Cannabis company to face ‘Kool’ menthol dilution claims
Cannabis company Capna has failed to convince a California district court judge to dismiss a trademark suit alleging it infringed a tobacco company’s cigarette marks.
Capna moved a motion to dismiss the trademark dilution claim brought by ITG Brands, the owners of the ‘Kool’ menthol cigarette brand first launched in 1933.
ITG alleged that the interlocking ‘OOs’ in its logo and stylised marks are a “central part of the cool marks”, and that Capna has tarnished its reputation with its use of interlocking OOs in its ‘Bloom’ cannabis products.
It also cited Capna’s voluntary recall of products in July 2018 after discovering that they contained a pesticide that could pose a health risk.
ITG sent a cease and desist letter to Capna in December 2020, as well as a follow up letter in January 2021. After the plea was not heeded, ITG filed a complaint with the US District Court for the Central District of California.
ITG has five registered marks relating to its ‘Kool’ branding, all for use in connection with cigarettes.
Capna’s arguments
In Capna’s motion to dismiss, it claimed that, even if the ‘Kool’ marks are famous, the interlocking OOs by themselves are not. It further noted that the OOs never appear in isolation.
Responding to this, district judge Otis Wright said: “Capna raises an interesting argument … regardless, the issue with Capna’s motion is that it challenges the veracity of ITG’s pleadings by raising factual doubts… these questions will need to be answered, but not necessarily at the pleading stage.”
Capna also disputed ITG’s claims the ‘Kool’ brand would be diluted by its ‘Bloom’ mark, as the marks are “patently dissimilar” in that they are entirely different words and the logos appear on different coloured packaging.
Wright responded: “Capna argues that the ‘Kool’ marks and the ‘Bloom’ mark are so dissimilar that any allegation of likelihood of dilution is implausible.The court disagrees.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
