Darshan
Hey everyone, welcome to the DarshanTalks podcast. I'm your host Darshan Kulkarni. It's my mission to help you trust the products you depend on. As you may know, I'm an attorney. I'm a pharmacist and I advise companies with FDA regulated products. So if you think what drugs, wonder about medical devices, or even consider cannabis or obsessive pharmacy is the podcast for you? Do I have to have to emphasize my guests and I are both lawyers. So this is not legal advice. I'm also a pharmacist. This is not clinical advice. I do these for educational reasons. So if you like these video podcasts, and I think they're a lot of fun, I find myself learning something new each time. So if you if you like something that you're listening to, please like leave a comment. Please subscribe. If you think people might learn something. Please share. If you join the conversation. You think that there's something interesting, we discussed, please, please ask questions. We'd be happy to pull them in if we can. If you want to find me, you can always reach me on DarshanTalks on Twitter, or just go to our website at DarshanTalks calm. Our podcast today. Our livestream today is going to be about trademarking. Our guest is the partner is a partner at Duane Morris. She the team lead for the firm's fashion retail consumer branded products industry focus group. And she's the vice chair of the firm's wins program, which is the Women's Network program. She can be reached and I want to point this out she can be reached at sea Campbell at Duane Morris calm. Our guest today is Sam Campbell. Hey, Chris, how are you? I'm good. How are you? Good. Good to see you. Good to talk to you. It's been a pleasure. Pleasure. So let's talk a little bit about things that are going on one of the things that that was really interesting to me before we start jumping in, was you talking about how you're getting more involved in cannabis litigation, which I think is fascinating. Because as I was telling you before, right before we got on, you saw the odd cannabis litigation going on before, but everyone I'm talking to is talking about that right now, is there a reason for the recent buzz, or good
Christiane
Um, I think it goes back to maybe kind of was accelerated by what we call the New Jersey effect. So the level of New Jersey's legalization really had an impact on not just the tri state area, but the Mid Atlantic region. So in terms of legalization of cannabis, any given day, you look at the kind of the map of where you have some level of legal cannabis use, whether it's medical, or recreational, or both. The map originally kind of looked like like a hamburger, where the the legal is the legal areas where the buttons and then the middle of the country was really not didn't have a whole lot. So you had like a very, very mature market in California or again, Colorado, Washington, Nevada, and then you had Massachusetts, Florida and then the East Coast kind of filling in and and when New Jersey came online, it really impacted New York, Connecticut, Pennsylvania. So I think what we're seeing is and you and I have talked about this, this this marching toward federal legalization, or you know, so many different changes and filling in the middle United States where there will be some level of legality. I think more and more companies, entrepreneurs, investors are recognizing that this is going in that direction. Um, so getting into the cannabis space still feels I think, early and new to a lot of people, but the markets getting more and more mature, especially in California. And I think it's it's just an it's a bill, it's a buzz that's going to continue to build until we get there. So I think that's probably partially behind the buzz. You know, there's more and more in terms of, you know, looking at federal legality being down down the pike. And I think that's really legitimized. You know, we have what we call the legacy market, which was kind of the underground and illegal, and there's more and more mainstream, probably because of the the medical, medical cannabis industry, mainstream uses that are becoming less, less. The stigma is going away a little bit, I think, in that
Darshan
that's kind of interesting. The way you phrase that, which is you're talking about this anticipation that the rules are going to change. Have you obviously there is a market sentiment that supports that? Have you seen anything that suggests from a legal perspective, that's actually going to happen? Yeah,
Christiane
um, the farm bill is one way, which is I mean, it's old news now but the Farm Bill is what really opened up the floodgates for so much CBD you know, kind of and and there's talk of D scheduling the, the marijuana aspect and that would really make a lot of changes because then you wouldn't have marijuana falling under the Controlled Substances Act, it wouldn't be a schedule one drug. So although I have to say there is definitely a recognized need for there to be regulation, I mean, you have Alcohol, Tobacco, Firearms, a lot of these types of things that have to be regulated from a federal level, or at least a state level. And that's, that's not going to go away. nobody's saying, well, let's just open the floodgates and everybody, it's a free for all, but that's not gonna happen. But, um, so from a legal perspective, you know, I think, not necessarily starting with the Farm Bill, but that's something at least in my world, with with trademarks and branding, I really noticed made a significant change and really propelled the industry forward it, it created a lot of snake oil. And a lot of BS to wade through I guess you could say, but, but has certainly changed the market, increase the number of products there on the market, which, you know, heightens the need for branding and distinct branding.
