Coffee By Design is suing a Utah company that infuses its coffee with CBD, arguing that its branding imitates the Portland-based roaster.
Beyond aping Coffee By Design’s name and logo, CBD Coffee of Utah is creating confusion in the marketplace by associating the Portland company with cannabis products, the plaintiffs say in a trademark infringement lawsuit filed Tuesday in federal court in Maine.
Experts say the case raises questions about the feasibility of protecting intellectual property when a phrase similar to an existing trademark becomes popular parlance.
Short for cannabidiol, CBD is a hemp-based compound used for its calming properties. Its growing popularity, including in CBD-infused coffees, has concerned the Portland-based business, causing confusion among consumers.
Now, Coffee By Design is taking action to protect its brand. Co-owner Mary Allen Lindemann said her business had sent warning letters to roughly half a dozen companies that describe their hemp-infused products as “CBD coffee,” a phrase that she says is protected by a federally registered trademark.
“All that we ask is that they say ‘CBD extract,’ ” Lindemann said: “A bit further clarification, so that consumers know that they’re buying coffee that has cannabis in it and not Coffee By Design.”
Founded 25 years ago, Coffee By Design has long been known as “CBD” in Greater Portland. As early as 1998, when the roaster opened a location on India Street, it sold T-shirts that read just “CBD.” Two years ago, the company rolled out a new branding scheme that includes a logo made of the letters “CBD.”
Part of the trademark infringement lawsuit hinges on the apparent similarity between the Utah company’s logo – a single C wrapped around a cup of coffee – and the Coffee By Design mark.
Coffee By Design’s attorneys at the law firm Bernstein Shur declined to comment.
Details about the Utah business remain unclear.
Websites selling CBD Coffee products appeared to have been taken down on Thursday. Coffee By Design’s lawsuit names two holding companies doing business as “CBD Coffee,” but the registered agents for those corporations could not be reached to respond to the lawsuit.
The legal complaint also features screengrabs of CBD Coffee’s marketing materials, which claim that the company is the brainchild of a Texas-based doctor who won funding for a range of cannabidiol products on a “secret episode” of the TV show “Shark Tank.”
A business listing for one of the holding companies, Desert Lake Group LLC, includes a phone number for a call center that takes product orders. A representative there declined to comment or to forward a request for comment to a supervisor.
This Maine company’s coffee bags. Image from Coffee By Design’s court complaint
More broadly, the rise of cannabidiol poses a problem for Coffee By Design, which now sells its products as far afield as Japan.
Customers occasionally come to the Portland store, look at a bag of Coffee By Design beans, and ask for the version “without CBD in it,” Lindemann said. On other occasions, they find products labeled “CBD coffee” at other businesses and wonder if Coffee By Design’s prices have gone up.
Lindemann added that she had “nothing against” cannabis-infused products; the main goal of the trademark push is to reduce consumer confusion. Coffee By Design has no immediate plans to sell cannabidiol, she said.
Yet experts say that nixing the phrase “CBD coffee” to describe hemp-infused drinks may prove a near-futile effort.
“Basically what’s happening is that the use of the term ‘CBD’ is their problem,” Ann Bartow, a professor at the University of New Hampshire School of Law, said on Thursday. “And you can’t change that. You can’t hold back society. Built into copyright law is (the idea that) you’re allowed to call your product what consumers know it by.”
The coffee bag from the Utah company. Image from Coffee By Design’s court complaint
Bartow pointed out that the Williamstown Theater Festival, on the campus of Williams College, was known by the initials “W.T.F.” long before that acronym came to have a very different meaning in popular usage. Rather than try to change public parlance, the festival rolled with it – today, it still calls itself WTF, but acknowledges the connection with the occasional joke on social media.
“I can feel some empathy for Coffee By Design in this,” Bartow said. “It’s sad when things change.” But trademark law is designed to allow for changes in popular usage, she said.
“Let’s see,” Lindemann said in a separate interview. “So far we’ve been successful in how our industry has supported our claim.”
Some local businesses already have agreed to stop calling their cannabis-infused coffee “CBD coffee,” she said, “because it is misleading to the consumer.”
Correction: This story was updated at 3:45 p.m. Friday, May 31, 2019, to correct the spelling of Ann Bartow’s name.
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