Oakland’s pot equity program withering on the vine

Oct 28, 2018

Wendel Rosen land use attorney Robert Selna is quoted in this article discussing the Oakland Equity Program published October 28, 2018, in the San Francisco Chronicle.



Cannabis Trailblazers 2018

Oct 01, 2018

Wendel Rosen land use and real estate attorney Rob Selna is featured in the 2018 National Law Journal special supplement covering top lawyers working with the cannabis industry. To see the profile, visit page 23 of the online publication.

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Ruling on Acrylamide Brings Breakfast Back to the Table – First Coffee, Now Cereal

Aug 21, 2018

In this Foodlaw.com post from August 21, 2018, environmental and prop 65 attorney Wendy Manley breaks down recent cases covering warning requirements related to acrylamide in breakfast cereals and coffee.

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Cannabis Entrepreneur’s Green Business has Oakland Bureaucracy Blues

Aug 09, 2018

Wendel Rosen Cannabis Practice Chair Robert Selna is quoted in this article published August 9, 2018, in the San Francisco Chronicle.



Trump Food Safety Proposal Unlikely To Have Legs

Jun 26, 2018

[This article was originally published on June 25, 2018 in Law 360.]

Click here to read article "Trump Food Safety Proposal Unlikely To Have Legs" [subscription required], in which Food and Beverage attorney William Acevedo was quoted regarding the topic of Trump administration's proposal to strip the U.S. Food and Drug Administration of its oversight over food safety and assign it to an agency under the U.S. Department of Agriculture under the premise that it would improve efficiency. 


Proposition 65 – Effects on Coffee Producers

Jun 19, 2018

On June 19, 2018, Wendy Manley's article "Proposition 65: Effects on Coffee Producers" ran in Food Safety Magazine.


Sending shock waves through the coffee industry, a recent court decision concluded that coffee sold in California must have a warning that it contains a cancer-causing chemical. The decision in Council for Education and Research on Toxics v. Starbucks was based on California’s Safe Drinking Water and Toxic Enforcement Act, known as “Proposition 65.”  Continue reading >>


Keeping the Peace

Apr 03, 2018

[This article was originally published in the April 2018 Marijuana Business Magazine.]

Click here to read article Keeping the Peace, in which Employment attorney Margaret Grover was quoted discussing the ABC's of Labor Peace Agreements. 



Women in Law Firm Leadership Positions, Part I

Mar 14, 2018

[This article was originally published on March 14, 2018 in Law Practice.]

Law firms’ ramped-up efforts in recent years to increase gender diversity are beginning to pay off. As more women are promoted into leadership roles (but still are underrepresented), individual firms and the broader legal profession are reaping the benefits. So, what is it like at the top? And how can female interested in a law firm management career, whether just starting out or well on their way, successfully make the climb? In this two-part roundtable discussion, six women in prominent law firm positions explore the opportunities and challenges facing women lawyers today and offer practical advice for achieving success.

Click here to read full article Women in Law Firm Leadership Positions, Part l, by Nicholas Gaffney to see what Chief Operating Officer Ginger Wilson has to say. 


Register Your California Cannabis Trademarks Now

Feb 16, 2018

[This article originally appeared in Law 360 on February 16, 2018.]


Any cannabis business that is holding its breath waiting for the United States Patent and Trademark Office to start registering cannabis-related trademarks should give up. The attorney general’s recent withdrawal of the Cole memorandum sent a clear signal that marijuana will remain a Schedule 1 Controlled Substance for the foreseeable future. Thus the USPTO will not be registering cannabis trademarks any time soon. Cannabis businesses located in the increasing number of states that have legalized medicinal and/or recreational cannabis should immediately seek state trademark registration, where available, instead.

The Federal Door Is Shut — No Cannabis Product Trademarks

The USPTO will only register trademarks relating to commerce “which may lawfully be regulated by Congress.” Specifically the USPTO requires that the “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” From In re Morgan Brown, “[t]he fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.”

There’s a Crack in the Federal Window for Cannabis-Related Goods and Services

However, the USPTO has registered trademarks for goods and services associated with cannabis, just not for actual cannabis goods and services. For example, the USPTO registered trademarks for cannabis-collateral products like grinders and vaporizers (“The Original Amsterdam,” “Halcyon Haze”); cannabis-themed clothing (“Ganja Guy,” “Marijuana Monkey”). The USPTO has also registered trademarks for cannabis-related services, such as cannabis directories (“Mellow Pages,” “Fortune420”); advocacy groups (“Legalize Consciousness,” “Women Grow Cultivating Cannabis Entrepreneurs”) and cannabis medical advice (“Perfect Marijuana” and “Seed To Patient”).

By using and registering these marks for their collateral goods and services, these businesses are establishing priority and secondary meaning (for descriptive marks), which may give them an advantage if (when) the federal government relents and the USPTO begins registering trademarks for actual cannabis goods and services.

Defending Trademark Infringement Actions

While the USPTO won’t issue trademarks for cannabis products, cannabis businesses faced with federal trademark infringement actions can still assert the usual trademark defenses, such as fair use and invalidity, as well as assert counterclaims under federal law. In a recent case, a cannabis dispensary was sued by a noncannabis business for alleged trademark infringement. The plaintiff, which owned several federal trademark registrations, argued that since the dispensary’s use of its own mark did not constitute “lawful use” under federal law, it did not have the ability to bring a counterclaim to cancel the plaintiff’s registrations under the federal Lanham Act. The district court disagreed, allowing the dispensary to bring the cancellation counterclaim under federal law.

The State of State Cannabis Trademark Registration

As many states have decriminalized medicinal and adult cannabis use, their secretaries of state have allowed the registration of cannabis trademarks. Colorado, Oregon. Florida, Minnesota, and now California, among others, will register trademarks for cannabis goods and services.

Jan. 1, 2018: California Turned Over a New Leaf

Prior to California’s Proposition 64, California would only register trademarks that were “substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.”

However, Prop. 64 expressly authorized the addition of two new trademark classifications: “500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products;” and “501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.”

In fact, the California secretary of state launched a webpage that serves as a one-stop shop for cannabis businesses: CannaBizfile. CannaBizfile even includes a link to the secretary of state’s trademark and service mark webpage.

As of Jan. 2, 2018, California cannabis businesses are finally able to register trademarks and service marks for cannabis goods and services, including trademarks for specific cannabis strains.

The proposed marks must satisfy the usual registration requirements (e.g., distinctiveness). Unlike the USPTO, which allows an applicant to file an intent-to-use application, California requires proof of actual use in commerce to file and register a trademark. While unregistered cannabis trademarks already in use in California may have common law trademark protection, registration with the secretary of state will confer statewide rights and provide owners with additional protection. For example, businesses with state registered marks can generally block others from using the mark within the entire state, whereas business with unregistered marks may be limited to prohibiting similar marks in the same or nearby geographic locations.

Given that California is the most populous state, that the California cannabis market is projected to reach $6.5 billion by 2020, and that it is currently impossible to obtain federal registration of trademarks for cannabis products, a California trademark registration is the best option for cannabis businesses trying to build their brand and establish priority.



Law 360 disclaimer: The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.


How Will the Feds Respond?

Dec 15, 2017

[This article was originally published in the San Francisco Chronicle on December 15, 2017.]

To read the full article, “How Will the Feds Respond?,” in which Chair of the Cannabis Industry Practice Group attorney Robert Selna is quoted, please click here to subscribe.