In a case we’ve been watching closely, a California District Court Judge recently denied a motion by cannabis company Capna Intellectual. The motion sought to dismiss tobacco giant ITG Brands’ dilution claim for its “KOOL” brand. ITG’s branding uses “KOOL OOs” while ITG’s branding uses “BLOOM OOs.”
As a refresher, in December 2020, ITG had sent Capna a cease and desist letter that “was expressly limited to [Capna’s] use of the interlocking ‘OO’s, which are central to the KOOL Marks, and not directed to [Capna’s] use of the mark BLOOM per se.” In other words, ITG took issue with the fact that both marks had the interlocking OOs. Capna didn’t engage, so ITG filed a lawsuit in January 2021. A couple months later, Capna moved to dismiss ITG’s third claim for trademark dilution.
To back up – trademark dilution refers to “the whittling away of the value of a trademark when it’s used to identify different products.” To prevail on a claim of trademark dilution, its owner must show:
The mark is famous, The defendant is making a commercial use of a mark in commerce, The defendant’s use began after the mark became famous, and The defendant’s use of