Darshan
It's interesting, you mentioned this, the concept of snake oil and the concept of branding and how that sort of coming all of its coming together, because obviously, branding plays a huge role in what, what people buy and the impacts are off. Are you aware of the FDA, and there's no reason for you to be I just want to be clear, but are you aware of the FDA has recent guidance on intended use?
Christiane
Well, I do know, FDA is looking at CBD as potential drug and therefore, to the extent that it's being investigated for its drug benefits and drug uses. It it presents challenges for me again, in my world with trademarks, because that means that your your use of a trademark on a CBD product, because it's under investigation by the FDA falls within the purview of the ftca and makes it technically unlawful use if it's in general commerce. So that's kind of where the trademark and brand interplay is with with the FDA and FTC II.
Darshan
Yeah, the reason I'm saying this is the FDA came up with a recent guidance, literally, it's been in play for about three or four years. And the key piece that's come out for those people who aren't aware, it's literally happened within the week. So for people who aren't aware, it's not like you've missed something huge. It's a huge thing. But it's one of those things that you'll see more come out as we continue. But the FDA definitely winked and nodded at the CBD and the cannabis industry in general, basically saying that, you can't hide behind disclaimers. And you can hide behind saying things like, oh, not intended for drug use, but use for XYZ purposes. So what I expect as we continue, is this idea of the FDA getting more and more into what claims are you making and are these claims just within the state, in which case, the FDA might say that we're going to practice jurisdictional discretion and enforcement discretion, if you will. Alternatively, if it starts crossing interstate lines, which a lot of these companies are thinking about, considering as you're, you're well aware that it's going to become a huge issue as we continue so so I guess my question for you is, do you advise companies in the cannabis space with that view in mind or is that so unclear and murky right now that you're kind of going to look let's start with the rules right now work with that we'll have to keep adjusting as we continue
Christiane
a little bit of both. So um, you know, on the branding side, you know, branding is more than just picking a name and a logo, it's it's your colors, it's your packaging. Everything about how you how you bring yourself to market like you look like on a store shelf. And at least in terms of packaging, you know, the labeling is really important. So it is something that clients you know, they have to be aware of familiar with, get guidance on it also be prepared to be flexible. Different regulations, you know, obviously the FDA but every state has different guidelines and regs in terms of what what your packaging has to say what what has to be on there from a again trademark branding standpoint, with the with the labeling and contents and source and things like that is really important because of how much the CBD became so popular especially. And you have a lot of mislabeling happening. I mean, trademark laws are in place for the purpose of consumer protection and anti competition or, you know, preventing unfair competition. So when you have things like incorrect labeling, not only is that a consumer issue, you know, from from dosing standpoints, I mean, a lot of times You have in the pharmaceutical Arena in the medical arena, you have doctors that are prescribing a certain amount of cannabis to a patient. And if if the concentration is incorrect on a label, or if the if the dosing is incorrect and things like that, that's really a consumer issue as well. Um, but some of the disputes over no packaging, labeling, concentration numbers and things like that are coming about in a false advertising under false advertising theories, because you might have a company that is not really putting the resources into its concentrations, and it's sexual product, but they're saying it's more concentrated than it is or it has more of this or has less of that, or whatever it is. If that's not accurate, again, there's the consumer protection issue, but also it's false advertising. So.
Darshan
So as a trademark lawyer, how often do you? So I'm going to try to try to phrase this properly. There are, there are certain clients I've had who go stay in your lane, I'm asking you to do this x job, work on this x job. And then there are other clients who go, No, I, I need you to point out things. expansively that might impact as a trademark lawyer, do you struggle with clients are saying, I'm not asking you to tell me if my percentages are wrong? All I want from you is does this label Make sense? What is your perspective? How do you advise clients? Do you do you have trouble staying within Lane? I'll be honest, I I tend to land up a painting Outside the Lines every so often, if you will. But I'd be curious about what your take is.
