Bogus bongs or bogus lawsuits?
German pipe-maker sues over influx of counterfeit products
FORT LAUDERDALE, Fla. — In the rarefied world of high-end bong makers, Roor glass water pipes have long been smoked to impress. The status symbols are so sought after that some models command prices of $1,000. There’s even a diamond-studded, gold-gilded Roor that goes for nearly $4,000.
Both marijuana and the tools used to smoke it remain illegal under federal law, but that hasn’t stopped Roor and its American licensee from using federal courts to protect the brand and its sales.
In Florida, California and New York, lawyers are accusing smoke shops and mom-and-pop convenience stores of selling counterfeit Roor bongs in violation of U.S. Trademark No. 3675839, protecting “SMOKER’S ARTICLES, NAMELY, GLASS PIPES, BONGS, WATER PIPES, (and) WATER PIPES OF GLASS” sold under the Roor mark, which has “a stylized font with the last “R” facing backwards.”
Almost 200 such lawsuits have been filed since 2013, most of them in the past year.
“Counterfeiting is a huge problem for us,” said Jay Farraj, owner of Sream Inc., Roor’s U.S. partner. He said the Corona, Calif., company’s losses have been in the “millions.”
Now that marijuana has increasingly been legalized for medical or recreational use in some U.S. states, consumer demand for such drug paraphernalia is booming and imitators of the German pipe maker abound. But the bong market remains a gray area legally. Most makers and sellers advertise them as tobacco pipes, while giving a wink and a nod to their use with marijuana.
Alison Malsbury, a Seattle lawyer who specializes in marijuana trade law, said this marketing sleight of hand could be the best defense against Roor’s lawsuits. The accused sellers could challenge the legality of the company’s 2009 trademark, which specifically calls its product a bong. If a product violates federal law, it can’t be trademarked or patented.
And Roor, she said, would have to show it never went after the pot market — which might be hard given its bongs have won numerous awards in High Times magazine’s annual Cannabis Cup competition. She said this might be why many of these lawsuits have settled and none has gone to trial — neither Roor nor the sellers want to discuss their business before a judge.
Attorney Jamie Sasson, whose firm represents Roor and Sream in the Florida lawsuits, denied this, asserting that the company is perfectly willing to go to trial if necessary.
Under federal trademark law, companies injured by counterfeit sales can seek up to $150,000 per act. Stores sued by Sream and contacted by The Associated Press said they have been told to fork over between $12,000 and $16,000 to avoid trial.
While cheap, generic bongs go for about $15 online, Sasson showed off a counterfeit Roor in his office that he said was purchased for $90. If authentic, that size and model would sell for $400. The glass felt thinner and weaker than two legitimate pipes. He said the counterfeits, believed to be made in China, are hurting Roor’s reputation.
While refusing to confirm the settlement amounts requested, he said a penalty of about $12,000 for breaking the law was “a good number. It doesn’t put anyone out of business. It stings but it is not going to cripple.”