Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 1 of 25
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`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`Civil Action No. 1:20-cv-02017-RM
`
`CARRICK-HARVEST, LLC d/b/a VERITAS FINE CANNABIS,
`a Colorado limited liability company,
`
`
`v.
`
`VERITAS FARMS, INC., a Nevada corporation;
`271 LAKE DAVIS HOLDINGS, LLC d/b/a VERITAS FARMS,
`a Delaware limited liability company,
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`MOTION TO DISMISS AMENDED COMPLAINT FOR FAILURE TO STATE A
`CLAIM UNDER FEDERAL RULE OF CIVIL PROCEDURE 12
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 2 of 25
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`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION............................................................................................................. 1
`
`BACKGROUND ............................................................................................................... 2
`
`III.
`
`THE APPLICABLE LAW ............................................................................................... 4
`
`IV. ARGUMENT ..................................................................................................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Plaintiff's Business And Products Are Illegal Under Federal
`Law And Not Eligible For Trademark Protection Under the
`Lanham Act. .......................................................................................................... 6
`
`Plaintiff's Priority Claim Fails As A Matter of Law. ........................................ 7
`
`Plaintiff Fails To State A Claim For Trademark Infringement
`Under the Lanham Act (Count I). ....................................................................... 8
`
`1.
`
`2.
`
`3.
`
`Plaintiff Alleges Facts That Demonstrate No Common Law
`Trademarks Exist. ....................................................................................... 8
`
`Plaintiff Has Not Sufficiently Pled That The Defendant Has Used
`An Identical or Similar Mark In Commerce. ............................................ 13
`
`Plaintiff Has Not Sufficiently Pled That Defendant's Use Is Likely
`To Confuse Consumers. ............................................................................ 14
`
`Plaintiff Has Failed To State A Claim for Violation Of The
`Anti-Cybersquatting Consumer Protection Act Under 15
`U.S.C. § 1125(d) (Count III). .............................................................................. 18
`
`Plaintiffs Are Not Entitled To A Declaratory Judgment
`Because There Is No Justiciable Dispute Between The Parties
`(Count V). ............................................................................................................ 19
`
`Plaintiff Has Failed To State Claims For False Designation of
`Origin and Unfair Competition, and Common Law Unfair
`Competition (Counts II and IV). ....................................................................... 19
`
`V.
`
`CONCLUSION ............................................................................................................... 20
`
`
`
` i
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`

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`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 3 of 25
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013). ................................. 5, 14
`
`Aviva USA Corp. v. Vazirani, 902 F.Supp.2d 1246 (D. Ariz. 2012). ........................................... 11
`
`Bay State Savings Bank v. Baystate Financial Svcs., 484 F.Supp.2d 205 (D. Mass. 2007). ........ 12
`
`Cleary Bldg. Corp. v. Dame, 674 F.Supp.2d 1257 (D. Colo. 2009). .................................. 5, 18, 20
`
`Dalkita, Inc. v. Distilling Craft, LLC, 356 F.Supp.3d 1125 (D. Colo. 2018). .............................. 10
`
`Davis v. Avvo Inc., 345 F.Supp.3d 534 (S.D.N.Y. 2018). ...................................................... 11, 17
`
`Frost v. ADT, LLC, 947 F.3d 1261 (10th Cir. 2020). ..................................................................... 4
`
`Grossman v. Novell, Inc., 120 F.3d 1112 (10th Cir. 1997). ............................................................ 4
`
`In re Congoleum Corp., 222 USPQ 452, 1984 WL 63046 (TTAB May 29, 1984). ...................... 9
`
`In re Florists' Transworld Delivery, Inc., 119 USPQ2d 1056, 2016 WL 3997062 (TTAB May
`11, 2016). ................................................................................................................................. 9
`
`In re Moore Bus. Forms Inc., 24 USPQ2d 1638, 1992 WL 336795 (TTAB Sept. 11, 1992). ....... 9
`
`Kiva Health Brands LLC v. Kiva Brands Inc., Case No. 19-cv-03459, 2020 WL 759409 (N.D.
`Cal. Feb. 14, 2020). ................................................................................................................. 7
`
`Moses-El v. Denver, 376 F.Supp.3d 1160 (D. Colo. 2019). ............................................... 4, 14, 15
`
`Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015). ......................................... 11
`
`Specht v. Google, Inc., 758 F.Supp.2d 570 (N.D. Ill. 2010). ........................................................ 10
`
`Statutes
`
`15 U.S.C. § 1125(a). ..................................................................................................................... 10
`
`28 U.S.C. § 2201. .......................................................................................................................... 19
`
`Other Authorities
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION ....................................................... 6, 18
`
` ii
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`

