Facts

ITG Brands, LLC, owns the trademark for the Kool cigarette's brand, and it has been using the Kool's logo with interlocking OOs to market and sell menthol cigarettes since 1933. Capna Intellectual is a cannabis vapor company, which under its Bloom Brand, markets and sells various cannabis products. In September 2019, Capna filed for a trademark containing interlocking OOs for use in marketing its packaged cannabis products. ITG Brands became aware of Capna's application more than a year later in December 2020, and it filed a lawsuit in California Central District Court claiming Capna's use of the Bloom mark infringed upon its registered mark.

PLAINTIFF'S CONTENTIONS: Plaintiff contended that it has been using the Kool trademark with interlocking OO's since 1933; that Capna's use of interlocking OO's was a transparent rip-off of the Kool trademark; and that Capna's use of its Bloom logo was likely to confuse and mislead the public.

DEFENDANT'S CONTENTIONS: Defendant contended that the FDA had announced its intention to ban menthol cigarettes nationwide; that Kool's reputation was that of a company that sold addictive and toxic carcinogens; and that any confusion of consumers was not only unintentional but would likely actually hurt Bloom's brand image and benefit Kool's.

Result

The parties agreed through a stipulated judgment that defendant will be permanently enjoined from use of all plaintiff's interlocking OO's logo or any other mark containing interlocking OOs and/or circles.