We have been closely following litigation brought by tobacco giant ITG Brands against cannabis company Capna Intellectual. As we wrote reported on June 27, ITG sued Capna on a trademark dilution claim related to ITG’s “KOOL” brand. ITG’s branding uses “KOOL OOs” while Capna’s branding uses “BLOOM OOs.”
In another blow to Capna following the denial of its motion to dismiss, Judge Wright granted ITG’s motion for preliminary junction last week, which will severely limit Capna’s ability to use the allegedly infringing mark during the pendency of the case.
As a refresher, a preliminary injunction issues in the Ninth Circuit when the plaintiff (here, ITG) establishes:
It is likely to succeed on the merits; It is likely to suffer irreparable harm in the absence of preliminary relief; The balance of equities tips in its favor; and An injunction is in the public interest (preventing consumer confusion and protecting trademark rights serves the public interest).
With respect to the first factor, and as I mentioned in my previous post, Judge Wright had already signaled he agreed with ITG’s claims when denying Capna’s motion to dismiss. To prevail on a trademark infringement claim, ITG had to show (a) ownership of