Federal illegality dooms KIVA cannabis trademark senior user defense

Interesting ruling from the Northern District of California this past Friday.  With cannabis goods and services typically illegal under federal law despite various state laws allowing for such goods and services, there has been interest in whether or not a federal court could or would protect a common law trademark owner under federal trademark law using the mark in association with federally-prohibited goods and services.

That answer was No.  Citing many of the TTAB cases that have served as the foundation of cannabis-related trademark prosecution (i.e. In re Morgan Brown, JJ206), the court concluded that since the cannabis-related goods were illegal at the federal level, the parties were was not entitled to injunctive relief; and, the defendant’s counterclaims were dismissed under the same reasoning:


Full Order is HERE.

Kiva Health Brands Inc. v. Kiva Brands Inc.

Several other issues to note in this case (ie. the nunc pro tunc assignment issue).






Scouts Honor? Binary Branding Gone Bad.

What a mess.  Kudos to the Boy Scouts of America for opening up its membership to girls, but the gender-specific nature of the branding, plus the undeniable existence of a competing group, the Girl Scouts of the USA, has created a brand battle that would be right at home on a law school exam.

Timothy Geigner at TechDirt has a good post about the mess, but the basic issue is simply that the Boy Scouts of America are rebranding as “Scouts BSA.”  Yes, the “BSA” still presumably stands for “Boy Scouts of America,” but by dropping the “BOY” portion from the mark, it has allegedly created confusion among the scouting community as a whole and is harming the Girl Scouts.

As explained in the TechDirt article, and in other articles on this issue, The Girl Scouts have sued the Boy Scouts in federal court, claiming trademark infringement, dilution, and other unfair competition.  The complaint is HERE, and it is 50 pages long – covering interesting scouting history and allegations of intentionally sowing confusion.

From the Introduction in the Complaint:

There is also corresponding activity at the USPTO’s Trademark Trial and Appeal Board.  The lawsuit was filed in the Southern District of New York on November 6, 2018.  However, prior to that, on October 16, 2018, the Girl Scouts of the USA filed a request to extend the time to oppose the Boy Scouts of America’s trademark application for “SCOUTS BSA,” which the BSA filed on May 3, 2018.  Here is the TTAB docket:

Since there is now pending district court litigation, the Girl Scouts of the USA will likely not need to pursue opposing the application at the TTAB because the district court litigation can take care of the registrability and confusion issues, and, the TTAB typically suspends its own proceedings when there is concurrent district court litigation.

The Girl Scouts of the USA likely intended to pursue this in district court from the beginning, but the Boy Scouts’ “SCOUTS BSA” trademark application was published for opposition on September 18, 2018, which meant that the Girl Scouts had to either file a notice of opposition or seek an extension of time to file a notice of opposition within 30 days of September 18, 2018, otherwise the application would proceed toward registration.  Thus, the Girl Scouts, in an abundance of caution, filed the extension request within the 30-day window to preserve the ability to oppose the mark at the TTAB regardless of the status of the district court litigation.  Again, the TTAB will likely not have to get involved if the district court litigation takes off, but this is a good example of making sure all bases are covered before kicking off a litigation strategy.

Be prepared.

Sorry, couldn’t resist.

This will be a fascinating case.  Since these marks are so old and well-known, the dilution claims should be interesting.



Breaking News – California cannabis TM licensor alleges lawful TM use in Washington

In my Cannabis Trademarks CLE material, I discuss a case out of Washington State.  Here is one of the slides:

As stated on the slide, there was a hearing on September 12, 2018 in an appeal of the trial court’s decision.

An appellate order was just issued today, and the appellate court overturned the trial court, holding that the California company did properly allege that it was using the mark lawfully in Washington despite not holding a Washington license to manufacture cannabis goods.

Admittedly, this ruling is based on a motion to dismiss concerning pleading allegation technicalities, so its precedential value may not be too great, especially since Washington subsequently passed Senate Bill 5131 that allows licensees to enter into agreements for consulting services and licensing trademarks.

