CANNABIS MARKETING ASSOCIATION

Party Like a Marketer Podcast

Episode 7: Intellectual Property Considerations for Cannabis Marketers

Episode Description

Lisa Buffo, Founder & CEO of the Cannabis Marketing Association, sat down with Nicole Katsin, Associate Attorney at Evoke Law, to discuss considerations designed specifically towards intellectual property, which later can help cannabis marketers flourish in the industry. For more information, visit: https://thecannabismarketingassociation.com

 

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Show Notes

Lisa Buffo, Founder & CEO of the Cannabis Marketing Association, sat down with Nicole Katsin, Associate Attorney at Evoke Law, to discuss considerations designed specifically towards intellectual property, which later can help cannabis marketers flourish in the industry. For more information, visit: https://thecannabismarketingassociation.com

 

Read the Transcript

 Lisa Buffo:  Hi, everyone, welcome to today’s episode of Party Like a Marketer. Today’s guest is Nicole Katsin. Nicole is an associate at Evoke Law, who focuses her practice on intellectual property technology and cannabis matters, including trademark and copyright prosecution and enforcement, trademark trial and appeal board proceedings, licensing agreements and internet policies. Prior to joining Evoke Law, Nicole clerked for the honorable Socrates P. Manoukian at the Superior Court of Santa Clara County and served as a legal consultant at MarkLogic. Additionally, while at the University of San Francisco, Nicole held the positions of Editor in Chief of the Intellectual Property Law Bulletin, and Articles Editor on the Board of the USF Law Review. Nicole enjoys writing about a diverse range of legal topics pertaining to intellectual property, cyber technology, and cannabis. Her comment entitled, “Five Stages of Patent Grief to Achieve 3D Printing Acceptance,” was published in Volume 49 of the USF Law Review and has been cited by multiple scholars from top academic institutions. Nicole received her Bachelor’s of Business Administration from Loyola Marymount University in 2012 and her Juris Doctor Cum Laude from the University of San Francisco Law in 2015. Nicole’s professional affiliations include the California Bar Association, International Trademark Association, Bar Association of San Francisco and The International Cannabis Bar Association. When not working Nicole enjoys San Francisco Giants baseball, ballet, tennis, pilates, and jigsaw puzzles.

Lisa Buffo:  Hi, Nicole, and thank you so much for joining us today. 

Nicole Katsin:  Thank you for having me.

Lisa Buffo:  Of course. So we’re really excited to talk to you to learn a bit more about the legal side. We do know that legal issues are of the utmost important in business, but particularly the cannabis industry, because we are still working in a federally illegal space. And there’s so much to consider, particularly when it comes to intellectual property. So really excited to have this conversation today and break down some of the standard things to discuss and most important things for marketers and entrepreneurs to know. So I’d like to start today and first ask you a little bit about yourself. What were you doing before you entered into the cannabis industry and what brought you to the industry? Can you can you tell us a little bit about Nicole pre-cannabis and what brought you here?

Nicole Katsin: Sure. So actually, my whole legal career has been in the cannabis industry. So pre-cannabis, I was in law school. You know, what actually drew me to the industry was that my, you know, husband has Crohn’s disease and used cannabis medicinally and it really opened my eyes to the wonderful properties and uncharted opportunities associated with the cannabis plant. You know, I learned about actually the National Cannabis Bar Association, which is now the International Cannabis Bar Association, and realize that one of the founders, Shadid Malik of the law firm Brandon Branch, was an alumni of my law school. So I reached out to her to see, you know, if she would just meet with me to talk about how to get into the industry and just to chat more about the industry. Not only did she meet with me at that time, but she also hired me to do contract work, and then also introduced me to Mary Shapiro at Evoke Law, who also hired me at that time for contract work and then ultimately hired me full time and that’s where I’ve been for the rest of my career. So yeah, basically, there was no pre-cannabis Nicole. Legally, that’s been my whole world for many years now.

Lisa Buffo:  That’s awesome. And so you’re based in California. Have you been there the whole time?

Nicole Katsin:  Yes. I’ve been based in San Francisco the whole time.

Lisa Buffo:  Nice. Okay. So why did you choose intellectual property law? I admittedly don’t know much about law school. Do you specialize in that in law school and then go into that field? Or is it more general and then you kind of fell into this? How did you get into intellectual property law?

