Debra Borchardt
As the cannabis industry matures, companies are demonstrating the will to fight for patents and trademarks. Since the industry was born of one that operated mostly illegally, many companies operated with the idea that “rules are made for breaking.” That idea is being tested as entrepreneurs are losing patience with broken deals and copycat issues. Apparently imitation is not the highest form of flattery.
Capna
The tobacco giant ITG Brands, which is owned by Imperial Brands (OTC: IMBBY) is the maker of Kool menthol cigarettes. The 88-year old brand is known for its interlocking “O’s”. ITG is claiming trademark infringement against Los Angeles-based Capna Intellectual, which does business as Bloom Brands, for violating federal and state laws by stealing Kool’s logo to profit from the well-known brand. Bloom was also interlocking the O’s.
ITG said that since it is a cigarette company and Bloom makes vape products, consumers could potentially confuse the two. Although it wasn’t able to cite any real evidence of confusion. A comparison between the two logos does show similar interlocking O’s, but beyond that, the logos have little in common.
Unfortunately for Capna, it seems the judge agreed with ITG. Earlier in August, the judge in the case granted ITG’s motion for preliminary junction, which will limit Capna’s ability to use the allegedly infringing mark. Jihee Ahn of the law firm Harris Bricken wrote, “ Judge Wright had already signaled he agreed with ITG’s claims when denying Capna’s motion to dismiss.” She went on to add, “ Capna is prohibited from expanding the promotion or sale of any products bearing the interlocking circles and provide a monthly accounting to ITG. Preliminary injunctions are quite difficult to obtain and have a higher standard than most court remedies, but this case demonstrates that if granted, they can really hurt (and be effective tools in litigation).”
Law 360 said that Capna was told it must destroy any products or materials that have the disputed logo by Dec. 31. “If products at a retailer are later found to have the logo, Capna must “use its best efforts” to remove the materials. Capna must also provide inventory levels and forecasted product demand to ITG through November.” It seems the lawsuit has had its intended effect. The website for Bloom said it was working on a new look.
Pollen Gear/Canndescent
Law360 reported that childproof pot packaging company Pollen Gear has settled its lawsuit with luxury cannabis company Canndescent. The two had begun working together when Canndescent chose Pollen for the jars and boxes for its flower and pre-rolls. Pollen filed a lawsuit in February and claimed that Canndescent had stopped placing orders in 2019 and then not long after their products appeared in very similar packaging. Pollen reportedly told a California federal judge it had reached a conditional settlement in a patent infringement suit with Canndescent over the claim that the company copied the packaging design.
“Good cause exists for the granting of this extension because the parties believe that this extension will allow the parties to reach dismissal of this action sans judicial intervention, thereby promoting judicial economy,” Pollen Gear said in the Monday notice.
According to the lawsuit, Law 360 said that Pollen Gear told Canndescent that the new packaging infringed on its patents, but then nothing changed. It would seem that the two companies would have a bad relationship following the lawsuit, but at the end of last year, Canndescent reportedly asked Pollen Gear to provide lids for the cannabis jars as its international supplier was having a shortage. Despite the back forth over the packaging, it seems the two sides were able to work things out.
The story has a happy ending because Pollen and Canndescent are back to working together.
Half-Baked
Earlier this summer ice cream maker Ben & Jerry’s complained about New Jersey-based MJ Munchies Inc.’s requests to register “Half-Baked” as a trademark. Ben & Jerry’s makes Half-Baked ice cream — which is a combination of unbaked cookie dough and baked fudge brownie. They believe customers may think that the MJ Edibles products were made by Ben & Jerry’s.
“As the applicant’s alleged Half-Baked marks are confusingly similar in appearance and commercial impression to opposer’s Half Baked marks, this creates an association between the parties’ respective marks where one does not legitimately exist,” Ben & Jerry’s wrote.
NightFood Holdings, Inc. (OTC: NGTF), operates both NightFood, Inc. and MJ Munchies, Inc. Earlier in 2018, Brian Edwards launched the Half-Baked edibles line in the state of California. Edwards played an instrumental role in MJ Munchies successfully securing the Half-Baked trademark in California, coordinating a pilot launch which brought Half-Baked cookies from inception to shelf in under eight weeks.
MJ Munchies filed for a trademark for the name Half-Baked in 2018, but in April a request for an extension was entered to file an opposition. Ben & Jerry’s actually filed for a trademark for Half-Baked in 1999 and it’s still active.
It isn’t like the term half-baked hasn’t been used before. There’s a Dave Chapelle movie of the same name and there didn’t seem to be a problem with the name at that time. Merriam Webster defines the term half-baked as “poorly developed or carried out.” The slang definition is “ under the influence of a drug and especially marijuana.”
NightFood, Inc, “The Nighttime Snack Company” is a snack food company dedicated to providing consumers delicious, better-for-you, sleep-friendly choices for evening snacking. The initial Half-Baked line consisted of THC-infused cookies in four flavors; Chocolate Chip, Double Dark Chocolate, Cookies and Cream, and Peanut Butter Oatmeal. Each cookie would contain the maximum legal amount of THC along with a proprietary Half-Baked ingredient and will be retail-priced in the competitive range of $16-$20.
