For decades, the United States Patent and Trademark Office (PTO) has required trademark owners to comply with sundry non-trademark laws governing the sale of their trademarked goods and services. Pursuant to this “lawful use requirement”, the agency has refused or even cancelled registration of thousands of marks used on everything from Schedule I controlled substances to mislabeled soap. This article subjects the agency’s lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the agency has overstepped the limits of its statutory authority and undermined federal trademark policy. This CLE explores whether a mark owner has used its mark to sell improperly labeled soap or an illicit drug, the PTO has no mandate, and no convincing policy reason, to deny the owner the substantial benefits of registration. Simply put, the agency’s lawful use requirement has no place in trademark law.
This program is eligible for 1 hours of General CLE credit in 60-minute states, and 1.2 hours of General CLE credit in 50-minute states. Credit hours are estimated and are subject to each state’s approval and credit rounding rules.
INCBA webinars are eligible for credit in the following states: AR, AL, AK, AZ, CA, CO, CT,DE, GA, HI, IL, IN, MN, MS, MO, NV, NH, NJ, NM, NY, NC, ND, OH, OR, PA, TN, TX, UT, VT, WV, and WI . Additional states may be available for credit upon self-application by attendees. States typically decide whether a program qualifies for MCLE credit in their jurisdiction 4-8 weeks after the program application is submitted. For many live events, credit approval is not received prior to the program.
INCBA on demand programs are eligible for credit in the following states: AR, AL, AK, AZ, CA, CO, CT,DE, GA, HI, IL, IN, MN, MS, MO, NV, NH, NJ, NM, NY, NC, ND, OH, OR, PA, TN, TX, UT, VT, WV, and WI . Additional states may be available for credit upon self-application by attendees. States typically decide whether a program qualifies for MCLE credit in their jurisdiction 4-8 weeks after the program application is submitted.
For current accreditation status, please select your jurisdiction below.
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Robert Mikos is one of the nation’s leading experts on federalism and drug law. His most recent scholarship analyzes the struggle among federal, state and local governments for control of marijuana law and policy, which includes a first-of-its-kind casebook, Marijuana Law, Policy and Authority (Wolters Kluwer, 2017). In that vein, he has written, consulted, testified and lectured on the states’ constitutional authority to legalize marijuana, the application of the Dormant Commerce Clause to state marijuana markets, federal preemption of state marijuana regulations, the political and budgetary considerations that limit enforcement of the federal marijuana ban, federal law’s influence on state regulation and taxation of the marijuana industry, and the desirability of marijuana localism. He has also written on the states’ constitutional authority to withhold information from the federal government, tactics states can use to deter federal preemption of state regulatory authority, the political safeguards of federalism, accuracy in criminal sanctions, the economics of private precautions against crime, and remedies in private law. Professor Mikos earned his J.D. summa cum laude from the University of Michigan Law School, where he served as articles editor on the Michigan Law Review and won numerous awards, including the Henry M. Bates Memorial Scholarship. After graduation, he was a law clerk for Chief Judge Michael Boudin of the U.S. Court of Appeals for the First Circuit. Professor Mikos has taught at the University of California at Davis, where he was twice nominated for the school’s Distinguished Teaching Award, as well as at Notre Dame and the University of Michigan. He teaches courses in Federalism, Constitutional Law, Marijuana Law and Policy, Federal Criminal Law, and Drug Law and Policy.
Shabnam Malek is a partner at Brand & Branch LLP. Shabnam has a broad practice but takes greatest pleasure in advising clients on how best to grow, navigate risk, resolve disputes, and how to think creatively in balancing business needs and legal concerns. Shabnam is recognized as an expert in the field of cannabis intellectual property and clients and colleagues seek her out for her expertise in addressing particularly thorny and novel legal issues. She’s a creative thinker looking for solutions that help her clients succeed. Shabnam truly enjoys the role of counselor to start-ups, woman-owned companies, large, global companies as well individuals.
