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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…

H.J. Heinz Co. has filed a trademark infringement suit alleging Real Good Food Co. created and sold frozen appetizers described as "Poppers," which Heinz argues it owns the rights to for "frozen appetizers consisting primarily of vegetables, pork and/or cheese, not including shrimp." H.J. Heinz Co. Brands LLC v. Real Good Food Co., No. 19-0915 (W.D. Penn., filed July 26, 2019). Heinz further argues that Real Good Food Co. had actual knowledge of Heinz's rights to the Poppers mark because Real Good Food Co.'s website compares its products to Heinz's TGI Friday's-branded appetizers. Heinz alleges federal trademark counterfeiting, infringement, dilution and unfair competition and seeks injunctive relief, damages and destruction of infringing materials.

The U.S. Trademark Trial and Appeal Board (TTAB) has affirmed the denial of Yarnell Ice Cream LLC's application to register a trademark on a mascot named "Scoop." In re Yarnell Ice Cream, LLC, No. 86824279 (TTAB, entered July 9, 2019). The examining attorney rejected the application, finding "scoop" to be merely descriptive, and the appeals board agreed, pointing to examples from competitors identifying their serving sizes in scoops. The board also dismissed the argument that Yarnell's "scoop" has two meanings—the ice cream serving and the breaking-news description—because the latter intended meaning only became clear within the context of Yarnell's trade dress. "The dictionary definitions, third-party uses and registrations, and webpages and articles discussed and displayed above make it clear that 'scoop' is a common portion size and measuring unit for frozen confections and ice cream," the court held. "We find that 'scoop' has little, if any, source-identifying capacity as a…

Anchor Brewing Co. has filed an opposition against D.G. Yuengling & Son Inc.'s application to register "James River Steam Brewery" as a trademark, arguing that the proposed mark will confuse consumers familiar with its product Anchor Steam. Anchor Brewing Co. v. D.G. Yuengling & Son Inc., No. 91247967 (U.S.P.T.O., opposition filed May 3, 2019). Anchor asserts that it owns the rights to use "Steam Beer," which describes "an indigenous style of beer known as California common beer." The use of "James River Steam Brewery," Anchor argues, "is likely to create the false impression that Applicant's goods are provided by, related to, endorsed by, or associated with Opposer."

Sugarfina and Sweet Pete's have reached an agreement to settle allegations that Sweet Pete's infringed Sugarfina's trademarks, copyrights, patent and trade dress by copying the "museum-quality Lucite" used to package its candies. Sugarfina Inc. v. Sweet Pete's, No. 17-4456 (C.D. Cal., settlement notice filed March 5, 2019). Under the agreement, Sweet Pete's will pay $2 million and change its packaging from the allegedly infringing cubes.

In-N-Out Burgers has filed a lawsuit alleging that Puma North America Inc. infringed its trademarks and trade dress with two pairs of shoes called "California Drive Thru" and "Cali-0 Drive Thru." In-N-Out Burgers v. Puma N. Am. Inc., No. 19-0413 (C.D. Cal., filed March 1, 2019). The shoes feature shades of red and yellow similar to In-N-Out's trademarked color scheme and liners decorated to look like hamburgers, and Puma allegedly marketed the shoes with images of hamburger-related items such as mustard. In-N-Out alleges that Puma is intentionally confusing consumers into believing that the companies have an agreement and cites multiple news stories mistakenly calling the shoes a collaboration between the brands. For allegations of trademark and trade dress infringement, In-N-Out seeks injunctions, damages, destruction of infringing materials and attorney's fees.

Turner Entertainment Co. has filed an opposition to Sligo Mill Brewing Co.'s application to trademark "Surrender Dorothy," arguing that consumers will be misled into believing that the brewery is associated with "The Wizard of Oz." Turner Entm't Co. v. Sligo Mill Brewing Co., Opp. No. 91244715 (U.S.P.T.O., filed November 13, 2018). Turner, which owns trademark rights on several iterations of "Dorothy," asserts that "the well-known phrase 'Surrender Dorothy'" was "written in the sky by the Wicked Witch of the West and is one of the most memorable scenes in The Wizard of Oz." Turner alleges that Sligo Mill "attempted to mislead consumers into believing its mark is licensed, approved, or sponsored by or otherwise affiliated with" Turner and "The Wizard of Oz" by naming its beer after the movie scene and featuring an image of a yellow-brick road on its label. The entertainment company urges the U.S. Patent and Trademark…

Kervan USA has agreed to change the packaging of its Sunkist fruit snacks and the shape of its candy following a lawsuit filed by Promotion in Motion Inc., which produces Welch's fruit snacks. Promotion in Motion Inc. v. Kervan USA LLC, No. 18-11670 (D.N.J., entered November 6, 2018). Kervan will change the background color of the packages for its fruit snacks to avoid confusion with packages of Welch's fruit snacks, and it will change the shape of its watermelon candies to avoid the use of the "distinctive three-dimensional trapezoid shape" of Promotion in Motion's Sour Jacks. Kervan will also sell off its existing supply of allegedly infringing products and destroy any remaining units after 90 days.

The Federal Circuit has affirmed a Trademark Trial and Appeal Board (TTAB) decision refusing to grant a trademark to Real Foods Pty Ltd. for “Corn Thins” and “Rice Thins,” finding the terms to be “merely descriptive.” Real Foods Pty Ltd. v. Frito-Lay N. Am. Inc., Nos. 17-1959, 17-2009 (Fed. Cir., entered October 4, 2018). Frito-Lay North America opposed Real Foods’ trademark application, but Real Foods argued both that the terms were not descriptive and that even if they were descriptive, they had acquired distinctiveness. The Federal Circuit found significant evidence to support TTAB’s conclusion that the terms are descriptive, noting that the first part of the terms is the primary ingredient and the second is the shape. “The composite marks are ‘merely descriptive’ because they ‘immediately convey[] knowledge of a quality or characteristic of the product[s],’ specifically the products’ main ingredients and thickness,” the court held. The court also found…

In-N-Out Burger has reportedly warned brewery Seven Stills that its forthcoming In-N-Stout beer violates the company’s trademarks and trade dress. Seven Stills promoted the beer, a “Neapolitan milkshake stout,” on its social media with a photo of a can featuring red lettering and a yellow arrow similar to In-N-Out’s logo. The brewery also posted a photo of the cease-and-desist letter, encouraging viewers to “find the puns.” “Please understand that use of our marks by third parties ales us to the extent that this could cause confusion in the marketplace or prevent us from protecting our marks in the future,” the letter states. “We hope you appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this. … Please contact us as soon as possible, so this does not continue to ferment. Thank you for your time and consideration,…

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