402 F.Supp.3d 877
N.D. Cal.2019Background
- Kiva Health Brands LLC (KHB) owns federal registrations for the mark KIVA for food/health products (registered 2014–2016) and has sold KIVA-branded health foods since 2013.
- Kiva Brands Inc. (KBI), and its predecessor Indica, have sold cannabis‑infused confections labeled KIVA (and KIVA CONFECTIONS) in California since 2010; KBI asserts common‑law California rights based on that use.
- KHB sued in 2018 for federal trademark infringement and related claims; KBI counterclaimed asserting prior common‑law rights and sought cancellation of KHB’s registrations.
- Motions pending: KHB’s motion for a nationwide preliminary injunction and to dismiss two federal counterclaims; KBI’s cross‑motion for a California preliminary injunction.
- Court concluded neither party met the standard for a preliminary injunction and denied both preliminary injunction motions; but the court granted KHB’s motion to dismiss KBI’s federal counterclaims for cancellation and federal infringement because KBI’s asserted prior use involved goods illegal under federal law.
Issues
| Issue | Plaintiff's Argument (KHB) | Defendant's Argument (KBI) | Held |
|---|---|---|---|
| Whether KHB is likely to succeed on trademark infringement (ownership/prior use) | KHB: federal registrations establish ownership and nationwide rights; KBI cannot claim seniority because its cannabis use was unlawful under federal law. | KBI: asserts common‑law senior rights in California from historic use dating to 2010 (chain of title/implied license). | Court: KHB likely owns the mark nationwide because KBI’s prior use on federally illegal cannabis goods cannot establish lawful prior use; KHB did not, however, show likelihood of confusion. |
| Whether there is a likelihood of consumer confusion | KHB: marks are similar and there is evidence (consumer log) of confusion harming goodwill. | KBI: goods, channels and purchasers differ (cannabis dispensed in regulated channels); KHB’s confusion evidence is weak. | Court: factors (strength, similarity, but dissimilar goods, limited channel overlap, weak actual‑confusion evidence) weigh against a significant likelihood of confusion. |
| Whether KHB showed irreparable harm to justify preliminary injunction | KHB: loss of control over reputation and goodwill from confusion. | KBI: disputes material harm and emphasizes KHB’s delay and KBI’s reliance on long investment in its brand. | Court: irreparable harm not shown (conclusory declarations, sales growth, and long delays undermined urgency). |
| Whether KBI’s federal counterclaims (cancellation and federal infringement) survive | KHB: KBI cannot be a senior user for federal purposes because KBI’s use involved marijuana, illegal under federal law. | KBI: its common‑law rights under California should permit the counterclaims; federal illegality irrelevant to state common‑ law rights. | Court: dismissed KBI’s federal counterclaims because lawful use in interstate/federal commerce is required to establish senior rights or to seek cancellation under federal law. |
Key Cases Cited
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008) (four‑factor standard for preliminary injunction).
- Rodriguez v. Robbins, 715 F.3d 1127 (9th Cir. 2013) (applies Winter standard in Ninth Circuit).
- Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011) (sliding‑scale approach: serious questions plus balance of hardships).
- Sengoku Works Ltd. v. RMC, Int’l, Ltd., 96 F.3d 1217 (9th Cir. 1996) (priority depends on actual first use in sale of goods).
- CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626 (9th Cir. 2007) (only lawful use in commerce gives rise to trademark priority).
- Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013) (irreparable harm is not automatically presumed; must be shown with evidence).
- Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (factors for mark strength and protection).
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft factors for likelihood of confusion).
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (trademark infringement elements and commercial strength analysis).