M. Shanken Communications, publisher of Wine Spectator — a popular magazine, website and mobile application that offers wine ratings on a 100-point scale — has filed a lawsuit against California-based Modern Wellness, Inc., based on that company’s use of “Weed Spectator” for ratings of cannabis. The federal complaint, filed in New York, alleges claims including trademark infringement, unfair competition, and dilution. The case is M. Shanken Communications, Inc. v. Modern Wellness, Inc. et al., Case No. 18-cv-08050 (S.D.N.Y.).
M. Shanken alleges that the website and social media pages offered by Modern Wellness use the terms “Weed Spectator” and “WS” for cannabis rating publications, which are confusingly similar to M. Shanken’s use of “Wine Spectator” and “WS” marks for its wine rating publications. For example, Modern Wellness also offers a similar 100-point rating scale for cannabis, and the parties’ marks allegedly contain similar font and style. Furthermore, M. Shanken cites to several Modern Wellness pages that associate cannabis with wine.
M. Shanken’s claims will require establishing a likelihood of confusion (except for the dilution claims) based on the Second Circuit’s eight Polaroid factors. Among those factors, two of the most significant are the similarity of the marks and the relatedness (or “competitive proximity”) of the parties’ services. Although there are some similarities of the marks, M. Shanken may have some difficulty establishing likelihood of confusion based on a lack of relatedness between cannabis rating and wine rating.
However, M. Shanken also brought a dilution claim, which does not require a showing that the services are related or competitively proximate. Therefore, M. Shanken may prevail on that claim, if it can prove the use of “Weed Spectator” is likely to cause dilution by blurring or tarnishment. M. Shanken alleged that its marks are tarnished by Weed Spectator because of the association with an illegal drug (under federal law and most states). Nevertheless, the federal dilution claim also requires a showing that M. Shanken’s marks are “famous,” which is a high bar to establish.
What do you think? Would you be confused as to the source of the Weed Spectator mark, or believe there was some affiliation or connection between the parties? Even if not, do you think that M. Shanken’s marks are tarnished or blurred by Weed Spectator? Stay tuned for updates.