Times' Trademark Registration

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar

Jan. 14 — The operator of High Time Station, a state-licensed cannabis dispensary, could not obtain cancellation of the U.S. trademark registration held by the publisher of “High Times” magazine, the U.S. District Court for the Eastern District of Washington ruled Jan. 12.

Granting the magazine's motion to dismiss a cancellation counterclaim, the court said that the mere advertisement or promotion of substances banned by the Controlled Substances Act was not a basis for cancelling its trademark registration.

Grass Roots Counterculture Thought Leader

The periodical High Times was launched in 1974 to promote the legalization of marijuana use.

Over the 40 years of its publication, it has published contributions from notable authors, including Charles Bukowski, William Burroughs, Truman Capote, Hunter S. Thompson and Andy Warhol.

Since 1987, High Times has sponsored an annual event in Amsterdam under the name “Cannabis Cup,” and since 2010, it has hosted events under the names “Medical Cannabis Cup,” “U.S. Cannabis Cup” and “High Times Cannabis Cup” in the U.S.

Many celebrities have been featured on the magazine's cover.

Its publisher has used the terms “High Times” and “Cannabis Cup” and related trademarks on a variety of branded goods, such as apparel, posters and smoking accessories.

Trans-High Corp. d/b/a High Times of New York holds 10 U.S. trademark registrations covering the term “High Times” and has registered several domain names incorporating the character strings “hightimes” and “cannabiscup.”

Trans-High sued Richard Reimers, who operates a state-licensed marijuana dispensary in Ephrata, Wash., under the name “High Time Station.”

Trans-High alleged trademark infringement under the Lanham Trademark Act of 1946, 15 U.S.C. §1114(1), unfair competition under Section 43(a) of the Trademark Act, 15 U.S.C. §1125(a), as well as violations of the Washington State Consumer Protection Act, Wash. Rev. Code §19.86.020, and trademark infringement and unfair competition under Washington state common law.

Counterclaim Dismissed 

Reimers counterclaimed, seeking cancellation of Trans-High's earliest trademark registration on the name of the magazine, which was issued in 1995.

Reimers argued that the registration should be cancelled because Trans-High had used the trademark on illegal goods not listed in the registrations.

Specifically, Reimers pointed to advertisements published in High Times magazines taken out by third parties to promote the sale of controlled substances in violation of the Controlled Substances Act.

Trans-High moved for dismissal of the counterclaim for failure to state a claim for which the law offers a remedy.

The court agreed with Trans-High's argument that the Controlled Substances Act does not apply to mere advertisement of marijuana and marijuana paraphernalia.

“Specifically, a registration may be vulnerable to cancellation if the goods and services for which the registration has been issued, are proven to be unlawful,” the court said.

The Controlled Substances Act, 21 U.S.C. §843(c)(1), expressly permits “mere advertisement or ‘promotion' of controlled substances and drug paraphernalia,” the court said.

Judge Lonny R. Suko thus granted Trans-High's motion to dismiss.

Trans-High was represented by Cowan Liebowitz & Latman P.C., New York. Reimers was represented by Feltman Gebhardt Greer & Zeimantz P.S., Spokane, Wash.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://www.bloomberglaw.com/public/document/TRANSHIGH_CORP_INC_Plaintiff_vs_RICHARD_REIMERS_et_al_Defendants_.