by Fred Rocafort, Attorney at Harris Bricken

Last month we discussed the recent lawsuits brought by the Wrigley Company against five cannabis businesses it accuses of infringing its trademarks. Cointreau is now following Wrigley’s lead, suing the maker of Quatreau CBD-infused sparkling water.

As we pointed out in our analysis of the Wrigley lawsuits, there is a fine line between legitimate trademark protection and the stymieing of creativity. In the context of the Wrigley cases, getting fake “Skittles” off the street is the very reason trademark rights exist in the first place: Both Wrigley and the consumer suffer if “Skittles” not made by Wrigley are available on the market.

At the same time, it is hard to imagine that many people buy Zkittlez in the mistaken belief they are in fact Skittles. That said, it is likely that at least some people are not able to tell the difference between the two brands, and perhaps trademark law needs to be viewed through the prism of those consumers. That will be up to the courts to decide in the Wrigley litigation.

The Cointreau case appears to be one of the instances where the chances of actual confusion are low. First, it does not appear that the Quatreau branding is trying to emulate Cointreau’s. The last five letters of both names are the same, yes, but would there be a risk of confusion between the words revelation, damnation, introspection, and so on? The relative “foreignness” of the terms may impact perceptions, but do we really want to set a precedent that allows a brand called Locatelli to allege that its competitor Brancatelli’s name is too similar?

Moreover, “eau” means water in French, and Quatreau is from Canada, where French is an official language. This at least suggests a reason for using that particular ending other than ripping off Cointreau (which itself has nothing to do with water, being a family name).

Perhaps it is genuinely concerned about similarities between the names, but it could also be that Cointreau is trying to get a potential competitor out of the way. As the company itself noted, “it is … ‘actively considering’ selling non-alcoholic drinks in the U.S., calling it a ‘logical extension’ of its brand.”

To hold that Quatreau and Cointreau are similar would be to hold the American consumer in low regard, to deem it an unsophisticated creature unable to differentiate between highfalutin foreign words. It is possible that the makers of Cointreau endorse that view, but a U.S. court should not. Cointreau should use its trademarks to keep bottles of poisonous fake booze off the shelves, not to dispense of potential competitors through legal subterfuge.

Re-published with the permission of Harris Bricken and The Canna Law Blog