Christiane
It depends on the client. Yeah, yeah. And a lot of times when a client tells me, I don't hear it often, I shouldn't say if a client. In general terms, if a client says to a lawyer stay in your lane, it usually means they don't want to pay for advice that falls outside of you know that the lawyers error of expertise. Um, I have to say, I think my my clients and I are aligned, every, every clients different, every client's intentions, every client's goals with respect to market are different. And I and I, like I pride myself in getting to know my clients very well and understanding what it is they need from me. If that if a client has internal marketing people, I'm certainly not going to step on toes. But if a client comes to me with a, you know, an idea for a brand, and they've asked me to clear it, if I only look at, you know, what are the what are the issues with respect to use of this brand and registration of this brand? From an office standpoint, like are they going to get an Office Action from the US Patent trademark office, if I only look at that, and I don't tell the client, hey, you know, this really may not sit well with a particular community or group of people. If I don't advise them about potential PR issues, then I don't think I'm doing my job. I don't know that a client would come You know, launch and then come back to me later and say, You didn't tell us that, you know, Twitter verse was going to explode when we use this tagline or slogan, because it offends you know, certain group of people. But I don't think I'm doing my job. If I say yeah, you're clear for use and registration of this brand, without considering the the market aspects as well. Um, you know, if a client specifically says to me, our marketing, people are looking at the ad copy for purposes of, you know, marketing and claims, and if it's a social media launch, they're making sure everything has the sponsor, and the right hashtags and all if they tell me they're working on that fine, but I'm generally speaking again, I like to take a holistic approach, and I don't think I'm doing my job. If I tell a client, yeah, go ahead and use this brand. Because it's clear from a trademark standpoint, I think it needs to be, you know, I need to be aligned and understand my client's goals. You know, with scope of launch, I need to understand in what jurisdictions they're gonna plan on using a particular mark, and it may be different jurisdiction to jurisdiction as to what sits well with the general public and what doesn't.
Darshan
So so let me let me pull you into a question that very topical right now, which is this idea. I don't know if you do you know, Meghan raffinose. Yes, she's okay. So she's considered a very woke individual and and she's the current chair, believe the face for some way. And I just read yesterday's news or I can't tell you more, because the days seem to all just come together within this week. Apparently, the subway owners are saying that after the Olympics, they don't want Megan to be the face. I've no idea if that's accurate or not, but I just saw that name. And my question to you is when you're clearing individuals can create can you actually Tie. When when you get spokespeople how from a trademarking perspective, from a control of the look perspective, how do you do that in a way that's, that doesn't come back to haunt you. I think I'm thinking specifically, of I forget, I think it was a Verizon guy, who then went out and worked for I think was T Mobile. And I'm not getting a company perspective, this but advice perspective, how do you ensure that a you choose the right representatives be their trademark process associated with it? And see, how do you control that appropriately?
