Kiva Health sells food products, including food supplements under the KIVA mark and has done so since as early as October 2010, and at least as early as February 2013. KIVA CANNABIS, on the other hand, uses the KIVA and KIVA CONFECTIONS marks on food products that contain cannabis. Kiva Health alleges that “consumers and prospective customers have contacted Plaintiff expressing concern and frustration believing that Plaintiff’s food products and supplements, marketed as healthy and eco-friendly, contain cannabis or other regulated substances.” Kiva Health asserts that Kiva Cannabis’ use of the KIVA marks “tarnishes” Kiva Health’s positive reputation.
Conversely, Kiva Cannabis argues that “its ownership stems from its predecessor company selling cannabis-infused edibles in California since 2010.” The court rejected this argument, however, on the grounds that Kiva Cannabis makes cannabis-infused edibles, which are illegal under federal law. Kiva Cannabis was attempting to assert California common law rights in the KIVA mark, but its use of the mark was illegal under federal law and therefore, Kiva Cannabis did not make lawful prior use.
This is a huge blow to cannabis businesses, and means that prior common law use will not necessarily give you grounds to challenge a later federal trademark application for the same mark.
For this reason, it is absolutely crucial that cannabis business owners both clear and monitor their trademarks to avoid conflicts. The best way to mitigate infringement risk is to have a comprehensive clearance search performed on your proposed mark by a company that specializes in such searches and then have that search analyzed by a trademark attorney well-versed in cannabis. With this report, your cannabis trademark attorney can advise you on the level of risk you face by assuming a particular brand. Your cannabis trademark lawyer can also give you initial feedback on the strength of your proposed mark, along with tips on choosing a brand that will be protectable. The real takeaway here is that you don’t need to use the exact same mark as another company to infringe that company’s trademark, and you don’t necessarily need to sell exactly the same goods or services. Crossing the line into infringement takes a lesser degree of similarity than most people realize, so choose your brand name wisely.
And after you’ve adopted your mark, be sure to monitor for infringing use. Below are a few basic tips for monitoring potential infringers of your mark:
- Regularly search the Internet. This is common sense. Perform Google searches for your trademark, and for your logo if you have one. Google Alerts comes in handy here as well. Set up an automated search and receive email alerts every time new pages containing your mark are indexed.
- If you really want to delve into things, search the Trademark Electronic Search System (TESS) on the USPTO website. This search engine allows you to search the USPTO’s database of registered trademarks and pending applications to find marks that may be similar to yours. Pending applications may give you some insight into companies that are using or attempting to use marks that are similar to or the same as your own. For additional information on searching the USPTO’s database, which can get a bit complicated, go here.
- Aside from self-monitoring, there are many companies and law firms that provide trademark monitoring services for their clients. These companies conduct regular monitoring searches for your mark. These services can be particularly helpful if you hold trademarks in multiple domestic and international jurisdictions.
If you do encounter a company you believe to be infringing your trademark, you should contact a cannabis intellectual property (IP) attorney right away. An experienced IP attorney can walk you through your options for dealing with an infringer, including cease and desist letters, settlement negotiations, and ultimately, litigation if necessary. An experienced IP attorney can also guide you toward adopting a brand name at the outset that is less likely to land you in hot water.
We like to keep abreast of trademark litigation in the cannabis space, and have written about several other notable cases that you can read about here:
- Cannabis Trademark Litigation: Web Platform Liability (Mr. T v. Leafly)
- Cannabis Trademark Litigation: Woodstock Case Shows Limits of Federal Trademark Protection
- New Trademark Litigation Against “Stoney Patch” Cannabis Products Calls Out an Industry Trend of Copycats
- UPS Sues Multiple Cannabis Delivery Companies for Trademark Infringement
- The “Tiger Hemp Beer” Case: Clear Your Cannabis Trademarks Before Filing
- Yet ANOTHER Cannabis Trademark Infringement Case: Tapatio Foods Files Suit
- What NOT to do with your Cannabis Brand: The Gorilla Glue Trademark Infringement Dispute