With changing laws and the ubiquity of cannabis and vaping product and service providers, leveraging the familiarity of established trademarks has become a common, albeit risky, marketing tactic. New brands often mimic well-known trademarks to capitalize on consumer recognition, but this strategy can lead to significant legal challenges, including claims of trademark dilution.

It is not uncommon for less sophisticated cannabis and vaping startups to adopt branding that closely resembles famous trademarks, aiming to evoke familiarity and trust, and likely a laugh. For instance, companies offering goods and services branded with trademarks such as HERBS R US or VAPE R US attempt to play on the established reputation of the TOYS R US brand. While this approach might offer short-term marketing gains and quick brand recognition, it poses substantial legal risks—including suits claiming trademark dilution—that are anything but funny.

While a claim for trademark infringement requires that the claimant prove a likelihood of consumer confusion (which requires some relation between the respective goods/services offered under the similar mark), trademark dilution occurs when a famous mark’s distinctiveness is weakened through unauthorized use, even without direct competition, product similarity, or consumer confusion. The Trademark Dilution Revision Act of 2006 recognizes two primary forms of dilution:

• Dilution by Blurring, when the unique association of a famous mark is diminished due to its use on dissimilar products; and
• Dilution by Tarnishment, when a famous mark is linked to inferior or unsavory products, potentially harming its reputation.

Imagine I wanted to call my new law firm NIKE.  A certain athletic goods company would quickly be able to stop my use of its mark despite the fact that it has no interest in entering the legal service field and that none of my clients would believe I had anything to do with the famous NIKE brand. My use of the famous brand for my own services might not “tarnish” Nike's reputation, but it would certainly diminish the power of the mark.

In the case of the VAPE R US mark, the owners of the TOYS R US brand felt the use of a name and branding elements similar to its famous mark could be seen as both blurring and tarnishment, especially given the adult nature of vaping products compared to the child-friendly image of the toy retailer, and filed suit this week to protect its rights.

While imitating established trademarks might offer immediate recognition, the long-term legal and reputational risks far outweigh the benefits.