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