In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights. Door Dash, Inc. v. Greenerside Holdings, LLC, Opp. No. 91285160 (TTAB 2024). The Board struck the affirmative defense of “trademark bullying” because a cannabis company did not properly plead it. This case is important for those in the industry, and beyond, to consider when making allegations before the Board.
Door Dash is a popular provider of food delivery services and owns several registrations for its DOOR DASH mark. Greenerside Holdings, LLC (“Greenerside”) applied to register its
mark for “Delivery of medical cannabis solely derived from hemp with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis, using car service” with the United States Patent and Trademark Office. Door Dash opposed the application alleging that Greenerside’s mark was likely to cause confusion with its DOOR DASH mark.
Greenerside asserted an affirmative defense of unclean hands because Door Dash had allegedly engaged in “trademark bullying.”
The Board noted that “trademark bullying” is not explicitly or implicitly included in the Lanham Act. Instead, the Act provides for a trademark owner to protect its mark from uses that would infringe its rights and oppose or cancel filings for confusingly similar marks.
It is imperative that a trademark owner enforce its rights. If a trademark owner does not do so, there is a risk that those rights may be weakened or lost entirely. Several marks containing a certain term used or registered for particular goods may make it less likely that consumers identify that term as a source indicator. So, it behooves trademark owners to prevent use and registration of marks confusingly similar to their own marks.
If enforcing rights is necessary, what exactly makes a “trademark bully?”
A leading trademark scholar has defined “trademark bullying” as “conduct by a trademark owner that 1) asserts an “unreasonably inflated view” of the exclusive scope of its mark; 2) is overly aggressive in making demands that are not proportional to the objected to conduct; 3) is a sizeable company with substantial assets 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 found that a trademark owner “seeking[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark” does not rise to the level 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 simply seeking to protect its rights. Both Door Dash and Greenerside provide or intend to provide delivery services. The parties’ marks both include the term DOOR followed by a second term beginning with the letter “d.” Therefore, it is understandable that Door Dash believes that a likelihood of confusion exists between its DOOR DASH mark and Greenerside’s mark.
Because Greenerside did not adequately plead its affirmative defense of unclean hands, it was stricken from its Answer. The Board appears to have implicitly recognized that Door Dash was merely enforcing its rights as provided by the Lanham Act.
The cannabis industry is in its nascent stages. As a result, many entities may not have the financial means of a well-established brand. But that does not mean enforcing trademark rights against cannabis brands establishes a bully. Instead, such enforcement may be exemplary of protecting a valuable brand. That is perhaps why the Board deemed this case precedential. So, cannabis companies should be wary of “blowing smoke” when making allegations before the Board.
