Higher Law: Protecting Pot Brands | Cannabis Banking Updates | Plus: Who Got the Work
What's on tap: The tricky task of protecting intellectual property tied to cannabis. Also, everyone's talking about the problem of banks shunning the marijuana industry, but what's the solution? Welcome to Higher Law.
May 24, 2018 at 04:00 PM
4 minute read
Welcome to Higher Law Cheryl Miller Got a great tip or story idea? An M&A deal to crow about? Drop me a line at [email protected] or call 916-448-2935. Follow me on Twitter at @capitalaccounts.
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Protecting Pot Brands: The IP Perspective
Harris Bricken Michael Atkins Alison Malsbury John Mansfield Here are six takeaways from their conversation:
- You can't get a trademark for cannabis products. But you can seek federal protection for ancillary goods, such as t-shirts and rolling papers. And maybe you should, the lawyers said. Trademarks for those items might provide a useful "toehold" if marijuana is ever legalized at the federal level, Atkins said. "You may want to nibble around the edges," he suggested.
- Pursue state trademarks where available, the lawyers advised. Some marijuana-legal states are offering mark registrations. Their protections are limited, but again, they're another potential toehold in the industry.
- You can't get federal trademark protection for CBD [cannabidiol] products, and U.S. Patent and Trademark Office scrutiny of such applications has really picked up in the last six months or so, Malsbury said. The ban covers CBD derived from industrial hemp, too, something that may be worthy of a legal challenge—if a client is willing to endure the appeal process, Malsbury said.
- Cease-and-desist demands based on brand dilution and tarnishment are plentiful but defeatable. "My argument in response has always been that you're brand isn't famous enough to claim dilution," Malsbury said. "And then we fought the tarnishment argument with facts, things like public approval for cannabis and the fact that it's legalized in all these states." Malsbury said she's never had a client lose a dilution or tarnishment claim, "but they're definitely being made."
- Don't get too cute with a brand name. "Mimicking famous candy brands, mimicking M&Ms or Reese's Peanut Butter Cups and making your product's packaging look like a famous brand, it is kind of funny to a point," said Atkins. "But the famous brands are on very secure footing in saying 'Knock that off.'"
- Get a brand prenup. Mansfield said he does a lot of cannabis divorce cases. "They have to do with, 'We have a business, we have a cool name and now we've split up'—and believe me this happens a lot—'Who gets the name?'" Get an agreement before things go south, Mansfield said, "and you can save yourself a lot of heartache."
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Catching Up: Cannabis Banking
Joann Needleman Clark Hill the Catch-22 situation Duane Morris Seth Goldberg the problems that ensue Everyone, including banks, is looking for a legislative fix. legislation on the federal level here to create closed-loop state-chartered banks
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Who Got the Work
Greenspoon Marde The Liaison Group firm co-founder Gerry Greenspoon said Acreage Holdings Optimus Partners according to NJ.com partnering with Compassionate Care Foundation |
In the Weeds...
Billy Williams The Oregonian Danielle Schumacher Associated Press The National Cannabis Industry Association NCIA William McDevitt Wilson Elser Moskowitz Edelman & Dicker The Legal Intelligencer The New York Times
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Mark Your Calendar: Upcoming Events
May 30-June 2 Cannabis World Conference and Business Expo David Feldman Ryan Sullivan Sandra Gogal Miller Thomson LLP May 30-31 CannaMexico World Summit June 1
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Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
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