Nicole Katsin:  So I actually started law school with the intent to go into intellectual property law. I know that a lot of people sort of find what they want to specialize in during law school, but for me, it was very focused and I was able to specialize in intellectual property law. At my law school, they had a track that was focused on that, so that was really one of actually one of the reasons why I selected, I graduated from the University of San Francisco School of Law, so they have an IP track. So yeah, I was able to focus on that I was drawn to IP, pretty much for the practice of trademarks and copyrights specifically. Trademark Law really fascinates me because it has to do with the interplay between a consumer and a brand, which I feel has a really unique psychological component of trying to assess how people perceive different brands.

Also, with trademark law, you can have a diverse range of clients in many different industries with having various types of products. So while the laws you apply in the framework for trademark law may be the same, you’re not really looking at the same type of case all the time. It gives you a sort of a broader range of things to look at on a daily basis. And also, trademark law as it pertains to the cannabis industry is particularly fascinating, because there’s so much unknown and so much changing, that there’s little precedent and a lot of room for development and growth, which you know, when you’re going to law school and reading cases from you know, the 1850s uncharted territory, sort of a very welcome welcome thing. So that’s what really drew me to trademarks is that initial, that psychological component and you know, the the way that trademark law can open you up to many different industries.

And even within cannabis, you know, you, we deal with sort of every person on the spectrum of the manufacturing and development processes, whether that’s cultivators, whether that’s distributors, manufacturers, or even other ancillary technology companies, you know. I like trademark law because it allows me to see all these things and sort of be a part of how these brands operate and get their message to their purchasing public.

Lisa Buffo:  So interesting. And yeah, I mean, our audiences, entrepreneurs and marketers, can totally relate to what you’re saying around the psychological aspect because of brand, you know, it’s not it’s not just a logo, it’s a whole look and feel and image that consumers have and associate with feelings when it comes to interacting with your product and how they feel about it. So, it’s interesting to hear that as well, from the legal side. Particular to cannabis entrepreneurs, can you tell us a bit about where you start with them and some advice that you give startups in the beginning in the cannabis industry, when they approach you for help with their brand? What are some of the things that they need to think about, if they haven’t thought about this or if they’re in the early stages, where do you how do you kind of launch them and advise them from the beginning?

Nicole Katsin:  Sure. So typically I sort of launch in with discussing two really important factors. for developing a brand from the legal side, you want to create a brand that’s both distinctive and exclusive. So a mark can be inherently distinctive, or it can become distinctive through extensive and continuous use in the market. So for startups, we’re thinking, you know, typically you don’t have that extensive and continuous use because you’ve just started, so you really want to focus on brands that are inherently distinctive, and trademark law breaks this inherent distinctiveness into three different types of marks. The first type are fanciful marks. Fanciful marks are not actual words, but they’re made up terms, like Starbucks or Leafly. Those are not actual words, but only have been made up and have a connotation that’s associated with the brand. Those are the strongest inherently distinctive marks and receive the best the broadest level of protection under trademark law. The next level down are arbitrary marks, which are real words. So they’re not made up like fanciful words, but they are words that have no literal or suggestive meaning and connection to the product. The classic example in trademark law is Apple for computer products. Apple’s a real word, but in association with computers, it has no meaning aside from what the brand has created. You know, a good example in the cannabis industry is Volcano for the vaporizer. Volcano has nothing to do. It’s a real word, but it has nothing to do with a vaporizer product. So that’s sort of the next level down. Then the third level down are suggestive marks, and these marks allude to indirectly and relate to the product. So examples are, like, Coppertone for sunblock, because it suggests that if you put it on, you, know you will get.. it’s suntan lotion. Or Dreamt for a cannabis vaporizer product that helps with sleep. You know, we’re not saying it’s sleek product, but it’s sort of this mark is suggestive of it sort of indirectly. If a mark falls into one of these three categories, it’s inherently distinctive, and you’re off to a good start. 

What you want to avoid are merely descriptive marks or geographically descriptive marks, because these are really weak legally. So under trademark law, a mark is considered merely descriptive if it describes an ingredient,  quality, characteristic function, feature, purpose, or even use or one particular use of the relevant goods or services. These are like Bagel Bites for a bite-sized bagel stack. Although, I think they probably have developed extensive and continuous use, so that puts them into a different category. But you know, something that’s descriptive of the surfaces isn’t inherently distinctive and not immediately protectable are weak. And it makes them really challenging to register and difficult to enforce against similar marks. So that’s sort of the one aspect of distinctiveness we think about and we advise to start with a mark that is inherently distinctive for your product. The second aspect of that is even if you’ve created a distinctive mark, it must be also exclusive to be strong. So exclusiveness refers to whether there are any other third parties using your particular mark, or even a confusingly similar mark for identical or related services. So when you’re assessing marks that are confusingly similar, the respective marks are considered in terms of sight, meaning, you know, whether the visual impression created by the mark as a whole, sound, the similarities in pronunciation, and meaning, which is the closeness of the sort of commonly understood meaning or dictionary definition, of those particular terms.