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`
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`RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 21. ............................................................... 12
`
`TRADEMARK MANUAL OF EXAMINING PROCEDURE .................................................................. 9, 12
`
`UNITED STATES PATENT AND TRADEMARK OFFICE, EXAMINATION GUIDE 1-19 (May 2, 2019) .... 8
`
`Rules
`
`Fed. R. Civ. P. 12(b)(6)......................................................................................................... 1, 5, 20
`
`
`
`
`
` iii
`
`

`

`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 5 of 25
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`
`
`I.
`
`INTRODUCTION
`
`This is an intellectual property dispute based on Plaintiff's Carrick-Harvest, LLC d/b/a
`
`Veritas Fine Cannabis's (hereinafter "Plaintiff") alleged rights in two unregistered common law
`
`trademarks. Plaintiff has attempted to bring claims against Veritas Farms, Inc. and 271 Lake
`
`Davis Holdings d/b/a Veritas Farms (together "Defendants") for trademark infringement under
`
`the Lanham Act (Count I), false designation of origin and unfair competition under the Lanham
`
`Act (Count II), violation of the Anti-Cybersquatting Consumer Protection Act (Count III),
`
`common law unfair competition (Count IV), and a declaratory judgement of superior trademark
`
`rights (Count V). Dkt. No. 25, First Amended Complaint at ¶¶ 36-66 (hereinafter "Amended
`
`Complaint"). Plaintiff filed its initial Complaint on July 10, 2020. Dkt. No. 1. Defendants filed
`
`a Rule 12(b)(6) motion to dismiss the initial Complaint for failure to state a claim on August 24,
`
`2020. Dkt. No. 14.
`
`Instead of responding to the substantive arguments in Defendants' motion, Plaintiff
`
`served its Amended Complaint on October 1, 2020. Dkt. No. 25. Plaintiff's Amended
`
`Complaint, however, does not plead facts for several elements of the claims alleged by Plaintiff.
`
`In addition, Plaintiff's Amended Complaint pleads Plaintiffs out of court by including facts
`
`showing that the Plaintiff does not possess the claimed common law trademarks. Accordingly,
`
`under Fed. R. Civ. P. 12(b)(6), Plaintiff's Amended Complaint should be dismissed in its entirety
`
`for failure to state a claim upon which relief can be granted. Additionally, the Court should
`
`dismiss Plaintiff's Amended Complaint with prejudice because it is clear from Plaintiff's failure
`
`to state a claim in its Amended Complaint that any additional amendments would be futile.
`
` 1
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`

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`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 6 of 25
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`
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`II.
`
`BACKGROUND
`
`Plaintiff is a recreational cannabis wholesaler with a principle place of business in
`
`Denver, Colorado that sells marijuana and marijuana-related products through dispensaries
`
`located in the State of Colorado.1 Defendants understand that Plaintiff's marijuana products are
`
`controlled substances under the Title 21 United States Code Controlled Substances Act. As
`
`such, Plaintiff's products are not sold or offered for sale outside the State of Colorado, are not
`
`used
`
`in
`
`interstate commerce, and are not available for sale on Plaintiff's websites
`
`<veritascannabis.com>. The only products available for sale through Plaintiff's website are hats,
`
`t-shirts, sweatshirts, lighters, ash trays, stickers and other similar items. Amended Complaint at
`
`¶ 9.
`
`Defendants are related companies with principle places of business in Ft. Lauderdale,
`
`Florida doing business across the United States selling cannabidiol ("CBD") products in major
`
`retailers like CVS pharmacy and Kroger. Defendants' products are in accord with the 2018 Farm
`
`Bill and are legal throughout the United States. Defendants' products have been featured in a
`
`variety of well-known publications such as The New York Times, Consumer Reports, GQ, and
`
`Forbes. Defendants' products
`
`are
`
`available
`
`for
`
`sale
`
`through
`
`its website,
`
`e.g.
`
`<theveritaswellness.com>. Defendants sell CBD-related products and hand sanitizer, but do not
`
`sell hats, t-shirts, sweatshirts, lighters, ashtrays, stickers, or similar items.2
`
`According to the Complaint, Plaintiff claims to own two unregistered common law
`
`trademarks, the scope of which cover the entire United States. Plaintiff makes this claim even
`
`
`1 See www.veritascannabis.com.
`2 See www.thevertiaswellness.com.
`
` 2
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`

