DP&F Announces Official Launch of Cannabis Practice Group
Dickenson Peatman & Fogarty (“DP&F”) announces the official launch of its Cannabis practice group. This group offers a specialized, full-service approach to serving the business needs of clients navigating California’s increasingly complex cannabis industry.
DP&F has a 50-year history of representing businesses in regulated industries, including the alcohol beverage industry. For the past few years, the firm has been advising clients regarding compliance with state and local cannabis regulations and on the potential for creating geographic indications for regions in which cannabis is cultivated. DP&F’s broad experience in advising clients on legal strategies where land use, intellectual property, business, employment and regulatory issues intersect gives its attorneys a sophisticated, integrated framework to address the complex regulatory framework impacting new entrants to and existing operators in the cannabis industry.
Erin Carlstrom, Senior Counsel, will lead the DP&F Cannabis practice group based out of its Santa Rosa office. Carlstrom worked in cannabis compliance and land use at her previous firm, specializing in government relations and permitting. She has ushered statewide clients through major projects, from incorporation to operations, and has been responsible for obtaining entitlements all over California. She served on the Santa Rosa City Council from 2012-2016 where she served as Vice Mayor, and twice chaired the Cannabis Subcommittee, positioning Santa Rosa as one of the state’s most progressive jurisdictions for cannabis regulations. She obtained her Juris Doctorate from Pepperdine University and her undergraduate degree from Yale University. Carlstrom lives in Santa Rosa with her son, Adlai.
“Every day, DP&F attorneys serve clients who operate in highly regulated industries. We are experts in the alcohol beverage industry and given the breadth and depth of our practice, we are set up to serve the cannabis industry seamlessly. We are thrilled to have Erin, an attorney with significant and successful practical experience, spearheading our efforts to provide effective and thoughtful advice in this area,” says Carol Kingery Ritter, one of DP&F’s managing partners.
USPTO Makes Cannabis Trademark Go Up In Smoke
This past week the Trademark Trial and Appeals Board of the U.S. Patent and Trademark Office issued a blow to cannabis businesses attempting to protect their brands. In a precedential decision, In re Morgan Brown (click here for full decision), the Board affirmed the refusal to register the mark HERBAL ACCESS for “retail store services featuring herbs.” The HERBAL ACCESS trademark application was submitted by a Washington State cannabis dispensary operating a lawful business under Washington State law. Although the application was not for goods or services which explicitly identified “cannabis” or “marijuana,” the Trademark Office examining attorney determined that the “herbs” being offered for sale by the applicant were in fact marijuana. Thus, the examining attorney rejected the HERBAL ACCESS application on the basis that the use of the mark in commerce was not “lawful,” due to the fact that the retail sale of marijuana remains illegal under federal law, regardless of Washington State law which permits it. The Board affirmed this analysis, stating that the lawfulness of certain services or goods identified in a federal trademark application is determined under federal law.
The Board made two important points in its decision which potential applicants for cannabis-related brands should note. First, the Board made clear that while an application may broadly describe goods or services in a way which does not explicitly identify “marijuana” or “cannabis” the Trademark Office is not precluded from using external evidence (in this case the applicant’s website) from concluding that the identified goods or services encompass cannabis. Second, the fact that an applicant’s goods or services are lawful pursuant to a particular state’s law is irrelevant to the Trademark Office’s determination of whether those goods are lawfully being used in commerce. Unfortunately for cannabis businesses, that determination is to be made under Federal law, and nearly all state law compliant cannabis businesses remain illegal under the federal Controlled Substance Act.
While it appears that cannabis businesses remain precluded from obtaining an above-board federal trademark registration for cannabis goods and services, some of the states in which cannabis is legal do allow a state trademark registration for cannabis and a federal trademark registration will issue for goods and services under a cannabis brand which are not directly illegal (e.g. clothing). But for now, cannabis businesses clearly have an uphill battle in protecting their brand at the federal level.