Use this button to switch between dark and light mode.

Experience a New Era in Legal Research with Free Access to Lexis+

Kiva Health Brands LLC v. Kiva Brands Inc.

Kiva Health Brands LLC v. Kiva Brands Inc.

United States District Court for the Northern District of California

September 6, 2019, Decided; September 6, 2019, Filed

Case No. 19-cv-03459-CRB

Opinion

 [*880]  ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION AND CROSS-MOTION FOR PRELIMINARY INJUNCTION, AND GRANTING MOTION TO DISMISS

In this trademark case, Plaintiff Kiva Health Brands LLC ("KHB"), a maker of  [*881]  natural foods and health supplements, brings suit against Defendant Kiva Brands Inc. ("KBI"), a maker of cannabis-infused chocolate and other "edibles." Both companies claim the right to the KIVA mark. KHB has held a federally-registered trademark in the KIVA mark since 2014. However, KBI claims to have inherited the KIVA mark from predecessors [**2]  who have been using it to make cannabis-infused edibles in California since 2010. Now pending are (1) KHB's Motion for a Preliminary Injunction, see KHB MPI (dkt. 21-1); (2) KHB's Motion to Dismiss two of KBI's counterclaims, see KHB MTD (also dkt. 21-1); and (3) KBI's Cross-Motion for a Preliminary Injunction, see KBI MPI (dkt. 25-1).

Because the Court concludes that neither party has met its burden for a preliminary injunction, the Court DENIES both such motions. The Court GRANTS KHB's motion to dismiss the two counterclaims in light of KBI's manufacture of a product that is illegal under federal law.

I. BACKGROUND

A. Plaintiff Kiva Health Brands LLC

Plaintiff KHB is a Nevada corporation, created in 2010, with a principal place of business in Hawaii. Henderson Decl. (dkt. 21-2) ¶ 2. KHB distributes and sells "health and wellness foods and food supplements, sourced from farmers that practice sustainable and eco-friendly farming methods." Id. ¶ 3. KHB registered the kivahealthbrands.com domain name in 2009, and developed a KIVA logo and its first KIVA product (berry powder) in early 2010. Id. ¶ 5. KHB sold KIVA-branded reusable grocery bags as of mid-2010, and sold KIVA-branded food products [**3]  and food supplements as of February 2013. Id. ¶¶ 7, 8. KHB's first online sales were on Amazon.com in June 2013; as of September 2013, KHB also made sales through its website, www.kivahealthfood.com. Id. ¶ 8. KHB has been selling continuously using the KIVA mark since 2013, in California, interstate, and internationally. Id. ¶ 8.

In September 2013, KHB filed an application with the USPTO to register the KIVA mark in connection with food products. Id. ¶ 9. The USPTO issued that registration in April 2014. Id., Ex. A1 In 2015 and 2016, KHB obtained two other trademark registrations for the mark KIVA to be used on additional food and cosmetic products. Id. ¶ 9, Exs. B and C.2

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

402 F. Supp. 3d 877 *; 2019 U.S. Dist. LEXIS 152501 **; 2019 U.S.P.Q.2D (BNA) 335549; 2019 WL 4249075

KIVA HEALTH BRANDS LLC, Plaintiff, v. KIVA BRANDS INC., et al., Defendants.

Subsequent History: Partial summary judgment denied by, Partial summary judgment granted by Kiva Health Brands LLC v. Kiva Brands Inc., 439 F. Supp. 3d 1185, 2020 U.S. Dist. LEXIS 26255 (N.D. Cal., Feb. 14, 2020)

CORE TERMS

trademark, products, preliminary injunction, irreparable harm, marijuana, argues, federal law, registration, commerce, marks, counterclaims, asserts, license agreement, Confections, log, registered, likelihood of confusion, ownership, rights, lawful use, marketing, consumer confusion, injunction, food, selling, merits, weighs, user, likelihood of success, fail to demonstrate