Trademark Infringement Dilemma of Luxury 'Bong' Maker

Trademark Infringement Dilemma of Luxury ‘Bong’ Maker (www.entrepreneur.com)

How do you argue those counterfeit water pipes are illegal under trademark law when the original is illegal under federal criminal law?

Much like BMW and Mercedes-Benz have become status symbols among car owners in certain circles, a German pipe company has become the benchmark for cool in the cannabis paraphernalia industry.

RooR, a company based in Frankenthal, Germany, makes upmarket water pipes (commonly referred to as bongs) that command top prices. The brand, which is spelled with the second “R” capitalized and turned around, has become synonymous with high-end marijuana culture.

The company, in a slate of recent lawsuits, accuses cannabis shops in the United States of trying to steal their luxury brand appeal.

The company and its U.S. partner have accused shops in California, Florida and New York of selling counterfeit products under the RooR name. The company alleges that the sales are in violation of Trademark No. 3675839.

“Counterfeiting is a huge problem for us,” Jay Farraj, owner of Sream Inc., told the Associated Press. Sream is RooR’s partner in the U.S. He said the fake RooR items have cost his California business millions of dollars.

Tricky legal area

RooR has filed its lawsuits in federal court. However, marijuana remains illegal under federal law. And that’s just one of the complications of the marijuana market in general and the lawsuits in particular.

The RooR trademark officially calls the company’s product a “bong.” And the company, unlike some other bong makers, is open about its commitment to legal cannabis. The company site directly addresses the company’s goal of creating products that promote refined cannabis culture.

Products that violate federal law cannot seek trademark protection. Alison Malsbury, a Seattle lawyer who works in cannabis trademark issues, told the Associated Press many of the lawsuits could settle out of court as neither RooR nor the sellers are keen on discussing their business in a federal court.

“To go into court and say under oath that what you are doing is a crime, that’s something a lot of people are unwilling to do,” she told the Associated Press.

However, Jamie Sasson, who is representing RooR and Sream in the Florida cases, told the Associated Press the company is willing to go to court to fight against the counterfeit products.

Luxury brand appeal

A look at RooR products quickly shows why less scrupulous sellers might want to tap into the brand’s appeal. On its website, Roor offers a “philosophy” section that speaks to the company’s commitment to using high-level materials and expert craftsmanship to create bongs that stand above the average. “We guarantee first-class smoking delight,” the company promises.

The site features a shop that looks like the Internet version of a plush showroom. They include straight, beaker and ash-catcher types of bongs, as well as papers, vaporizers and wide variety of RooR gear. The company also has partnered with rapper Cypress Hill to create the Phunky Feel Tips glass tips used in smoking cannabis.

They also have limited edition bongs that run from about 250 to 2,200 euros (one euro is currently equal to about $1.07 in U.S. dollars).

“With a pipe created by Roor, you comprehend smoking as culture, not as a mere way of consumption. This is our responsibility, our motivation, and our task,” the site states.