While searching for a good topic this week, I noticed a trio of recent lawsuits that provide a good overview of the increased role trademarks have in the exploding cannabis industry.
The first case I noticed exemplifies the additional concerns brands might have when encountering a newcomer using a similar mark on products containing cannabis and cannabis derivatives. In Nutrition and Fitness, Inc. v. King Harvest California, Plaintiff NFI claims rights in the registered trademark BLUE-EMU for topical pain relievers containing emu oil. Defendant King Harvest also sells topical pain relievers under the brand BLUE EMU, but King Harvest’s pain relievers contain both emu oil and CBD or THC. Indeed, according to the complaint, King Harvest describes its product as containing equal parts CBD and THC. While CBD- and THC-infused products are legal in California where King Harvest appears to be based—THC-infused products remain illegal under federal law. Harboring not only the traditional concerns that King Harvest’s use of the BLUE EMU mark will confuse consumers, but anxious also that consumers will erroneously believe that NFI’s products contain cannabis (NB: and possibly the government will believe NBI is moving cannabis across state lines?), NFI sued King Harvest for trademark infringement and unfair competition. NFI is seeking an injunction prohibiting King Harvest from using the BLUE EMU mark, as well as damages, costs, and attorneys’ fees.
The second case I came across is a typical example of a clash between old hemp and new cannabis. In Global Hemp, Inc. v. Industrial Hemp Solutions, LLC, et. al., Plaintiff Global Hemp claims to have started selling hemp and hemp-related products under the trademark GLOBAL HEMP in 1996. It owns registered and common law rights in GLOBAL HEMP for myriad consumer goods, such as clothing and toiletries. According to the complaint, Defendant Industrial Hemp Solutions (“IHS”) is a relative newcomer that began using the trademark GLOBAL HEMP SOLUTIONS, registered the domain global-hemp-solutions.com, and created a Facebook page under Globalhelpsolutions in or around February 2019. Although the complaint focuses on IHS’s use of the GLOBAL HEMP SOLUTIONS mark for hemp products, a brief review of its website clarifies that IHS specializes in products related to “bulk CBD distribution” and seems to target hemp and cannabis farmers, processors, and small businesses. Global Hemp is seeking an injunction, arguing that the use of GLOBAL HEMP SOLUTIONS on hemp products creates a likelihood of confusion with its own GLOBAL HEMP-branded products. While this is certainly a viable argument, one wonders if, as the cannabis industry grows, there will be more room for brands serving different parts of the industry. It’s not a perfect analogy, but can the same brand be used for apparel and farm equipment when the underlying product is carrots? Or radishes? (NB: a brief Internet search revealed yet another GLOBAL HEMP brand. Will another lawsuit follow?)
The last case that caught my attention, Mondelez Canada v. Stoney Patch et. al., teaches lessons in using discovery to identify allegedly bad actors behind potentially dangerous products. In this case, Mondelez, owner of the well-known candy Sour Patch Kids, found itself confronting the makers of THC-infused gummies sold under the mark STONEY PATCH KIDS in packages designed to mimic the Sour Patch Kids packaging. With the true identity of the manufacturers and distributors of the gummies and the packaging unknown, Mondelez filed a lawsuit and sought expedited discovery allowing it to serve subpoenas on Facebook, Google, and Instagram for the identities of the manufacturers and distributors. A few months later, Mondelez filed an amended complaint, naming Stoney Patch, Green King LA Inc., Dr. Vape Group LLC, Vape Hub LLC, and 4TwentyHub and alleging that at least one of the defendants sells unregulated cannabis products in the Stoney Patch Kids packaging. Notably, Mondelez states that before filing the complaint, it sent letters to various government agencies requesting their intervention. When no responses were received, Mondelez turned to trademark law, asserting claims for trademark and trade dress infringement, trademark dilution, and unfair competition and seeking to have Defendants’ activities enjoined.
In sum, in just one week, three different court filings reveal just how fast the cannabis industry is moving, how intertwined trademark rights already are, and how important they will be as the industry continues to grow. Stay tuned!