Christiane
That's a really, really good question. There's a lot to unpack there. Um, one, you know, we always say I learned something new every time I do these, I did not know that Megan rapinoe was doing subway that's that seems odd to me. Um, but very topical, I do have a client that is, you know, tends to be very trendy, and is very much about staying up on the social media, they get involved in Twitter wars with their competitors, and is an iconic global restaurant brand. So when they select people to partner with, if it's somebody that is so so hot, trend wise, whether it's in the music industry, or as you know, sports athletes, um, we have to look at, and I rely very much on my team that's younger than I am. And that is very up on like the tick tock and the Instagram and I follow who I follow, but like, I find that I'm, I'm like years behind them on some of the things we have to be really familiar with, kind of the message and you know, what, what content, this particular celebrity or particular athlete, whatever it is, is putting out and what they're really about and what their image says, because it might not fit with our client's brand. Um, it might turn off certain of their loyal consumers that happen to be older, or maybe younger, or there's so much that's important in terms of communicating, not creating, you know, the perception that, you know, I know there's a number of brands that have done it, but you know, latch on to a particular individual or have certain policies that that may offend others. I'm trying not to go too much into specifics, cuz I don't want to, you know, but but we do, you know, from a trademark perspective, it's not so much the, the trademark from like the Lanham Act and the filing with USPTO aspect, it's, what does the clients, what's the client's brand about? And does this athlete or does this singer fit with their brand messaging? And sometimes the answer is no. And sometimes clients don't want to hear no, because they really want to go after like the hottest rapper of that day or the hottest Crocker of that day. And, um, you know, they want what's hot, but I have to remind them what, you know, you might spend a lot of money for this, and it's not going to have a very long shelf life, sometimes they don't care. But to have, you know, the hottest Athlete of the day, endorsing your brand or working with you or partnering with, you know, six months after they've won particular championship or something. It might get stale, and you've invested a lot and how much bang Are you getting for what you're investing in a particular celebrity, um, and then there's, you know, you can't control what some of these celebs say, on social media. They really understand you know, what it is, they're about, you know, you can't have somebody that's going to be going off and dropping really foul language, representing a brand that is also, you know, communicate with kids and yeah, your generation so.
Darshan
So So let's say, you choose x athlete, right. My first question would be when you're communicating with the athlete going, look, I'd really like you to be part to be our brand representative. But I don't want you to turn around tomorrow and be the representative for the, for the next Brian. I forget what Dave Chappelle actually said this and I was watching one of his comedy shows, he's like, Look, I I was paid by both Coke and Pepsi. And recently I'm being paid by Pepsi. That's what I'm supporting right now. But that does not send out the message you wanted to send. So guys from a trademarking perspective, from brand control perspective, as a lawyer, how do you go to a Dave Chappelle? And obviously I don't know if you represent Him, or even anything associated with them. But how do you tell Dave Chappelle who has his or his own sort of control? Luckily, we can't have you do this? Like do you have contracts in place like what do you do to control this?
Christiane
It's all about negotiating power. So first of all, you're never going to be talking to Dave or the athlete or the celebrity it's always there. People you know, talk to more people. And they usually have a, it's a sliding scale, um, you know, the more celebrity and brand power celebrity power somebody has, the more negotiating leverage they have. So, you know, Dave Chappelle, obviously is very desirable. So if you're gonna approach this people probably comes with a pretty high price tag and a very, very little wiggle room in terms of negotiating his contract. And he's, I don't want to say he's a loose cannon, but he may not be somebody who want to, you can control or they want to control. It would be you know, clauses in a contract that say, you know, you if you're endorsing this brand, you can't endorse these competitors, you can't, and it's got to have a certain amount of time. You know, a little bit you have to play to the emotion of the celebrity or their people and say, well, doesn't it look bad for them, if they endorse Coke, this week, and then, you know, three months later endorsed Pepsi, they're gonna start to look like they're, you know, a hired gun at, you know, there's, there's other words for it, but they're going to look at like a little bit of a sellout, like, oh, I'll take whatever, you know, money ever. Um, so not only is the branding disingenuous, because it's like, Well, okay, it's kind of like influencers, when they start to really, I don't say sell out, but they get big, it's like, wait a minute, they're losing a little bit of the personal touch that they had with what they were endorsing, originally, now they're being paid to do it. And I think consumers, you know, the woke consumer is starting to recognize that so um, you know, you're going to be talking to their people, you're going to be looking at a contract, you're going to want to have negotiating leverage, and the more desirable the celebrity, the less leverage you're going to have. And controlling what they do on Twitter, controlling what they say on Instagram post on Instagram, it's it's virtually impossible. And the more control you trying to exert, the less attractive you're going to be as a brand that that they would endorse.
