Cannabis concern refuses to high-five competitor planning on using a similar name

A company that sells cannabis-infused seltzers and gummies under the name Hi5 is suing another company that plans to open a cannabis dispensary in West Roxbury called HiFive.

In a suit filed yesterday in Suffolk Superior Court, Theory Wellness of Stoneham (yes, Stoneham) says Beacon Compassion, based in Post Office Square, must be stoned if it doesn't think the two names will confuse consumers and that High5 was there first, and so is asking a judge to order Beacon Compassion to find some other dank name for its proposed dispensaries.

Theory Wellness, which is hoping to open its own dispensary in Medford by year's end and to extend its Hi5 line to sales across the country beyond its current markets in Massachusetts and Maine, says it first began using the Hi5 trademark on Feb. 24, 2021. It claims that Beacon Compassion, a subsidiary of Battle Green IP of Wilmington, DE, only first announced a name change for its still unopened stores in an Instagram post on Dec. 16, 2021.

Beacon Compassion originally won a license to open a basement medical-use dispensary under that name at 1524 VFW Parkway - the heart of West Roxbury's fun zone of fast food, ciggies, beer and porn just past the Dedham line - but is now looking to convert that into a full-service "adult use" dispensary at ground level. The firm is also planning dispensaries in Framingham and New Bedford.

Theory Wellness alleges:

Defendants' goods and services overlap and directly compete with the goods and services offered by Theory Wellness, especially considering both are in the cannabis space and provided in the Commonwealth of Massachusetts.

The HI5 and HIFIVE marks are confusingly similar in terms of appearance, sound and overall commercial impression.

The lawsuit says Theory Wellness's attorney wrote Beacon Compassion on Dec. 23, asking them to stop that, but that Beacon Compassion wrote back to say, in essence, nah, bud. On Feb. 3 of this year, Theory Wellness repeated the demand.

To be blunt, Theory Wellness says that in addition to the inevitable confusion the similar names would cause, the company, which specializes in small-batch, artisanal marijuana varieties, would have to worry about the damage to its reputation when consumers blame it for whatever stuff Beacon Compassion uses in its wares:

Any dissatisfaction with Defendants' goods or services will reflect upon and irreparably damage the reputation of Theory Wellness as embodied in its HI5 mark, and constitutes an infringement of Theory Wellness's rights, subjecting Defendants to liability under the Massachusetts State Trademark Act and common law.

Theory Wellness is asking a judge to order Beacon Compassion to immediately stop using the Hi5 name and pay Theory Wellness damages times three.