`

`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 7 of 25
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`
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`though Plaintiff only conducts business in the State of Colorado. Plaintiff alleges its common
`
`law trademarks are the "V Design Mark" and the "VERITAS" mark "for providing information
`
`about cannabis and cannabis products." Amended Complaint at ¶¶ 9-11. Plaintiff claims
`
`Defendants' activities, both inside and outside of Colorado, infringe Plaintiff's rights in these two
`
`unregistered common law trademarks.
`
`On October 6, 2020, Plaintiff made amendments to its initial Complaint.3 These
`
`amendments include an allegation that the sale of products by Plaintiff are separate and
`
`independent from the alleged informational services provided by Plaintiff (¶ 9); two paragraphs
`
`alleging without specificity that the parties' alleged marks and products offered are similar (¶¶
`
`22-23); an allegation without specificity that a customer perception exists that Plaintiff will offer
`
`goods and services currently offered by Defendants in the future (¶¶ 32, 38); and an allegation
`
`without support or specificity that Defendants registered the alleged Infringing Domains in bad
`
`faith to cause initial interest confusion (¶ 52).4 See Dkt. No. 27-1. As will be discussed more
`
`fully below, Plaintiff's Amended Complaint did not fully address Defendants' Motion to Dismiss
`
`for Failure to State a Claim Under Federal Rule of Civil Procedure 12 and Plaintiff's Amended
`
`Complaint fails to state a claim upon which relief may be granted.
`
`
`3 Plaintiff amended paragraph 12 of its initial Complaint regarding Statements of Use filed by
`Plaintiff at the USPTO. These changes are not substantive, however, because Plaintiff's claims
`in the instant matter are based on an alleged federal common law trademark. Dkt. No. 27-1 at ¶
`12.
`4 Plaintiff also amended the initial Complaint to allege its purported common law trademark
`rights arose on or around September 2016. Dkt. No. 27-1 at ¶¶ 51-52. However, as discussed in
`Section IV.B, Plaintiff cannot have trademark rights in its alleged trademarks prior to December
`18, 2018.
`
` 3
`
`

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`
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`III. THE APPLICABLE LAW
`
`Failure to state a claim upon which relief may be granted occurs where the complaint
`
`"fails to state a claim for relief that is 'plausible on its face.'" Moses-El v. Denver, 376 F.Supp.3d
`
`1160, 1170 (D. Colo. 2019) (citations omitted). When considering a motion pursuant to Fed. R.
`
`Civ. P. 12(b)(6), "the Court must accept all well-pleaded allegations in the [] Complaint as true
`
`and view those allegations in the light most favorable to the non-moving party." Id. Although
`
`the court must take all factual allegations as true, it "discards those averments in the Complaint
`
`that are merely legal conclusions or 'threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements.'" Id.
`
`In addition, Rule 12(b)(6) dismissal is appropriate if the Complaint includes facts that
`
`defeat Plaintiff's claims. Where the Complaint "admit[s] all the elements of [an] affirmative
`
`defense," and "'there is no disputed issue of fact raised by an affirmative defense, or the facts are
`
`completely disclosed on the face of the pleadings, and realistically nothing further can be
`
`developed by pretrial discovery or a trial on the issue raised by the defense' it is appropriate and
`
`expedient to dispose of a claim by a motion to dismiss under Rule 12(b)." Frost v. ADT, LLC,
`
`947 F.3d 1261, 1267 (10th Cir. 2020) (affirming dismissal of complaint under Rule 12(b)(6)
`
`based on contractual provision where complaint alleged facts that defeated claim based on the
`
`contractual provision). Where amendment of a complaint would be futile, it is appropriate for a
`
`court to dismiss the complaint with prejudice. Grossman v. Novell, Inc., 120 F.3d 1112, 1126
`
`(10th Cir. 1997).
`
` 4
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`