Darshan
So let me ask you this question. As someone who's probably negotiate a lot of these contracts. So one of the most famous ones we still, I, I live in a in a sad world where FDA is the coolest thing in the world. And I love reading about this stuff. But the one of the coolest things that happened to us was Kim Kardashian was involved in a drug advertisement. And she said certain things, and the turns out that what she said I expected was thoroughly vetted. But turns out that what she said was, was not sufficient was it was deemed to be false and misleading by the FDA. So she had to come back in and she had to do a corrective ad. My question for you is, when you're negotiating that contract with Kim Kardashian, I expect that you're doing your negotiating the one, the first one saying that, look, we need you to, to do this and do this right and well vetted and all that good stuff. If there's a situation where she has to, effectively by law, correct it from negotiating standpoint, do you? Do you kind of tell your client Look, I don't even think we need to pay her because she's required to do this according to the FDA? Or do you actually take the position that no, she's a celebrity, you're, you're going to get a lot of reach anyways, you might as well keep her happy. How do you sort of balance? that weird dynamic? Wait, you're required to do it, but you're gonna charge me a million dollars? I have no idea what the numbers are, but a million dollars? Could be right. So how do you manage that balance and sort of engage with her in an appropriate way?
Christiane
It lawyer answer, but it depends. on what side I'm on, if I'm representing the talents, or if I'm representing the brand that needs the talent, I can tell you having gone through that your contracts from that point on, if you're on the brand side, are going to include a clause that says any corrective advertising is included here. And maybe, you know, Kim's lawyers Look at that, and say, No, you can't have us on the hook for, you know, what you call corrective, and it's actually just subsequent ads. So that's probably going to be a point of contention. But I think you're you're better positioned to have that buttoned up in a contractual arrangement at the beginning, then have to argue about it later. If that makes
Darshan
sense. No, of course, of course. No, but that to me. If I was a lawyer for Kim, or the talent as you put it, my first question is why why are you are you expecting a problem? Like why are we Why are we constructing the post divorce?
Christiane
The FDA under the bus?
Darshan
Yeah. So let's let's take that next thing we talk a little bit about clearance searching and I'm, you know what, we're kind of actually almost out of time. So let me let me ask you a general question. We're gonna have to come back to this because I know that there's a lot more to discuss here. We talk very briefly about clearance searching. So my question to you is, what is it? Why does it matter, and what's changed recently that people should probably keep an ear out for?
Christiane
Okay? Um, clearance searching is something I you know, anytime a client comes to me and they want to launch a brand, they want to expand the brand protective brand, I always recommend preliminary clearance and availability searching because what it does is it gives us the closest thing a lawyer can get to a crystal ball. And it gives us an idea of its true and I tell clients is it's a crystal ball for you know, not that much money. Um, you know, on the front end clearance and availability searching, it's what in the patent world, they might call freedom to operate opinion. But that's effectively what we get. We're not that expensive. It's not that much of an investment, when you consider getting involved in a trademark lawsuit. in federal court, or even before the trademark final appeal board could potentially be in the hundreds of 1000s of dollars or over a million dollars. Because you're dealing with discovery, you're dealing with experts, you're dealing with surveys, and it's just such a headache that could have been avoided. And I can tell you that in the whole freedom to operate type assessment letter that I give clients, I very rarely say no, it's really easy for me to say, Oh, it's not available, there's this party and that party, the harder job and when I'm doing my job is when I tell a client, these are the risks. I'm hearing the client say to me, they want to move forward anyway. So my job then is to figure out how we mitigate those risks. So a clear is an availability search is not just to give a client a yes or no answer. It's to guide them and help them position themselves for growth. For an exit for expansion, geographically, expand your product lines, a lot of clients coming to me now especially in the cannabis or alcohol space will say well look, you know, we have we're a one trick pony right now. But our vision for our brand is to eventually evolve into a lifestyle brand. So I have to be looking beyond just the alcohol uses and the cannabis uses, I have to look beyond that and broader. And I have to look outside the United States as well, because so much commerce is done now internationally. So clearance and availability searching is is one of the greatest value ads that a trademark lawyer can bring to a brand and a brand portfolio. Again, you know, it saves you money in litigation. And it gives you kind of the closest thing you can get to a crystal ball and a clear path forward and a strategy. It helps him form a strategy in terms of brand protection and brand enforcement going forward. And what's changed is trademark Modernization Act is coming down the pike. So that's really going to change how clients address office actions and use of actual marks. Last year sounds more
Darshan
to us. But I just wanted to use that last bit to whet the appetite for the next conversation we're going to have so stay tuned, we'll probably end up talking a little bit about clearance searching. I'll be honest, when we started talking earlier today, I 100% did not expect you to go down the Dave Chappelle route. So um, but but this is this was as always an amazing conversation. So I have four questions for you, as you know, so I'm gonna ask them to you right now. But first one, based on what we've discussed, what would you like to ask the audience?
