KBI claimed to have started using its KIVA mark on cannabis before KHB’s KIVA branded goods entered the market. Last week, the District Court doubled down and granted KHB’s motion for summary judgement on KBI’s prior use affirmative defense. Asserting that it was the prior user and, thus, entitled to an injunction against KHB, KBI filed counterclaims seeking to cancel KHB’s federal trademark registration and alleging trademark infringement. The Court’s ruling is in tension with the principal that a federal registration does not wipe-out prior, common law rights. It further highlights the challenges cannabis brands face as they try to build rights in their marks, many of whom anticipate that cannabis will eventually be legal under federal law and they will be entitled to federal rights.
In September 2018, Kiva Health Brands LLC (“KHB”), which supplies natural foods under the trademark KIVA, sued Kiva Brands Inc. (“KBI”) for trademark infringement and unfair competition arising out of KBI’s use of the mark KIVA on cannabis-infused chocolates. KBI claimed to have started using its KIVA mark on cannabis before KHB’s KIVA branded goods entered the market. Asserting that it was the prior user and, thus, entitled to an injunction against KHB, KBI filed counterclaims seeking to cancel KHB’s federal trademark registration and alleging...
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