SACRAMENTO, Calif. – An interpretation of trademark law might decide whether a California bong maker's claim that others are making phony and cheap versions of his product keeps rolling or goes up in smoke.
Sream Inc., a Corona-based company and the sole U.S. licensee of high-end RooR glass water pipes, has filed nearly 200 complaints in federal courts alleging that small businesses in Florida, New York, and California are selling fake RooR products at a fraction of the cost.
Although several cases have ended in a settlement, some trademark attorneys are curious to see how the drug-related nature of the product will affect Sream’s case. Paraphernalia is illegal under federal law, and products that break the law can’t be patented or trademarked, making it possible for defense teams to attack the validity of RooR’s trademark.
Alison Malsbury, a Seattle intellectual property attorney who works with cannabis and food and alcohol companies, told the Record that the question of the trademark’s validity is the most interesting aspect of the case. She works for the Harris Bricken law firm, which has offices in Northern California.
“Under federal trademark law, an applicant must make legal use of their mark in commerce,” she said. “I think there is an argument to be made that Sream could not trademark RooR for use on the water pipes at issue in this case since those pipes could be considered illegal paraphernalia, but this will be a fact-intensive inquiry.”
As marijuana use, both medicinal or recreational, is being legalized in more and more states, including California, obtaining state trademarks used with cannabis-related products could be possible, Malsbury said.
“This will open up the possibility of state trademark lawsuits in California, even where companies have been unable to obtain federal trademark protection,” she said.
The marijuana industry is growing fast and showing itself to be a money-maker, Alex Brown and Mark Johnson of The Concept Law Group in Fort Lauderdale, told the Florida Record. Their firm represents several of the accused business n Florda.
Martin Birzle, an award-winning designer in Germany, is the originator of the RooR bong. He makes “ornate and innovative” products, including glass water pipes, parts, and accessories, that sell for hundreds of dollars. Court documents tout RooR as a leading company in the industry that’s gained wide recognition and acclaim in the last two decades.
“For nearly two decades, RooR distinguished itself as the premiere manufacturer of glass water pipes because of RooR’s unwavering use of quality materials and focus on scientific principles to facilitate a superior smoking experience,” court documents filed by Sream claim. “RooR’s painstaking attention to detail is evident in many facets of authentic RooR products. It is precisely because of the unyielding quest for quality and unsurpassed innovation that RooR products have a significant following and appreciation amongst consumers in the United States.”
Birzle made Sream the sole licensee of the “RooR Mark” in the United States in 2013. Since then, the company has used civil actions to enforce its trademark, though the rate of filing has increased in the last year, according to the Associated Press. On Jan. 26, a Costa Mesa law firm filed a complaint on behalf of Sream against Smoker’s Gift Shop, a retail smoke shop in Tracy, and 10 unidentified people the company says are connected to the allegations outlined in the claim, which include federal trademark infringement, counterfeiting, false designation of origin and unfair competition. The case is pending in the U.S. District Court of the Eastern District of California.
Court documents show that Sream hired an investigator to visit Smoker’s Gift Shop and purchase a RooR bong for $65. Analysis of the bong showed it was not a true RooR product, court documents allege.
Sream claims that because consumers and industry professionals recognize RooR products as superior to others, they’re willing to pay higher prices for them. The complaint cites the example of a RooR 45-centimeter water pipe, which is sold for $300 or more at retail, compared with other products of a similar size that go for less than $100. The complaint alleges that this name recognition also makes RooR products attractive to counterfeiters
“These unscrupulous people and entities tarnish the RooR brand by unlawfully affixing the RooR (trade)marks to substantially inferior products, leading to significant illegitimate profits,” the complaint says. “In essence, defendants, and each of them, mislead consumers to pay premium prices for low-grade products which free rides on the RooR brand and, in turn, defendants reap substantial ill-gotten profits.”
The Concept Law attorneys said each of the claims they’ve seen have been formulaic, without “much specifics in regards to the claims.” In Florida, as well as in some courts in California and New York, the Ticktin Law Group leads Sream’s crusade, Johnson and Brown said. Ticktin gained a reputation when it handled defenses of borrowers in foreclosure cases.
“We’re going to take each case like we take every case," Brown said. "When we take on a case, we vigorously represent our clients."
Brown said that pushing out massive numbers of pleadings in an intellectual property case differs greatly from foreclosure cases. Each case will be looked at individually, he said, and it’s too early to tell whether the product’s drug connection will really be a driving factor in the case. The firm's first move in a lawsuit brought against Collins Tobacco Inc. was to file a motion to dismiss the case, alleging that Sream doesn’t have standing to bring the action in the first place.
But they’re also prepared to attack the trademark itself. After all, it will be difficult for the plaintiff to shake the general knowledge that glass water pipes are connected to drug use, since RooR’s many accolades include awards from the High Times Cannabis Cup, a well-known trade show.
“It’s a bong – call it what it is,” Johnson said. “That may be an issue in the case. It may drive some of the case. It may not control the case.”