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New York City sues 'New York Cannabis' designer over trademarks

3 minute read

A general view of the skyline of Manhattan as seen from the One World Trade Center Tower in New York City, New York, U.S., June 15, 2021. REUTERS/Mike Segar

  • Use of city logos, "NYC" lettering allegedly amounts to counterfeiting
  • Designer known for filing lawsuits over "Lower East Side" trademark

(Reuters) - New York City sued a clothing designer on Tuesday, saying his use of the brand name "New York Cannabis" and logos similar to the city's on merchandise including shirts, hats and cannabis pouches infringes the city's trademarks and amounts to counterfeiting.

Robert Lopez – who himself has filed many complaints against clothing companies for allegedly infringing his "Lower East Side" trademark – was accused by the city in Manhattan federal court of making "slavish" copies of its logos for his line of cannabis-related products.

The complaint said Lopez didn't deny the copying, but "instead, citing 20+ years of experience as a non-lawyer managing intellectual property, has frivolously asserted that his liberal borrowing and adulteration of the City's iconic marks" is fair use and parody.

"Blatant counterfeiting is not defensible as a 'fair use' of another person's trademarks or as parody," city attorney Gerald Singleton said in a statement. "Mr. Lopez is simply trading on the City's goodwill and diluting the distinctiveness of the City's iconic trademarks."

Lopez didn't immediately respond to a request for comment.

The complaint said the logos on Lopez's New York Cannabis merchandise, which he sells through his website and retail store in the city, ape the city's logos for Central Park, Prospect Park, and its departments of sanitation, transportation, and parks and recreation.

According to the complaint, Lopez has recently expanded his use of the marks, has started offering trademark-licensing and cannabis-consulting services, and has obtained New York state registrations and applied for federal registrations for the marks, "thereby markedly ratcheting up the threat of irreparable injury and damage to the City."

The complaint also cited an alleged social media post Lopez made last year after receiving a cease-and-desist notice from the city, where he said there was "no other NYC business owner that is in a better position to challenge the city on this issue," based on his enforcement of his "Lower East Side" mark for over a decade.

Lopez has sued clothing companies including Old Navy, Macy's, Forever 21, and several others – over 160 defendants in total, according to the complaint – for allegedly infringing his trademark.

The city also says Lopez "has a history of copying and mimicking well-known trademarks," and currently sells snap-back hats with designs that "closely resemble iconic trademarks" owned by the National Football League, the Los Angeles Lakers, the Olympics and others.

The case is City of New York v. Lopez, U.S. District Court for the Southern District of New York, No. 1:21-cv-07862.

For New York: Georgia Pestana and Gerald Singleton of the City of New York

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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