It’s really important to remember that exclusivity is viewed in the context of the related goods and services. So in the cannabis industry, if you’re a company, and there are other companies using your mark for if you’re, you know, a vape company and you’re using a mark for, or you find another mark for computers, that is still strong because your vape products are not associated with computers. So those two marks could theoretically coexist. It’s why marks like Pandora for jewelry and Pandora for music can coexist, because the services, the goods and services are so different. So you really want to create marks  that have both those things that distinctiveness and exclusivity, and that’s sort of the schpeel we get all of our new clients, even when we’re just doing consultations. Because we really want to start our clients off on the right foot. And if you’re a startup and you’re just developing or thinking about your brand, those are two really important factors that you should consider before launching.

Lisa Buffo:  That makes sense. And I imagine in the cannabis industry, it can be infinitely more trickier because I know you know, I’m here in Denver and I see the green flower dispensary or the you know, green cross, like there’s so much similarity, I think in branding and marks out here that people want to be clear and say, “Hey, we’re, we’re in cannabis. And we do, we let you know that through our name,” but it feels like there’s probably a lot of overlap. And I would imagine, it’s a bit trickier for cannabis entrepreneurs who are using even the plant in the industry to describe what it is they do.

Do you run into that a lot? Does it seem like more of a of an issue to work with entrepreneurs and help them find something distinct and exclusive? Because of that level of overlap? Or do you generally see, you know, work with your clients early enough in the process to avoid that?

Nicole Katsin:  So we hope to work with our clients early enough in the process to avoid that. You know, we do, I think, I think that thatbrands are moving away from that. I know that maybe established brands that have been in the market for a while because that is a problem. I think we used to see more frequently a few years ago, that, you know, moving our clients away from green or  canna or 420, or the leaf. I, I feel that the brands that have been coming to us recently haven’t haven’t been in that category. So hopefully, the industry is sort of taking the note that you know, when look at a program directory at one of these conferences. And you know, we always say, you know, point to which canna are you and you know, you see a million different cannas it’s it’s really an uphill battle from a marketing perspective to sort of maintain and gain traction to your products. So while it really does it communicates to the consumer that you know you are a cannabis brand your product has cannabis in it.

It’s that needs to be balanced by the fact that you sort of blend in with all the other people in the industry and you know, you might need to invest in things like search engine optimization more than other brands would because your canna brand will necessarily fade into the millions of canna brands that there are out there. Though I do understand why a person might want to, you know, put put that in there mark, because it does do some of the heavy lifting from a marketing perspective, but legally, it’s not as protectable. And it’s also more challenging from a marketing perspective, ultimately, I think as well.

Lisa Buffo:  That makes sense. So what advice do you have for entrepreneurs who are starting out and maybe on a budget? And I know that working with lawyers is definitely a worthwhile investment. But for some in the early stage, it can be quite expensive. Is there a minimum viable product, if you will, or sort of like a very basic starting point that they can enter with to engage with you and other intellectual property lawyers to make sure they’re starting out on the right foot? Or what is the lowest barrier to entry, from your perspective that they have to make sure that they’re working to get their brand protected and that they’re, they’re starting off on the right foot?

Nicole Katsin:  Sure. So I think startups should think about their IP Immediately, and I know it’s expensive to engage lawyers. But you know, it’s even more expensive to deal with a cease and desist letter. And if you have to rebrand once you’ve launched, you’ve already spent money on packaging, website development advertising and not to mention, you’ll have to spend funds on corrected advertising and consumer re-education for your new brand. So the base, the baseline that we would recommend, are to make sure that you are getting clearance, at least, for your new brand, because you will at least have that lens to which view your brand and whether there are any risks associated with going forward with a new brand.

One cost savings tip is that that we’ve experienced is when typically, our clients will consider multiple different marks before engaging a lawyer before engaging lawyer to conduct clearance on all those proposed marks which can get pretty costly because I know at least we charge clearance per mark because each clearance searches different based on the mark, we recommend doing sort of a self-help to see if you can weed out any marks that, you know, you’re considering that are clearly being used by another brand. And these you can do things like you know, simply conducting a good Google search for the proposed your proposed mark and cannabis or your proposed mark and keywords like “CBD,” “hemp,” “vape,” “edibles,” “dispensary,” to see if you can see whether there are any other companies using your proposed mark or a mark that’s similar. So that’s something you can do to sort of narrow your list before going to a lawyer with all these marks and saying, “Hey, are any one of these marks available?” Because again, that can get costly. So if you can sort of weed out any of your proposed marks that by doing these sort of self help practices, that can sort of eliminate some of the cost.

