ITG v Capna CD Cal re KOOL v BLOOM dilution, 2:21-cv-00818-ODW(PVCx)(CD Cal June 3, 2021)
Plaintiff ITG Brands owns registrations for the KOOL logo stylized, but also for the interlocking “O”s as separate registrations. Defendant moves to dismiss dilution claim, arguing that whether or not the KOOL logo is famous, the point of similarity, namely the overlapping “O”‘s, is not. Furthermore, dilution is implausible because the marks are so dissimilar.
With regard to whether plaintiff has properly pled that its interlocking OO logo was famous, the court observes:
To be sure, Capna raises an interesting argument—ITGB groups together the
KOOL Marks and KOOL OOs in the FAC as if they share the same characteristics,
when they do not. (Mot. 3.) Indeed, it may turn out that the KOOL Marks are famous
while the KOOL OOs are not. Regardless, the issue with Capna’s Motion is that it
challenges the veracity of ITGB’s pleadings by raising factual doubts, e.g., how much
of the alleged advertising expenditures, sales numbers, and widespread recognition are
attributable to the KOOL OOs as opposed to the KOOL Marks? These questions will
need to be answered, but not necessarily at the pleading stage. Taking all factual
allegations as true, ITGB adequately alleges that the KOOL OOs are famous.
With regard to whether dilution is plausible, the court concludes:
As ITGB and Capna both sell smoking products, it is plausible that
consumers might mistakenly believe that KOOL cigarettes and BLOOM cannabis
products ***originate from the same source*** based on the shared use of nearly identical
interlocking OOs in the middle of each brand’s respective logos. (emphasis added).
Emphasis added to “originate from the same source” because “same source” is a confusion concept, not a dilution concept.
A composite trademark consists of word elements and graphic elements (check out TMEP Section 1213.02). A composite mark vs composite mark can be complex. Notice how in the packaging depicted above, in addition to the composite marks, the graphic elements are prominently depicted apart from the composite as well. And it might be the case, as the court may have decided, that the KOOL mark (or KOOL stylized mark) are famous, but the OO element is not. So it would be interesting.