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`
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`IV. ARGUMENT
`
`Plaintiff had the opportunity to attempt to correct the pleading deficiencies in its initial
`
`Complaint but failed to do so. The Amended Complaint fails to state a claim upon which relief
`
`may be granted as to all Counts. Thus, the Court should dismiss the entire Amended Complaint
`
`under Fed. R. Civ. P. 12(b)(6) with prejudice. Taking all of the factual allegations as true, the
`
`Amended Complaint fails to properly plead facts sufficient to state a cause of action for each of
`
`the Counts. Additionally, in some instances the Amended Complaint pleads facts that, if taken
`
`as true, plead the Plaintiff out of court by demonstrating that the Plaintiff has no common law
`
`trademark rights in either of its alleged trademarks. Because the Amended Complaint fails to
`
`state a claim upon which relief may be granted for all Counts, the Court should dismiss the entire
`
`Complaint under Fed. R. Civ. P. 12(b)(6) with prejudice.
`
`In order to state a claim under the Lanham Act for trademark infringement, the Plaintiff
`
`must allege "(1) that the plaintiff has a protectable interest in the mark; (2) that the defendant has
`
`used 'an identical or similar mark' in commerce; and (3) that the defendant's use is likely to
`
`confuse consumers." 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1238 (10th Cir.
`
`2013) (citations omitted). Similar allegations must be made to state a claim for unfair
`
`competition under the Lanham Act and state law unfair competition. Cleary Bldg. Corp. v.
`
`Dame, 674 F.Supp.2d 1257, 1269-70 (D. Colo. 2009). In order to properly state a claim for
`
`Cybersquatting under 15 U.S.C. § 1125(d), the plaintiff must allege, inter alia, the mark acquired
`
`distinctiveness prior to registration of the domain name, a protectable interest in the alleged
`
`mark, and bad faith intent to profit from the mark. Id. at 1263.
`
` 5
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`

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`
`
`A.
`
`Plaintiff's Business And Products Are Illegal Under Federal Law And Not
`Eligible For Trademark Protection Under the Lanham Act.
`
`Even assuming Plaintiff is entitled to the full scope of the common law trademarks it
`
`claims (it is not), the alleged trademarks are narrow in scope and do not cover the Defendants'
`
`products or business. As a matter of law, the scope of Plaintiff's alleged trademarks do not
`
`include Plaintiff's business or products. The Amended Complaint fails to state a claim for relief
`
`because all of the Defendants' alleged infringing activities are outside the scope of the Plaintiff's
`
`common law trademarks.
`
`As discussed above, Defendants understand that Plaintiff's marijuana products are
`
`controlled substances under the Title 21 United States Code Controlled Substances Act. As
`
`such, Plaintiff's business and products are illegal under Federal Law and cannot obtain
`
`Trademark protection under the Lanham Act.
`
`The Patent and Trademark Office (PTO) views the Lanham Act requirement of
`“use in commerce” as reading “lawful use in commerce.” A sale in interstate
`commerce in contravention of an Act of Congress is therefore not a lawful use in
`commerce and furnishes no basis for federal registration of a trademark on such a
`product
`
`3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:123 (5th ed.).
`
`
`
`Plaintiff attempts to sidestep its inability to obtain Federal trademark rights in its business
`
`and products by claiming to own common law Federal trademark rights in the "V Design Mark"
`
`and "VERITAS" marks for providing information about cannabis. However, even assuming
`
`Plaintiff is entitled to the full scope of the common law trademarks it claims (it is not), the
`
`alleged trademarks are narrow in scope and not relevant to either Defendant's name or product
`
`lines. Plaintiffs would not, on the basis of the common law trademark claim made in the
`
`Amended Complaint, be entitled to an injunction or damages for use of the alleged common law
`
` 6
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`