And I’ll emphasize that self-clearance is not really enough to determine that you can use the mark, because you’re not looking at those references from the from the trademark a legal trademark perspective, but it can certainly help you to figure out whether if you can’t use a mark. Also, I think another tip is that brands can stagger protection efforts to sort of spread out costs. So meaning after you’ve done the clearance and you definitely want to move forward and protect your mark, but you don’t want to spend tons of money on making you know filing multiple applications for various different things. Pick one thing that is essential to your brand and because cannabis is still federally unlawful if you’re a, I hate to use the word “marijuana,” but just trying to distinguish that from hemp because they’re technically both cannabis. If you have a marijuana product, we would recommend prioritizing filing a federal trademark for ancillary informational services. And while you may say, “Well, those information services aren’t really essential to my business,” getting federal trademark protection is key, because you a lot of the enforcement, federal trading, what federal trademark protection does, one of the many benefits is that it gives constructive notice about your use of the brand in connection with the goods or services that you’re applying for.

So if you have federal registration for the ancillary informational services related to cannabis, that puts others on constructive notice that you have rights in connection with cannabis, at least information and services that theoretically would be could be extended to actual cannabis products. You have a stronger claim that people should have known about your brand. So if you prioritize, like you don’t need to apply for clothing, you don’t need to apply if you’re trying to save for costs. These are things you could do later down the road if you want it to. But to save on costs initially, prioritize filing federally for something for related to cannabis. federally lawful, of course, and then you can go back and supplement with additional applications as funds permit. Also, you could supplement with state applications later on, too. So I would recommend clearance first, to make sure that you’re not going down a road that you’ll have to read spend more money to rebrand later, and prioritizing your application so that it’s staggering costs.

Lisa Buffo:  That makes sense. That’s, that’s really good advice. And how do you advise entrepreneurs when it comes to this state by state regulations and laws? And I know that there’s been a few brands and dispensaries here in Colorado who they might be operating independently and have a distinct name here. But then they find later down the road, there’s a smaller shop in another state that has a very similar name, but they weren’t able to find them online and kind of catch that in advance. Can you tell us a little bit about considerations at the state by state level when it comes to the cannabis industry and protecting your brand and ways to kind of start to think about that or so entrepreneurs can wrap their head around the issue?

Nicole Katsin:  Yes. So it’s, I will say it’s challenging because for a long time, the cannabis industry, many people didn’t have websites. Many people weren’t advertising their services and goods because they were unlawful. It’s opened up a little bit now. More people are have websites and more people are using social media. So from the start clearance perspective, it’s a bit easier now than it has ever been to kind of find similar sources. But, I mean, your point is, is what we deal with all the time that that’s sort of also a function of, you know, some mistake that we typically see brands that come to us early are, are not really thinking in terms of building a national or even international brand at the outset.

 And cannabis is the industry is evolving, and we’ve had clients that were only selling their product in California and at the time they came to us only really cared about being able to use their market in California, and they could, if it was clear. But then as the company grew, they wanted to expand and you know, partner, potentially with manufacturers at the state, but you know, the clearance search, there was already a brand new using their market in another state. And so you really have to think about we recommend thinking about building your brand in terms of national and Looking at clearance through the lens of a national lens, because brands develop common trademark rights are developed through use and brands, these are called common law rights. And common law rights are generally limited to the geographic area where the products are sold or services are provided. So in your example, the brand in one state has developed common law rights in that state. The other brand in the other state has also developed common law rights. So that, unfortunately, when you don’t sort of either file a federal application to sort of Stake Your Claim nationally in the mark, and you’re just operating on a state by state basis, you might be precluded from entering into that other territory if if there’s already a brand in that state.

 So we recommend that you really think about building a brand nationally even though maybe Be functionally or operationally you’re not there yet. Because it’s a challenge it really is to, to sort of deal with this the state by state operators and to point about trying to find other brands we actually, Mary, my main partner at Evoke Law, and I worked with one of the leading trademark search vendors core search to develop a cannabis industry specific search tool that looks at way more common law sources, you know, for for different brand names then typically necessary because most brands if available will file for federal trademark protection, but that’s not so common in the cannabis industry.

You really have to look at these common law sources. So we worked with them to compile sort of main industry directories different targeting different websites for to look for articles that might have talked about a particular brand. So yeah, that the tool is really good. And we’ve been using that with a lot of our clients. And we’ve had pretty good success with finding good… finding out the common law sources, to advise them about how to grow their brand, either nationally or internationally as well.

