Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law

Robert Mikos Related Seminars and Products

Professor

Vanderbilt University Law School

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 Related Seminars and Products

Partner

Brand & Branch LLP

Shabnam Malek is a partner at Brand & Branch and founding President of the International Cannabis Bar Association. Shabnam's legal background is in trademark law, and she cut her teeth on all things intellectual property as a “big law” associate early in her legal career. Shabnam has a broad practice but takes great pleasure in advising clients on how best to grow, navigate risk, resolve disputes, and how to think creatively when balancing business needs and legal concerns. Recognized as an expert in the field of cannabis intellectual property, Shabnam’s clients and colleagues seek her out for her expertise in addressing particularly thorny and novel issues. She’s a creative thinker looking for solutions that help her clients succeed. Shabnam truly enjoys the role of counselor to large, global companies as well as smaller startups and individuals. 

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. 

During the launch of Brand & Branch, Shabnam and her law partner, Amanda R. Conley, founded the National Cannabis Bar Association, which recently expanded its reach to become the International Cannabis Bar Association (INCBA). Today, INCBA boasts a membership base of over 600 individual attorney members with a solid international presence. Shabnam and Amanda's vision for the organization was realized in the organization's flagship, annual two-day legal educational event, the Cannabis Law Institute. Shabnam is also the Chair of the PLI Cannabis Business Law program. Shabnam and Amanda also co-founded the Bay Area chapter of Women Grow in 2014.

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, membership with the International Trademark Association and California Lawyers' Association, where she serves on committees, and memberships with 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.

Mary Shapiro, JD, MBA Related Seminars and Products

Of Counsel

Crown, LLP

After 20 years in the book publishing industry and ten years at the renowned intellectual property law firm Townsend and Townsend and Crew, LLP, I started my own law firm in the heart of San Francisco’s Financial District in 2009. From there, I joined forces with another boutique powerhouse IP Law firm, Crown, LLP. With Crown, I counsel a broad range of clients in owning, enforcing, protecting, and profiting from their intellectual property.

Law is my second career, and I am passionate about protecting brands and creative properties. I have extensive experience in trademark selection, clearance, prosecution, and enforcement, including handling trademark applications before the U.S. Patent and Trademark Office (USPTO), and representation in proceedings before the Trademark Trial and Appeal Board (TTAB), and Uniform Domain Name Dispute Resolution Policy panels.

As the legal cannabis industry began emerging, I was able to start at the ground floor and strategize about how to obtain federal trademark registrations for cannabis goods and services. I've positioned my work at Crown as a go-to legal resource to cannabis clients as the industry grew, helping them navigate complex legal issues, such as securing trademark protections for related goods and services. I am also very active in the battle for federal legalization, or simply a change at the United States Patent and Trademark Office, so that owners of cannabis businesses can be on the same footing as other business owners regarding their capabilities to protect their brands.

I advocate for cannabis legalization and often do pro bono work for Americans for Safe Access, International Cannabis Bar Association, Marijuana Policy Project, Origins Council, and Sweetleaf Collective. I am on the board of directors for Americans for Safe Access, an organization dedicated to bringing access to cannabis therapeutics to patients. I am also on the advisory Board for the International Cannabis Bar Association, an organization focused on raising the standard of legal services available to the cannabis industry and advocate for the lawyers’ right to represent cannabis industry participants.

Specialties: State, U.S. and International Trademarks (Clearance, Prosecution, Enforcement and dispute resolution, Brand and technology Licensing), Cannabis consumer protection (Trademarks, Packaging and Labeling, Recall Plans), Trade Secret Plans, Copyright, Domain Name Disputes, Internet Policies, New Top Level Domains