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Breidenthal faces pot trademark dispute

A marijuana company based in Colorado has warned former Jackson County Commissioner Doug Breidenthal that his cannabis business name may be infringing on its trademark rights.

Lauren T. Emr, a New York lawyer who represents American Cannabis Company Inc., said Breidenthal is using the identical name for his Medford store.

In a letter she sent to Breidenthal Feb. 22, Emr stated, "Accordingly, ACC demands that you immediately cease use of the American Cannabis Company trademark on your dispensary, or related products."

In February, Breidenthal attempted to open his marijuana store, known as American Cannabis Company, but got embroiled in a lawsuit filed by investors.

Emr, who specializes in trademark and patent law, said in a phone interview that her company has been watching to see if Breidenthal opens the store under the same name. If he does, she said the company she represents could pursue legal action to protect its trademark rights.

Her company is not involved in the sale of marijuana products, she said, but helps companies acquire licenses to operate in states as well as preparing business plans and other documents to run a successful operation.

American Cannabis Company Inc. is established in a number of states where marijuana has been legalized, as well as in Canada.

A publicly traded company, with a share price of 60 cents as of Friday, American Cannabis has been hurt by negative publicity over Breidenthal's company, Emr said. She said people researching the company find news stories about the Medford store.

Emr said her company has a "defacto trademark" that has gotten tied up with federal issues, including the disparity between states' legalization and the U.S. government continuing to list marijuana as a Schedule 1 drug.

Breidenthal's attorney, John Howry of Medford, said he received a copy of the letter from Emr but didn't respond because the U.S Patent and Trademark Office doesn't show any trademark attached to the name American Cannabis Company.

"This trademark has been abandoned and labeled dead," he said.

As a result, he said he doesn't think Emr's company has any exclusive rights to the words "American Cannabis Company."

Emr said she has specialized in intellectual property rights for more than 17 years and believes American Cannabis Company has established its trademark rights even though it abandoned its application with the Patent and Trademark Office. She said American Cannabis Company has faced federal problems registering a cannabis-related business so it decided not pursue the application for the time being.

But Emr said the trademark still applies because the company has been using the name since 2015.

"We have put them on notice that we have earlier rights to the name," she said.

In her letter to Breidenthal, she states, "Use of a confusingly similar trademark also causes dilution of the strength of ACC's valuable trademark rights. Said consumer confusion and/or dilution of ACC's trademark rights constitutes trademark infringement actionable under the Lanham Act in Federal Court."

Peter Threlkil, director of the corporation division of the Oregon Secretary of State, said it's up to the business owner to deal with trademark issues.

He cited the case of a woman on the coast named Sam Buck who named her business Sambuck's coffee. Even though the name is different than Starbucks, Threlkil said the courts eventually found the Sambuck's name infringed on the larger corporation's name.

Threlkil said his office doesn't look at state or federal trademarks, saying that's the responsibility of the business owners.

— Reach reporter Damian Mann at 541-776-4476 or dmann@mailtribune.com. Follow him on www.twitter.com/reporterdm.