Lisa Buffo: And that tool is something you use internally out evoke, like how could people find that and engage with that? Do they come to you?

Nicole Katsin: Yeah, so that’s something that so I’m not sure if core search has subscriptions for  regular businesses, but we use that we have a subscription to the tool and we can order these searches and then we will synthesize and analyze the references and provide a report, a written report to you about what the search found, you know, And sort of what those references that it brought up mean in connection with your brand, maybe, the fact is that there’s so many different brands using your mark that while you could use the mark and no one person owns exclusive rights, again, it goes back to, you’ll have trouble gaining traction and attention to your brand. And if that’s something you can, it’s all about a business’s level of risk and what they’re willing to accept. So, you know, while we provide you with the analysis and information to make those to make those business decisions, ultimately it’s up to the brand owner to decide, “Okay, this is this is what I want to do. I’m married to this name, I, as long as I’m not going to get sued, I want to move forward.” So, you know, the tool is great, and that’s something that you know, we if you came to us and engaged us to help with your brands, and wanted to do that we could order those search and then provide the analysis for you. That makes sense.

Lisa Buffo: That makes sense. So, to sum up what you’ve said, so far, it really seems like doing your research on the front end. What’s the expression an ounce of prevention is worth a pound of cure? So kind of start with the name, do your research there. And then what I want to talk a little bit about is design. So we touched on this a little bit about how with the names but it also seems with design we used to I definitely agree with you that we’ve seen a shift in this industry see a lot of green crosses green leaves, lots of different variations of cannabis leaf, lotus leaves on what what type of problems does that present and ot almost seems like the ideal client for evoke would be one who doesn’t have the name yet doesn’t have the design, but they can come in, do the research, clear the name, then approach design, and then continue to, you know, kind of move forward with their business and their plan. Do you work with entrepreneurs at all and sort of the the logo in the design aspect of things? And what’s the line between the name and the design? And how do you approach that from the legal side?

Nicole Katsin: So we don’t work with, we don’t work with clients to design their marks. If they have design teams that if they wanted to show us a logo and say, “Hey, what do you think is this too, you know, generic, do you think this is protectable?” We will advise but, you know, we won’t sort of help create the design because we’re not the creative people were the legal people. but, I agree that you should definitely have a distinctive design. I think it is important to consider design if you plan to use the design sort of almost instead of your market at some point. So for example, if you have a vape pen product and once you take out the pen on the packaging, instead of having the brand name printed, maybe it only has your logo printed on the on the product itself. So consider how you’re planning to use your brand, whether the logo and the name are separable sort of entities, because if you’re only planning to use a logo at certain times, you do want to have a really distinctive logo. And I then wouldn’t recommend, you know, doing something like a lotus leaf or a cannabis leaf, even if it is, you know, drastically different. If there aren’t, there’s only so many ways you can draw cannabis leaf and color a cannabis leaf before you know it becomes something that’s not looking like a cannabis leaf. So I do recommend thinking about how you’re going to be using your logo and whether they’re separable because that’ll sort of dictate the necessity of having a really, really unique logo versus just having a unique brand name.

Lisa Buffo: That makes sense. And I know to you know, there are certain states, like in Massachusetts, where you actually can’t have a logo that has a leaf on it or across. So there’s even more issues I think when it when it comes to compliance there. So something I want to talk about, which I think you’ve addressed but but would like to hear fresh again is, why is protecting your brand a good marketing decision? And do you have any, like stories or case studies of clients who either have or have not done this correctly? Where you’ve been able to sort of course correct or, or have an example of a lesson learned there? Can you really emphasize for our listeners, why it’s an important and good marketing decision?

Nicole Katsin:   Sure. So I mean, I don’t know if it’s just marketing, but I would just say it’s a good decision to protect your brand. The main thing is that protecting your brand puts people on notice of your claim to the brand and like you said, it’s oftentimes hard for other people to search and find brands. And if they don’t, doing clearance isn’t a legal requirement you have to do. You can’t be willfully ignorant. But if you, you know, if you should have found someone’s brand that really goes against you, and filing and protect buying trademarks nationally and protecting your brand puts others on notice. And that’s really important from a marketing decision, because you could say, “Hey, we’ve been operating for this long, we have a federal trademark unit you should have known,” and legally, that should have known is correct, if you have a federal trademark, you can’t just say you should have if you don’t have a federal trademark, you couldn’t have said you couldn’t say “Well, you should have known,” and the standard shifts and it becomes actual notice.