Shabnam is a co-founder and the founding President of the International Cannabis Bar Association. Today, INCBA boasts a membership base of over 700 individual attorney members and a strong international presence. She currently sits on the governing board of INCBA and helps plan the educational curriculum of the organization with a focus on INCBA’s flagship event, the Cannabis Law Institute. Shabnam is also the Chair of the PLI Cannabis Business Law program and an Adjunct Professor at the University of New Hampshire School of Law. Shabnam recently joined the editorial board of Law360’s Cannabis Editorial Advisory Board.
In addition to serving the business community, Shabnam developed a robust pro bono practice representing imprisoned women before the California Board of Parole Hearings as well as representing houseless San Francisco residents through the Coalition on Homelessness.
Shabnam regularly speaks and writes on the topics of trademarks, brand expansion, regulated industries such as cannabis and hemp, and the role of women in creating change. Her professional affiliations include holding a seat on the Board of Directors of the International Cannabis Bar Association and a committee role with the International Trademark Association. She is an active member of the California Lawyers' Association, the American Civil Liberties Union, the National Lawyers Guild, the Queen’s Bench, and the Bar Association of San Francisco. Shabnam was named a Northern California Rising Star three years in a row by Super Lawyers Magazine.
Evoke Law, PC
Mary Shapiro, Managing Director of Evoke Law, PC, based in San Francisco, California, is an intellectual property attorney specializing in trademark, consumer protection, copyright, and internet law.
For 20 years prior to her legal career, Mary served in a variety of marketing positions in the book industry, including roles in retail, distribution and publishing. Mary started her legal career in 1999 at Townsend and Townsend and Crew LLP. There, Mary supported businesses in a variety of industries: technology, medical device, pharmaceutical, wineries, non-profit foundations, and consumer products.
Her cannabis practice began in earnest in 2009, offering specialized legal services in intellectual property and consumer protection. Mary strives to assist cannabis operators in selecting strong and enforceable brand names, with her day-to-day work encompassing clearing, filing, prosecuting, enforcing, and licensing trademarks in the U.S. and internationally.
In 2016, Mary rebranded the firm to Evoke Law, continuing to specialize in serving the cannabis industry. By registering brands and enforcing intellectual property rights, businesses are positioned to expand their brands nationally and globally. In the consumer protection arena, Evoke Law guides cannabis operators through the complex compliance issues associated with packaging and labeling, recalls, and advertising. The firm encourages clients to carefully view each decision from the vantage point of its overall marketing strategies and business objectives, as well as the company’s risk tolerance level.
Mary has been a leader in bridging intellectual property law, state cannabis regulations, and the cannabis marketplace. In 2015, Mary was a founding Board member of the National Cannabis Bar Association (NCBA), which now has over 700 active members. She currently serves as the Board Secretary, co-chairs the organization’s worldwide expansion (as the International Cannabis Bar Association (INCBA), and is in a leadership role in the Continuing Legal Education program. In 2016-2017, Mary collaborated with industry advocacy groups and fellow legal colleagues, to persuade the California Secretary of State to allow registration of trademarks for cannabis products and services. In early 2018, with the assistance of a technical advisor and expert witness testimony, Evoke Law provided the USPTO with irrefutable scientific evidence that the mature stalks do indeed produce CBD in appreciable quantities without the commingling from other plant parts, including any ‘resinous’ secretions, which debunked the USPTO’s incorrect internal position on this matter, and resulted in the federal registration of a client’s trademark for a hemp-derived product.
Evoke Law provides pro bono assistance to Marijuana Policy Project, Americans for Safe Access, California Cannabis Industry Association, International Cannabis Bar Association, and Cannabis Marketing Association. Mary is also a First 50 supporter of Women Grow, and regularly speaks at industry conferences including MJBiz, NCIA, CCIA, INCBA, Women Grow, and Emerald Cup.
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