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`
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`trademark on Defendants' products because the alleged trademark does not cover the
`
`Defendant's products. In other words, even if Plaintiff's common law trademark exists (it does
`
`not), Defendants' activities cannot infringe it because it only covers "informational services," a
`
`service Defendants do not, and are not even properly alleged to, provide. Indeed, it is unclear
`
`what Plaintiff hopes to accomplish with this trademark infringement action, as it cannot prevent
`
`Defendants from selling their products or conducting business using the allegedly infringing
`
`marks.5
`
`
`
`There are no allegations or facts in the Amended Complaint that allege any wrongful
`
`conduct that is not in connected with Defendants' products. As such, Plaintiff has not identified
`
`any conduct by Defendant that could possibly infringe the alleged common law trademarks.
`
`Plaintiff's Amended Complaint fails to state a claim for relief and should be dismissed.
`
`B.
`
`Plaintiff's Priority Claim Fails As A Matter of Law.
`
`In its Amended Complaint, Plaintiff claims that it has been using the alleged trademarks
`
`in commerce "since at least September 2016." However, even if true, plaintiff's alleged common
`
`law trademark rights cannot extend back to September 2016. Prior to the 2018 Farm Bill, which
`
`was signed into law on December 18, 2018, the USPTO refused registration of any application
`
`that identified goods or services encompassing CBD or other extracts of marijuana because such
`
`goods and services were unlawful under federal law. See, UNITED STATES PATENT AND
`
`5 Because Plaintiff's first use of the alleged common law trademark on cannabis-related products
`was use on federally illegal marijuana products, Plaintiff is not entitled to priority with respect to
`the alleged common law trademarks. Kiva Health Brands LLC v. Kiva Brands Inc., Case No.
`19-cv-03459, 2020 WL 759409 at *9 (N.D. Cal. Feb. 14, 2020) ("it is not the law that a federally
`illegal use—even if legal under state law—could support a prior use defense to a federal
`trademark"). Thus, even assuming all of the allegations in the Amended Complaint are true,
`Defendants are the senior user with respect to using the alleged mark on cannabis-related
`products, because Defendants' products are not federally illegal.
`
` 7
`
`

`

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`
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`TRADEMARK OFFICE, EXAMINATION GUIDE 1-19 1-2 (May 2, 2019).6 If Plaintiff would have
`
`applied for federal trademark registration of its alleged trademarks in "providing information
`
`about cannabis" prior to December 18, 2018, Plaintiff's application would have been rejected.
`
`As a matter of law, Plaintiff cannot have trademark rights in its alleged trademarks prior to
`
`December 18, 2018.
`
`C.
`
`Plaintiff Fails To State A Claim For Trademark Infringement Under the
`Lanham Act (Count I).
`
`Despite providing an Amended Complaint, Plaintiff has failed to state a claim under the
`
`Lanham Act for trademark infringement because Plaintiff has pled itself out of court. Plaintiff
`
`continues to allege facts that, if taken as true, demonstrate that no common law trademarks exist.
`
`Applying Plaintiff's own allegations, the claimed common law trademark for "providing
`
`information about cannabis and cannabis products" is not eligible for trademark protection.
`
`Specifically, Plaintiff's own allegations demonstrate that the alleged trademark use is incidental
`
`to the sale of Plaintiff's goods, not used in interstate commerce, and used on a website that is
`
`mere advertising material. Plaintiff also continues to fail to sufficiently plead that the
`
`Defendants have used an identical or similar mark in commerce and that Defendant's use is likely
`
`to confuse consumers.
`
`1.
`
`Plaintiff Alleges Facts That Demonstrate No Common Law
`Trademarks Exist.
`
`Plaintiff claims to own common law Federal trademark rights in the "V Design Mark"
`
`and "VERITAS" marks for providing information about cannabis. Amended Complaint at ¶ 37.
`
`The basis of Plaintiff's claim is its assertion that it has been "providing information about
`
`
`6 Available at https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf.
`
` 8
`
`