So it’s really hard to prove that someone actually knew about your brand. It’s also provides a good deterrent effect, because when other people do clearance and they see that your market protected federally, or even if they if state registers have a searchable database, which not all do, but it deters others from adopting a mark that may be identical or confusingly similar to yours. If yours is out there and protected, someone might think twice about coming close to your mark or so it’s easier for people to find your mark as well. So I think that it’s a really good idea for those reasons from the deterrence effect, and putting others on notice, because your brand is everything for your for your business, and you want to make sure that other people, you’re doing everything possible to make sure other people aren’t using your brand. P rotecting your mark is sort of the first line of defense to do that.

Lisa Buffo:  Yeah, absolutely agree with you there. Um, so what do you What’s the biggest difference that you see about working in cannabis versus other industries in terms of trademark law? Is there? I mean, I know you’ve been in cannabis your whole career. So maybe that’s not the best question. But But have you noticed anything particular to this industry worth noting and calling out in terms of this area of law versus, I mean, really anywhere else? I mean, we are working in a federally unlawful space. Have you noticed anything like that in your day to day?

Nicole Katsin:  Yes. So we do have clients that, you know, don’t operate in the cannabis industry as well, although the majority of our clients do. So, I mean, you hit the nail on the head because we’re working in a federal unlawful space. The main difference in the cannabis industry is the inability to obtain federal trademark protection for your actual cannabis products or marijuana products. hemp is a bit different again because of the change in the 2018 Farm Bill, legalizing hemp and giving This specific definition, which is another change I’ll talk about in a minute. But yeah, the biggest difference is the inability to actually protect marijuana products. That is extremely challenging and way different than any other industry. That it’s just this inability to get that protection.

So you have to create different strategies, like I said, by filing something, you know, maybe for informational services related to cannabis because those are free speech and protected under the First Amendment. The other so that’s, that’s the biggest difference and challenge. The other difference, which I’ve talked about already is the higher volume of common law references because most people don’t file federal applications are there many brands that wouldn’t think to do that in the cannabis industry.

So you have this higher volume of common law rights, which is again, challenged From the purposes of clearance, and also this patchwork of state references that you have to navigate legally to know where you can and cannot expand. That’s also a main difference, whereas, because most other brands are able to get federal trademark protection, which grants you a presumption of nationwide rights, you don’t have to deal with this sort of state by state legal approach. So that’s another main difference.

The other the last big difference are the sort of changing laws you know, like I said, the 2018 Farm Bill opened up hemp federally for many people which there’s a ton of CBD products derived from hemp that are now lawful. You know, aside from the whole Food, Drug and Cosmetic Act issues related to ingestible products, you can get federal trademark protection. Now for topical products that contain CBD derived from hemp. So the changing laws sort of reflects changes in the USPTO examination guidelines. For example, the USPTO issued guidance requiring that all goods identifications for these hemp products include a disclaimer in the identification itself, that the products include hemp with a THC content of less than 0.3% on the dry weight basis, and no other industry is required to make these kind of disclaimers in the trademark goods and services identification.

So the cannabis industry is sort of thrown the USPTO for a loop. So it’s much different than basically any other industry that we’ve come across in terms of how the USPTO is reacting and changing sort of their examination procedures, specifically related to cannabis. I mean, I can’t we were trying actually to make this Go back and look to see whether we could make any parallels between trademarks that were granted before prohibition and after prohibition for alcohol, and seeing if there was any sort of interesting overlap we could find. And to date, we have not found any interest, anything that sort of even mirrors what the USPTO is trying to do with cannabis, and sort of wrap their head around this emerging legality.

Lisa Buffo:  That’s really interesting, the alcohol comparison. Did you find anything interesting with that at all?

Nicole Katsin:  Not really. Yeah, not really. Also, it’s more challenging because the records aren’t at that time warner digital, so you only you don’t have much like prosecution trademark prosecution history to look through to see whether there were any issues related to that during prosecution. It was a good idea, but it didn’t really yield anything that we could use, other than the fact that it confirms that this the cannabis industry is throwing the USPTO for a loop.

Lisa Buffo:  Yeah, that’s true. And yes, especially pre-internet and pre digital era. Yep. Um, so what is the biggest disconnect you see between the marketing and the legal sides of the industry Do you in in relation to this issue? Do you deal with that at all? Or see that at all, where maybe you have a client whose marketing team really wants to do this, but you guys, you know, are saying no, that that’s not, you know, probably not a smart move or is is that generally pretty harmonious between the legal and the marketing side when it comes to this area of law?