The full opinion is HERE, but here is some good language regarding the argument that a trademark licensor licensing a mark into a state where the licensor does not have a canabis license does not necessarily violate the CSA:

(The CSA-violation argument was not the only issue on appeal, so it is worth the time to read the entire order.)





Coral Reefer, or, White Castles in Paradise

I’ve written about Florida MMTC licensee Surterra and its branding in the past.  Since that time, it looks like Surterra is no longer using MYAKKA GOLD, and, Surterra has recently announced a licensing deal with Jimmy Buffet and his Margaritaville empire.

The new deal will have Surterra selling CORAL REEFER-branded cannabis products.  (For non-parrotheads, CORAL REEFER BAND also happens to to be the name of Jimmy Buffet’s band.)

While the deal was just announced on September 11, 2018, trademark filings at the USPTO from May 2018 hinted at the new brand:

Each of the above trademark applications was filed on May 3, 2018 as an “intent to use” application.  Starting with the first application, the goods are:

  1. Class 35: Providing an online business directory featuring information on physicians and health care providers; Retail store services featuring a wide array of merchandise in the nature of novelty items, souvenirs, clothing, headwear, books, recordings, beverage ware, and printed material
  2. Class 25: Bandanas; Belts; Dresses; Footwear; Gloves; Headwear; Hosiery; Jackets; Loungewear; Mittens; Neckties; Pants; Scarves; Shirts; Shorts; Skirts; Sleepwear; Socks; Sweaters; Sweatshirts; Swimwear; Underwear
  3. Class 41: Smoking lounge services
  4. Class 44: Providing a website featuring health information in the field of medical marijuana and cannabis; Providing a website featuring information concerning cannabidiol (CBD) and tetrahydrocannabinol (THC); Wellness and health-related consulting services
  5. Class 10: Electronic vaporizer pen for medical purposes sold empty
  6. Class 5: Herbal tinctures for medical purposes; medicated oils; medicated oral sprays; medicated creams and lotions

Of course, as readers of this blog know, the applicant, Coral Reefer, LLC, may have some trouble registering at least the Class 5 and Class 10 goods depending on the luck-of-the-draw with the USPTO Examining Attorney.

In any event, this may be the first “celebrity brand” license deal for cannabis in Florida, joining the likes of Snoop Dogg, Willie Nelson, Merle Haggard, and Bob Marley, each of whom has licensed cannabis products in other states.

Interesting side notes:

1) The applications were assigned after being filed, which is a little unusual/risky for intent-to-use applications depending on who the assignee is and its relationship to the assignor.  Fortunately, language in the assignment, which you can see HEREsuggests that the risk might not be present in this case because the assignment claims that Coral Reefer, LLC, as assignee, is the owner of an ongoing and existing business and successor of the assignor.

2) In reviewing the assignment, not only did Margaritaville Enterprises assign the CORAL REEFER marks to Coral Reefer, LLC, but it also assigned a bunch of “IT’S 4:20 SOMEWHERE” marks, which were also filed on May 3, 2018 for similar goods and services.




UPDATE: Additional Florida Cannabis-Related Trademark Registrations

A subsidiary of Florida MMTC licensee AltMed Florida is Nutrae, LLC, which offers the “MüV” brand of products.


Nutrae, LLC recently received three new Florida trademark registrations for its MUV/MUV PRIME/MUV EVOLVE cannabis-related goods:



Registration Number: T18000000868
Registration Date: August 27, 2018
First Use Date: August 9, 2016


Click HERE for application paperwork.



Registration Number: T18000000869
Registration Date: August 27, 2018
First Use in Florida Date: June 22, 2018


Click HERE for application paperwork.



Registration Number: T18000000870
Registration Date: August 27, 2018
First Use in Florida Date: June 22, 2018


Click HERE for application paperwork.

And, I found that Nutrae, LLC also owns the following 2017 registration, which my Lexis searching did not initially discover due to the misspelling of “cannabis” in the description of goods:



Registration Number: T17000000514
Registration Date: April 26, 2017
First Use Date: August 9, 2016
Click HERE for application paperwork.

Cannabis Patents – The Elephant in the Room?

I write a lot about trademark issues within the cannabis industry, but there is another aspect of intellectual property that I believe will have a greater impact on the industry than even brand/trademark disputes, and that is patent infringement.

