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Can’t Can CANNA in Colorado

Posted by Thomas P. Howard | Aug 12, 2021 | 0 Comments

By James Juo.

A lawsuit challenging the enforceable scope of the CANNA trademark could not be maintained for lack of personal jurisdiction.

Growcentia, a company located in Fort Collins, Colorado, produces a fungicide it sells as CANNCONTROL under the under its MAMMOTH brand name for cannabis growers.

Jemie, an intellectual property holding company located in The Netherlands, owns several CANNA and “CANNA-formative” trademarks. On July 28, 2020, Jemie sent Growcentia a letter demanding Growcentia expressly abandon its CANNCONTROL trademark application and “[n]ever seek to register or use the CANNCONTROL name or mark, or any other name, mark, or domain name incorporating CANN or CANNA' for goods or services related to seed or plant cultivation, nutrition, growth, or care.”

A month later, Growcentia filed a declaration judgment action for non-infringement against Jemie in Colorado federal court, namely, Growcentia, Inc. v. Jemie B.V., Civil Action No. 20-cv-2619-WJM-NYW.  Jemie moved to dismiss for lack of personal jurisdiction.

In a decision dated August 10, 2021, the Court found that the only direct contact Jemie had with Colorado was the cease and desist letter sent to Growcentia's counsel. Under Tenth Circuit case law, “a single cease-and-desist letter is insufficient to confer jurisdiction in a declaratory judgment action.” C5 Med. Werks, LLC v. CeramTec GmbH, 937 F.3d 1319, 1324 (10th Cir. 2019) (citing Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1361 (Fed. Cir. 2001)). “Thus, Jemie cannot expect to be haled into the District of Colorado merely based on the cease and desist letter that it sent to Growcentia's counsel.”

Although Growcentia also alleged there is a regular flow of Jemie's CANNA products into Colorado,  the Court held that analyzing this action under the stream of commerce cases does not help Growcentia because there was no “particular focus” on Colorado by Jemie here. It is not enough that Jemie might have predicted that its CANNA-branded products would reach Colorado as part of a nationwide marketing effort by its US distributor, over whom Jemie does not direct or control.

Accordingly, the case was dismissed without prejudice for lack of specific personal jurisdiction.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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