A California federal court has rejected a trademark infringement claim on the grounds that the company alleging preceding use of the trademark manufactures cannabis-infused edibles, which are illegal under federal law. Kiva Health Brands LLC v. Kiva Brands Inc., No. 19-3459 (N.D. Cal., entered September 6, 2019). The parties to the litigation—Kiva Brands Inc. (KBI) and Kiva Health Brands (KHB)—dispute the rights of the “Kiva” trademark, and KBI argues that its ownership stems from its predecessor company selling cannabis-infused edibles in California since 2010.

“While KBI is only asserting California common law rights to the KIVA mark [], it is doing so as a defense to a federal trademark claim,” the court found. “That defense relies on KBI’s prior use of the mark. [] KBI’s prior use was illegal under federal law []. KBI therefore did not make lawful prior use of the mark. [] To hold that KBI’s prior use of the KIVA mark on a product that is illegal under federal law is a legitimate defense to KHB’s federal trademark would ‘put the government in the anomalous position of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws.’ . . . Although the parties have not identified, and the Court has not seen, any directly relevant authority about the interplay of state marijuana laws and federal trademark law, the Court is persuaded that the illegality of KBI’s products under federal law renders KBI unable to challenge KHB’s federal trademark. Accordingly, at this stage in the case, KHB has demonstrated ownership of the mark nationally, including in California.”

About The Author

For decades, manufacturers, distributors and retailers at every link in the food chain have come to Shook, Hardy & Bacon to partner with a legal team that understands the issues they face in today's evolving food production industry. Shook attorneys work with some of the world's largest food, beverage and agribusiness companies to establish preventative measures, conduct internal audits, develop public relations strategies, and advance tort reform initiatives.