Cannabis-related patents have been around for years, but we’re just starting to see those patents being challenged and asserted.  Two recent examples are illustrative of what I believe will become more and more commonplace in the very near future.

Case 1:  Insys Development Co. v. GW Pharma Ltd.

This case is actually an “inter partes review” (or “IPR”) before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  In a nutshell, the IPR process allows a party to challenge the validity of another party’s patent prior to any claims of infringement.  The argument is that the patent never should have been issued because the invention was already known or was obvious before the application was filed.

GW Pharma owns U.S. Patent No. 9,066,920 for “Use of one or a combination of phyto-cannabinoids in the treatment of epilepsy”.  Claim 1 of the ‘920 Patent is simply this:

A method of treating partial seizure comprising administering cannabidiol (CBD), to a patient wherein the CBD is present in an amount which provides a daily dose of at least 400 mg.

Thus, if your CBD product is used to treat partial seizures and the treatment method includes CBD “in an amount which provides a daily does of at least 400mg” then you arguably infringe the patent.

Insys filed an IPR petition to cancel the ‘920 Patent based on “prior art” (i.e. relevant evidence) which Insys believes shows that the invention in the patent was already known or was otherwise “obvious” in light of other prior art that existed prior to the filing of GW Pharma’s application.  The IPR process (and patent law in general) is very complex and beyond the scope of this post, but for a very detailed and thorough treatment of the IPR process and this specific Insys v. GW Pharma case, check out this post, which is where I first learned of the matter.  It was, and still is, one of the few outlets discussing the Insys IPR.

One reason this IPR is so important is because the claims in the patent are fairly broad and could implicate many, many products that are already being marketed (albeit perhaps without the claims of treating epilepsy and seizures, which is part of what complicates these cannabis-patent issues).  So, just how easy is it to challenge a patent like this via an IPR?  Well, you’ll need over $30,000 just in filing fees to the USPTO if your petition is accepted  by the USPTO and the proceeding is instituted ($15,000 just to file the petition, and another $15,500 if the USPTO “takes the case” and starts the review process).  You read that correctly – over $30,000 just in government filing fees to get started.  That does not include the attorneys’ fees that Insys (and GW Pharma) are paying, which I conservatively estimate are already in the hundreds of thousands of dollars.  This is all to invalidate a single cannabis-related patent.

Below are some links to key documents in the IPR.  This is complicated litigation that few businesses can afford despite the fact that some of these patents affect the very ability of such businesses to exist.

There are many supplemental procedural issues involved in this case, but I expect a decision regarding the ‘920 Patent’s validity will be reached within the next couple of months.

Case 2: United Cannabis Corporation v. Pure Hemp Collective, Inc.

This case is different than the above IPR because this is a “classic” patent infringement case that is being brought within the United States District Court for the District of Colorado.  Whereas Insys brought an IPR at the USPTO to try and invalidate GW Pharma’s patent prior to GW Pharma asserting the patent against Insys, here, United Cannabis Corporation owns a patent and is alleging that Pure Hemp Collective’s products infringe the patent.  The similarity to the IPR is that it is typical practice for the defendant in a patent infringement case to defend against the infringement by counterclaiming that the patent is invalid.  Thus, the Colorado court will likely address the validity of the patent should the case proceed.

The patent at issue in this case is U.S. Patent No. 9,730,911 for “Cannabis extracts and methods of preparing and using same.”  Claim 1 is simply:

 A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is tetrahydrocannabinolic acid (THCa).

The case was just filed on Monday of this week, so it’s too early to see how Pure Hemp Collective intends to respond, but I’ve linked to the Complaint and patent below.  It is much easier reading than the above IPR documents, and it is a pretty typical example of the type of patent infringement complaint I predict we will see more and more of in the very near future as cannabis-patent owners start asserting their patents.

In sum, I expect to see more patent friction within the cannabis industry, and I also expect the media attention to increase as the gravity of cannabis-related patents becomes more well-known.  There are already “patent busting” projects out there related to cannabis-patents, and I would not be surprised to see an increased focus on those efforts.