A California federal judge recently reminded cannabis trademark owners that the manufacture and sale of cannabis products remain illegal under federal law, so they cannot challenge federal trademark registrations based on common law prior rights.

Kiva Health Brands Inc. (“Kiva Health”) brought suit against Kiva Brands, Inc. (“Kiva Brands”), alleging that Kiva Brands’ sale of cannabis-infused chocolates and candies infringed on its Federal trademark registration for food products. Kiva Brands responded by attempting to cancel Kiva Brands’ Federal trademark registration, and counterclaimed for common law trademark infringement of its unregistered marks, given its prior, unregistered use of the mark. The judge found that lawful use in commerce is a fundamental requirement for cancelling a trademark registration.

Since the production and sale of cannabis and cannabis-infused products remains illegal under federal law, Kiva Brands’ unregistered use of the mark cannot be used as a basis for cancelling a federal trademark registration. The judge then struck down Kiva Brands’ allegations that Kiva Health infringed its unregistered marks under federal law, though one claim for infringement under California law was allowed to proceed.

This ruling serves as an important reminder to cannabis brand owners that Federal registration for cannabis products remains unavailable, and alternative protection measures for these marks are relatively narrow scope. It is vital that brand owners strategize early and often with regard to branding, and look for any and all federally-lawful opportunities for protection, including merchandise, federally-compliant CBD products, informational website services, etc. This case also highlights the importance of searching and clearing cannabis-related marks prior to use and state registration, including looking at existing federal marks for lawful goods similar to the cannabis mark.

Husch Blackwell has extensive experience advising clients on the clearance, adoption and protection of marks relating to cannabis and cannabis-derived products and services. For questions relating to this recent decision, or other possible intellectual property protection for these products and services, contact Kris Kappel, Tara Allstun or your Husch Blackwell attorney.