`

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`
`
`cannabis and cannabis products" through its website at <veritascannabis.com> since at least
`
`2016. Id. at ¶ 9.
`
`a)
`
`The Provision of Information About Cannabis And Cannabis
`Products Through Plaintiff's Website Is Not A Service That Is
`Protectable As A Federal Common Law Trademark.
`
`It is well-settled law that, "[p]roviding general information or instructions as to the
`
`purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate
`
`informational service," and thus not eligible for trademark protection. TRADEMARK MANUAL OF
`
`EXAMINING PROCEDURE, October 2018 § 1301.01(b)(v). See e.g., In re Florists' Transworld
`
`Delivery, Inc., 119 USPQ2d 1056, 2016 WL 3997062 at **5-6 (TTAB May 11, 2016) (providing
`
`general information or instructions as to the purpose and uses of applicant's goods is merely
`
`incidental to the sale of goods, not a separate informational service); In re Congoleum Corp., 222
`
`USPQ 452, 1984 WL 63046 at **3-4 (TTAB May 29, 1984) (holding that to be a registrable
`
`service, the activity must operate in a way that confers a benefit unrelated to the sale of the goods
`
`and the benefit must be one that is not normally expected of a manufacturer in that field); In re
`
`Moore Bus. Forms Inc., 24 USPQ2d 1638, 1992 WL 336795 at *2 (TTAB Sept. 11, 1992) (paper
`
`manufacturer that rates the recycled content and recyclability of its own products is merely
`
`providing information about its goods, not rendering a separate service to others).
`
`Here, in the Amended Complaint, Plaintiff alleges nothing more than the provision of
`
`information about cannabis and cannabis products on its website, including a blog. Amended
`
`Complaint at ¶ 9. The website <veritascannabis.com> provides general information about
`
`Plaintiff's
`
`products,
`
`their
`
`purpose,
`
`use,
`
`and
`
`selection. The
`
`alleged
`
`blog,
`
`<veritascannabis.com/weed-words> provides general information about Plaintiff's products. See
`
` 9
`
`

