Last month, my colleague Alison Malsbury reported on the trademark infringement lawsuit filed by Colorado-based Veritas Fine Cannabis (“VFC”) against Florida-based Veritas Farms. In her post covering the initiation of the lawsuit, Alison explains why the current legal landscape forces plaintiffs in such cases to rely on a two-part strategy of obtaining 1) state trademark registrations for cannabis product that usually don’t apply in the defendant’s state, and 2) federal trademark registrations that protect ancillary goods and services nationwide. VFC had also alleged that Veritas Farms’ cannabis goods fall within VFC’s “zone of natural expansion” – an argument that is quite common but not quite so successful. This week, Veritas Farms filed a Motion to Dismiss on this premise, arguing that VFC admitted in its own pleadings that it does not actually possess the common law federal trademarks it seeks to enforce.
As a refresher, in order to state a claim for trademark infringement under the Lanham Act, the plaintiff must show:
The plaintiff has a protectable interest in the mark; The defendant has used “an identical or similar mark” in commerce; and The defendant’s use is likely to confuse consumers.
1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d