Kiva Health Brands LLC v. Kiva Brands Inc.

Background

Kiva Health Brands LLC (KHB), a maker of natural foods, began using the KIVA name for health and food products and obtained federal trademark registrations beginning in 2014. Kiva Brands Inc. (KBI) makes cannabis-infused chocolates and confections and claimed to have used KIVA and KIVA CONFECTIONS on its products since 2010 through an earlier entity and later through KBI.

KHB sued KBI for trademark infringement, unfair competition under the federal Lanham Act, declaratory relief, and related state-law claims. KBI asserted, among other defenses, that KHB waited too long to sue (laches), that KBI was the earlier or “senior” user of the mark (prior use), and that KHB’s conduct supported acquiescence, waiver, or estoppel. The court addressed the parties’ cross-motions for summary judgment only as to these affirmative defenses.

Laches

Laches is an equitable defense based on an unreasonable delay in bringing suit that prejudices the defendant. The court found a genuine dispute about when KHB knew or should have known about KBI’s use of KIVA. KHB’s managing member said he first learned about KBI at a trade show around June 2015, but KBI argued that earlier websites, social-media pages, and searches by KHB could support a finding that KHB should have known about KBI’s use as early as 2013.

Because the start of the delay period was disputed, the court could not calculate the total delay or complete the required analysis of whether the delay was reasonable and whether KBI was prejudiced. The court held that a jury must decide when the delay period began. It also held that the analogous California trademark limitations period is four years, but it did not decide whether the presumption against laches applied or resolve prejudice. The court denied KBI’s motion for summary judgment on laches in its entirety and denied KHB’s motion as to laches.

Prior Use

KHB sought summary judgment on KBI’s prior-use defense. The court held that trademark priority requires lawful use in commerce. Although KBI’s cannabis products were legal under California law, the court concluded that cannabis remained illegal under federal law. Therefore, KBI’s use of KIVA on those products could not establish federal trademark priority.

KBI argued that 15 U.S.C. § 1065 protected prior state-law rights. The court rejected that argument because Section 1065 concerns incontestable marks, and KHB did not claim incontestable status. The court instead treated KBI’s defense as arising under 15 U.S.C. § 1115. The court further held that California common-law rights based on KBI’s cannabis-related use were preempted to the extent they would allow infringement of KHB’s federal trademark rights. The court granted KHB’s motion for summary judgment on the prior-use defense.

Acquiescence, Waiver, and Estoppel

KHB also sought summary judgment on KBI’s defenses of acquiescence, waiver, and estoppel, arguing that there was no evidence KHB had permitted KBI to use KIVA. KBI responded that it had not yet conducted discovery on those defenses. The court found that granting summary judgment before that discovery would be premature and denied KHB’s motion on all three defenses.

Disposition

The court denied KBI’s motion for summary judgment on its laches defense. It granted in part and denied in part KHB’s motion for summary judgment: it granted the motion as to prior use and denied it as to laches, acquiescence, waiver, and estoppel.