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`
`
`e.g., https://www.veritascannabis.com/post/choosing-your-own-adventure ("the latest insights on
`
`the [Veritas Fine Cannabis] brand"), https://www.veritascannabis.com/post/the-standard-is-
`
`excellence ("So Why Choose Veritas?"), and https://www.veritascannabis.com/post/terp-talk-
`
`terpenes-101 ("[Veritas Fine Cannabis] will be sharing an inside look at what we do here at
`
`Veritas Fine Cannabis").7
`
`Plaintiff's provision of information is "incidental" to the sale of Plaintiff's products and
`
`therefore not eligible for trademark protection. Notably, none of the changes Plaintiff made in
`
`its Amended Complaint address this most basic requirement to show it has a protectable interest
`
`in a common law trademark.
`
`b)
`
`Plaintiff's Provision Of Information About Cannabis And Cannabis
`Products Is Not A Use In Commerce.
`
`The Lanham Act requires that a mark be used "on or in connection with any goods or
`
`services" and be used in commerce. 15 U.S.C. § 1125(a). Here, Plaintiff's only alleged use,
`
`providing
`
`information
`
`about
`
`cannabis
`
`and
`
`cannabis products on
`
`the website
`
`<veritascannabis.com> is not in connection with services in commerce. Amended Complaint at
`
`¶ 9.
`
`Courts have repeatedly found that mere provision of information on a website is not a use
`
`of the mark on goods or services in commerce. Dalkita, Inc. v. Distilling Craft, LLC, 356
`
`F.Supp.3d 1125, 1139 (D. Colo. 2018) quoting Specht v. Google, Inc., 758 F.Supp.2d 570, 593
`
`(N.D. Ill. 2010) ("Allowing a mark owner to preserve trademark rights by posting the mark on a
`
`functional yet almost purposeless website, at such nominal expense, is the type of token and
`
`residual use of a mark that the Lanham Act does not consider a bona fide use in commerce.");
`
`7 All accessed on Oct. 14, 2020.
`
` 10
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`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 15 of 25
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`
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`Aviva USA Corp. v. Vazirani, 902 F.Supp.2d 1246, 1259 (D. Ariz. 2012) (finding Defendant's
`
`maintenance of a website was not commercial use where it did not offer goods or services for
`
`sale on the website, contain links to other sites that offered goods or services for sale, and
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`Defendants never attempted to sell the website or domain name); Davis v. Avvo Inc., 345
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`F.Supp.3d 534, 540 (S.D.N.Y. 2018) (provision of online informational directory of attorneys
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`was not commercial).
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`The Amended Complaint does not allege, and Defendants have found no evidence
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`supporting an allegation that, the information provided by Plaintiff are provided in return for a
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`fee or other consideration from the user. See Amended Complaint at ¶ 9. Indeed, there is no
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`assertion that Plaintiff makes any money or derives any commercial goodwill from the mere
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`provision of informational services on its website. Radiance Foundation, Inc. v. NAACP, 786
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`F.3d 316, 326 (4th Cir. 2015) (The mere provision of "informational services" without any
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`commercial or transactional component is not use of an alleged mark on a good or service in
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`commerce). Where, as here, an alleged mark is used to only provide "informational services"
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`without a commercial component, the alleged mark is not protectable under the Lanham Act.
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`Additionally, Plaintiff is not entitled to use the "natural zone of expansion" doctrine to
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`allege a protectable interest in the alleged trademark. The Complaint, by its plain terms, alleges
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`that the CBD products sold by Defendants are federally illegal and therefore not eligible to fulfill
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`the use requirement of the Lanham Act. Amended Complaint at ¶ 29. Thus, Plaintiffs may also
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`not rely upon an intended expansion into the sale of CBD products in their Complaint to support
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`a claim of trademark infringement—a legally prohibited expansion (which is what the Amended
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`Complaint alleges here) negates the application of the natural zone of expansion doctrine. Bay
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`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 16 of 25
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`
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`State Savings Bank v. Baystate Financial Svcs., 484 F.Supp.2d 205, 217 (D. Mass. 2007)
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`(finding natural expansion doctrine did not apply because plaintiff was legally prohibited from
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`entering claimed zone of expansion). Moreover, Plaintiff has failed to allege any basis for a
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`consumer to believe that a Colorado-based marijuana dispensary would expand its offerings
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`nationwide into CBD-related products or allegedly legal smokeable hemp, a requirement for the
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`natural zone of expansion doctrine. RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 21(e)
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`("when the goods, services, or business of the actor differ in kind from those of the other, the
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`likelihood that the actor's prospective purchasers would expect a person in the position of the
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`other to expand its marketing or sponsorship into the product, service, or business market of the
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`actor.") Plaintiff's sale of cannabis products is limited by law to the state of Colorado—there is
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`no basis for any consumers to think they would expand their geographic reach or product lines
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`any further.
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`c)
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`Plaintiff's Webpage Is Advertising And Cannot Establish Common
`Law Trademark Rights.
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`For a webpage to serve as an acceptable use in commerce, there must be a method of
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`ordering goods from the website.
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`[A] web page that merely provides information about the goods, but does not
`provide a means of ordering them, is viewed as promotional material, which is not
`acceptable to show trademark use on goods. … Merely providing a link to the
`websites of online distributors is not sufficient. There must be a means of
`ordering the goods directly from the applicant’s web page, such as a telephone
`number for placing orders or an online ordering process.
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`Trademark Manual of Examining Procedure, October 2018 § 904.03(i) (citations omitted). Here,
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`the Amended Complaint says nothing about selling cannabis, cannabis products, or information
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`about cannabis and cannabis products on the alleged website <veritascannabis.com>. A review
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`Case 1:20-cv-02017-RM-MEH Document 37 Filed 10/14/20 USDC Colorado Page 17 of 25
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`
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`of that website confirms that there is no means to order cannabis or cannabis products directly
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`from the website, and no means to order "information about cannabis and cannabis products"
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`from the website. The website <veritascannabis.com> is thus promotional material, which is not
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`acceptable to show trademark use.
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`In the Amended Complaint, the Plaintiff states that it sells "hats, t-shirts, sweatshirts,
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`lighters, ash trays, stickers, and other similar items" on its website. Amended Complaint at ¶ 9.
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`However, the Plaintiff does not, and cannot, explain how the provision of informational services
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`regarding cannabis relates to the sale of items such as t-shirts, lighters, etc. Additionally, the
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`Complaint does not, and cannot, allege that Defendants infringe Plaintiff's alleged mark by
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`selling t-shirts, lighters, etc. because Defendants do not sell those items. Amended Complaint at
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`¶ 16. The only good or service that the Complaint alleges is relevant to this lawsuit is the
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`provision of "information services"—a service that is not used in commerce as required by the
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`Lanham Act. Thus, because all of the counts require Plaintiff to have a valid and enforceable
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`interest in the alleged mark but the Amended Complaint does not properly make such an
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`allegation, the Amended Complaint fails to state a claim and the Court should dismiss the
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`Amended Complaint with prejudice as to all of the counts.
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`2.
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`Plaintiff Has Not Sufficiently Pled That The Defendant Has Used An
`Identical or Similar Mark In Commerce.
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`Plaintiff claims to own two common law trademarks, namely the "V Design Mark" and
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`"VERITAS" mark for providing informational services about cannabis and cannabis products.
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`Amended Complaint at ¶¶ 9-11. Plaintiff identifies three domain names as "Infringing Domains"
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`in the Amended Complaint but fails to alle