Law360 (April 1, 2024, 9:11 PM EDT) -- A Ninth Circuit majority affirmed on Monday the cancellation of cannabis grower Central Coast Agriculture's trademark applications for its "Raw Garden" brand due to its lack of bona fide intent to use the marks commercially, with one judge dissenting, saying district courts can't interfere with and prematurely cancel trademark applications.
OG Article: hereÂ
View our Fair Use Policy: here
In a 21-page published opinion, a divided Ninth Circuit upheld in part an Arizona federal judge's decision in a trademark dispute initiated in 2019 by BBK Tobacco & Foods LLP against defendant Central Coast Agriculture Inc. over its use of the "Raw Garden" name in its sales of cannabis products.
BBK alleged CCA's use of "Raw Garden" would confuse consumers since BBK sells rolling papers and other merchandise under the name "RAW."
In July 2022, Arizona District Judge Michael T. Liburdi sided with CCA against BBK's false advertising and trademark claims but also granted summary judgment in BBK's favor to void four of CCA's trademark registration applications for the "Raw Garden" name, finding CCA didn't have "bona fide intent" to use the marks in trade.
While CCA didn't contest Judge Liburdi's determination on bona fide intent, it argued he lacked jurisdiction to cancel its applications that hadn't yet pivoted to registrations.
On Monday, the Ninth Circuit majority ruled district court's have jurisdiction to alter or cancel trademark applications under 15 U.S. Code Section 1119, adding the absence of a litigant's bona fide intent to use the marks in commerce is an appropriate premise to oppose a trademark application.
"As the Federal Circuit explained, because '[a]n opposer is 'entitled to rely on any statutory ground which negates [an applicant]'s right to the subject registration,' lack of a bona fide intent 'is a proper basis on which an opposer can challenge an applicant's registration," the majority's opinion, penned by U.S. Circuit Judge Roopali H. Desai, said.