Nicole Katsin:  So some of the biggest disconnect that we see is related to the adoption of the mark from you know, marketing is pushing, like I said, descriptive marks, meaning using a mark that sort of describes either a function feature purpose, or use of your particular product or service. Marketing sort of wants to gravitate towards using a descriptive mark. And because it does, again, it does some of the heavy lifting initially by allowing the consumer to immediately appreciate what the product is. But from a matter of trademark law, again, like I said, those are not easily protectable marks and they they’re not strong. So, the biggest disconnect we have is that marketing team sort of pushes for this more descriptive mark and we’re saying, “No, you shouldn’t go ahead with that.” That is because you won’t be able to protect it and enforce it against other people that might be using the mark. So that’s one of the biggest disconnects.

Also, a disconnect is that not really fully appreciating that consumers have imperfect memory, and believing that marks that you know might have one letter difference. So if the mark is trees with an S and changing trees to Z, that s to z isn’t an appreciable, not necessarily from a legal standpoint, but not an appreciable difference that a consumer will latch on to. Also, think about marks in terms of, you know, sight sound and meaning the sound portion. If I say, “Oh, I had a really great product from trees,” I’m not going to go back and say, “Oh, no, no, the one with a Z, not the one with an S.” So really  not appreciating those small, small differences often don’t make a big impact That is something that we find that marketing teams don’t necessarily always appreciate.There was one other thing that I thought of, but I can’t remember. But yeah, those are those are the two big differences that we see.

Lisa Buffo:  Yeah, that’s a good point about consumers and imperfect memory, and I think, even adds more to the point about really thinking, how can you be distinctive and unique and create a brand that’s like a new word or something that will have that resonance. It’s like, you know, when you hear Kleenex or Uber, there’s… that’s it. I mean, that’s comes to mind. There’s no confusion there. And I think that’s something the industry will naturally gravitate towards that, but it’s taking some time, because it’s definitely more of an educational gap between consumers in this space. So I understand and see why marketers try to go more the descriptive route but like you said, you know, long term, it’s, it’s probably not the best decision.

Nicole Katsin:  Right? I did remember that. The other thing that we sort of go back and forth marketers on is the text around the product. You never want to use your training. trademark as a verb. So a trademark is something that describes it’s more like an adjective. So it describes the generic product. We often see and get pushback from marketers that want to use their trademark like a verb. But that sort of it, it moves the prod the mark and it makes it subject to like genericized essentially, like Kleenex facial tissue has been, so has had to do so much legwork to maintain the distinctiveness between the the Kleenex Mark being a trademark and Kleenex becoming generic for tissues. So when you use your mark as a verb, or a proper noun like that, and not sort of ever have it in connection with Kleenex, space, facial tissues, in knots making that separate distinction between Kleenex as a brand And facial tissue is the generic product name.

You want to really make sure that you’re never using your mark in a way that it can be considered or potentially fall into generic. Uber is probably having the same challenge now because you could just say, Oh, I’m going to take an Uber as opposed to saying, I’m going to take like a shared ride vehicle or something like that, you know, I say, I’m going to take an Uber even when I’m taking Lyft, or another service. So that’s, that’s a problem that all trademark owners need to be really aware of that. Never want your to use your you always want to maintain that distinction between you have a brand name for a generic product name.

Lisa Buffo:  That’s interesting. And I would imagine it’s similar with Google to where, yeah, you know, I say, I’m googling this and I’m searching something and most of the time it is through the Google search engine. But it that’s such an interesting point because it’s almost like they have become so distinct and unique that they have become the category. But then it clearly is a problem retroactively, if that just becomes the natural association.

Nicole Katsin:  Right? An example actually, escalator once upon a time was a brand name. And now we use escalator to refer to the moving staircase. And that is something that was not able to reclaim their their trademark rights in that and it fall to be generic now. So that’s, that’s the biggest disconnect that we see from the marketing side really is the text around how you advertise your product, and making sure that there’s enough distinction between your brand name and the generic name of the product so you’re not falling prey to genericized, essentially.

Lisa Buffo:  Hmm, that’s so cool. Okay, Nicole just last two questions. Thank you so much. This has been so informative. So have you experienced anything as an attorney in the cannabis industry that surprised you and why? And I like asking this because I feel like many of us who work in this space and who’ve been in this space a while, always have some pretty crazy stories or interesting anecdotes to share as, as we have figured this space out. Have you seen anything you know, as an attorney, or from the legal side that’s just really kind of come out of left field and surprised you? Or has it has it been pretty par for the course.

