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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, March 28, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide IP counsel on the unique issues that trademark owners and licensees need to consider when licensing a trademark for use in connection with cannabis products. The panel will address legality, state licensing and disclosure requirements, due diligence, and key provisions in light of the nature of the cannabis products. The panel will offer best practices for licensing cannabis-related marks.

Faculty

Frederic Rocafort
Attorney
Harris Bricken Sliwoski, LLP

Mr. Rocafort leads Harris Bricken’s intellectual property practice and is the coordinator of the firm’s international team. He is dedicated to helping businesses from around the world and across industries protect their brands as they grow. Many of Mr. Rocafort’s clients operate in spaces that constitute new frontiers for IP law, such as cannabis, psychedelics, and Web3. Prior to joining Harris Bricken, he worked overseas for more than a decade, in both government and private sector roles. Mr. Rocafort is a regular commentator on brand protection matters and serves as an expert witness on IP-related cases.

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Delfina Homen
Special Counsel
Miller Nash LLP

Ms. Homen is an intellectual property litigator and has represented clients from diverse industries in lawsuits involving patent, trademark, and copyright infringement, trade secrets, unfair competition, and tort and contract disputes. She also advises and represents clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board and patent inter partes review proceedings before the Patent Trial and Appeal Board. Additionally, Ms. Homen uses her advocacy skills and intellectual property knowledge to advise and represent clients in the international sphere, helping clients protect their intellectual property and defend their products with U.S. Customs & Border Protection and the International Trade Commission. She is experienced in IP procurement and enforcement. Ms. Homen has worked on numerous trademark and patent applications, assisting clients in obtaining the IP protection they need to grow and support their business strategies. She has also organized and run large trademark, patent, and copyright enforcement programs for national companies.

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Description

Hemp goods and services may now be eligible for trademark protection, though many CBD products remain unlawful at the federal level. Meanwhile, marijuana continues to be a Schedule I drug, but is legal in an increasing number of states. The legal status of cannabis impacts trademarks and may be problematic for those not in compliance. The complicated legal landscape poses unique issues for those in the cannabis industry.

Some license terms may require the trademark owner to comply with state cannabis laws, including applying for a cannabis permit. Some states may require a trademark licensor to have a cannabis license while other states may have mandatory requirements related the disclosure of the trademark license arrangement. It is important for counsel to be involved in understanding the requirements triggered under state law.

As part of due diligence, licensors need to understand state and local cannabis regulations. As with other types of license arrangements, licensees should confirm the licensor owns the trademark rights, there are no challenges to those rights, and use of the mark.

Listen as our authoritative panel of IP attorneys examines the unique issues that trademark owners and licensees need to consider when licensing a mark for use in connection with cannabis products. The panel will address legality, state licensing and disclosure requirements, due diligence, and key provisions in light of the nature of the cannabis products.

Outline

  1. Unique issues
    1. Legality
    2. State disclosure requirements
  2. Due diligence
  3. License terms
    1. Acknowledgement of trademark rights
    2. Use of the mark
    3. Quality control
    4. Compensation
    5. Legal compliance
    6. Waiver of illegality

Benefits

The panel will review these and other key issues:

  • What are the key contract terms to include in a trademark license for cannabis products?
  • What unique issues do cannabis licenses face? What pitfalls should be avoided?
  • What factors must be considered to minimize risk?