Nicole Katsin:  So I feel like working in the cannabis industry, you have a very different standard of what is par for the course. I feel like nothing actually surprises me anymore because I’ve I’ve maintained this level of everything’s going to go crazy at all times. And when it does, I’m like, okay, that’s that’s what I expected. So you really have this shadow of things could change at any time, but I will say that one thing that has surprised me is that, you know, typically trademark lawyers don’t really need to get involved in the regulatory process much in the legislative process, because you know, we have our set of rules and we just follow them particularly with regard to trademark law.

But in the cannabis industry, the level of engagement by all attorneys, all industry operators on all fronts is required. And it’s kind of astonishing how, and surprising how the laws, the regulatory regulations, and the laws do really affect trademarks and how a brand Can you know, market itself and advertise. And it’s more, it is surprising how much we’ve had to be part of this legislative and regulatory process through providing comments to proposed regulations. Or even push, you know, trying to push back from the USPTO regulations that they’ve come out related to cannabis applications. So I think that level of engagement is actually something pretty surprising that. That’s something that’s actually truly surprised me about the industry.

Lisa Buffo:  That’s a good point. That is a good point. I do think it’s almost nearly impossible to work in this space regardless, I mean, in marketing as well and not have to pay really close attention to the laws and the regulations and what’s happening politically because it it does have such an impact moving forward. And it’s also exciting to see as we head towards, you know, the end of prohibition, just what that timeline and progression looks like as we’re living it in real time. So, yeah, it’s, it’s cool. You guys are experiencing that as well. Okay, so my last question is, what is your favorite thing about working in the cannabis industry? And intellectual property laws, there’s something that really gets you excited about this space that keeps you up at night. What do you enjoy about it the most? 

Nicole Katsin:  So I think just the newness of it. And you know, like I said, I, you know, going into law school and reading cases from the 1850s, that’s not really interesting. To me, at least, I really, what, what excites me about the industry is that it’s so Uncharted, and that there’s so much opportunity to kind of pave the way. And as lawyers, I really do feel like we have an obligation to not make bad law. And, you know, we’re really careful about how we position things and I really do actually look at what we’re doing through the broader lens of not only is this good for my client, but is good for the industry. Because I feel that if we set if we just get a trademark for our client in any way possible, and it’s not Good, and it leaves something on the record. That’s not good for the industry. That’s not helpful for the rest of our clients.

So I feel that and it’s exciting that this obligation, you know, is available that there’s not precedent out there, and we’re setting it. So I think that’s something that’s the most exciting about this industry for me, the whole, they all also all the changes are frustrating, but also exciting because it’s intellectually stimulating. It’s something new, it’s something different that, you know, we’re trying to navigate for our clients. And there’s also sort of a sense of camaraderie. I feel like in the industry, that we’re all in this together, everyone’s kind of subject to the same, you know, frustrations and challenges. And, you know, as a lawyer, we’re looked to for advice and help and I love helping out people that you know, actually need the help and need the advice and I feel that it’s exciting. It’s exciting and challenging. But I don’t think those words are mutually exclusive. And I really love I love the challenges and the excitement of the industry and the changing nature of it.

Lisa Buffo:  I couldn’t agree more. I feel the same way. And yeah, it’s it’s we’re here for the long run. So it’ll be really fun to see how things evolve and shift and how this conversation will change. Definitely, once it’s no longer federally unlawful, so I look forward to a follow up.

Nicole Katsin:  Yes, we can do a whole whole new podcast.

Lisa Buffo:  Yeah. And how we can all protect our brand. Well, thank you so much, Nicole, can you tell everybody how they can find you and get a hold of you if they have intellectual property needs themselves?

Nicole Katsin:  Sure. Well, Our website is www.evoke.law and you can can email us at IPlaw@evoke.law, if you have any questions. We do offer free 30 minute consultations to see if you want to work with us and we want to work with you. So we’d be happy to answer any questions you have, you know, talk a little bit about your brand what your goals are, and that is how you can contact us.

Lisa Buffo:  You don’t have to be in California to work with you, right? Anybody can reach out?

Nicole Katsin: Yep, anybody can reach out. Trademark Law is a federal practice nationwide. We do also have, you know, for certain state-specific questions we do partner with counsel in other states, if you know specifically if there’s a particular law that we’re looking at, and it’s not California law, but to work with us, you can be anywhere.

Lisa Buffo: Awesome evoke.law to find Nicole and Mary. Well, thank you so much, Nicole. It’s been a pleasure to have you today.

Nicole Katsin: Thank you so much, it’s been great.

 

 

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LISA BUFFO, Founder and CEO of Cannabis Marketing Association

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