Christiane
How many in the audience are actually involved in the practice of trademark law? If I don't know if you can pull that? Yeah,
Darshan
well, let's find out. I am not. So we'll find out. Exactly right. So number two, um, how can people reach you? It's on the it's on the screen, but but for those people who are just listening, I just want to would you like repeat how people can reach you?
Christiane
Yeah, I mean, my email c Campbell at Duane Morris calm and I'm fairly active on LinkedIn as well. I try and post relevant articles I do a little bit more, you know, in terms of branding, and its intersection with fashion, with luxury with cannabis. I'm on LinkedIn and there's not that much of that content out there. So if you're interested in what's going on with like luxury cannabis brands, follow me on LinkedIn and get some information.
Darshan
That sounds awesome. So that's to number three, um, what is something you've learned over the last month that people might be interested in might be surprised to discover,
Christiane
um, you know, I've been saying it and shaking the trees for as long as I can remember, at least as long as I've been practicing trademark law as it relates to cannabis. But I keep hearing people say that they think that cannabis brands are not protectable and cannot be national because of the state to state regulatory framework. And that's wrong. So it's not something new to me, but it seems as though it's not a message that's really getting out. So, Canvas brands are protectable. And, and you are going to see, especially because of the increase in infused beverages, the increase in multi state operators become msos, you're going to see more and more cannabis brands becoming national and growing to national state. And I think it's really important for at least people interested in the space to understand that this is not going to be a siloed. Industry, I don't think for much longer so.
Darshan
So is it fair to say that it'll be national, but you'll be doing it on a state by state basis? Are you saying that you can actually register in the in the Federal Register? I guess,
Christiane
both. So we do a lot state by state when it's actually scheduled, you know, technically unlawful product, if it's something that's federally lawful, for example, consultation services, website services, social media, we can get protection at a federal level. So so when we, when I'm talking to clients, I'm making a tiered strategy approach for them that takes Okay, what can we get you at the federal level? And what Can't we get you at the federal level that we should, you know, cover state wise right now and then eventually consider, you know, expanding protection to federal if possible.
Darshan
So when you do, I'm sorry, I'm not I know, I'm over about half to ask, when you're coming up with this state by state strategy? How do you decide there are 50 states and each one having a cost associated with them? So that gets expensive really quickly? How do you advise clients on which states to start with? And does that? And then do you sort of just advise them on the risks that if we don't go to these other states, someone else may have priority? And how do you handle that?
Christiane
That's a softball. That's a good one, um, the states actually answer that question for you. Because unlike the federal trademark registry, the states do not have an intent to use basis to file. So in order to file a trademark for trademark protection in a particular state, you have to have used the mark in that state. So necessarily, you're only gonna be able to file in the states where you've got actual product or services being rendered. Usually, that's gonna be the states where you've got a license, you're either operating or you got a license. So So the msos are the clients that we're talking to that multi state operators where they might have that opportunity to file multiple states. But a lot of clients are, you know, kind of siloed state by state, so their only little file where they're actually operating actually a product on the ground. And from a federal perspective, my advice is always to the extent that we can get you federal protection for something, let's do it to get you that presumption of ownership and validity nationwide, that will gain you that priority that you know, waiting until you have used in a particular state might not get you.
Darshan
Um, I can keep going. Let me stop there. So yeah, pretty much that my last question for you is, what was something that made you happy in the last week?
Christiane
Do I have to limit it to one thing?
Darshan
No, you can limit to as many things as you want. My son water
Christiane
skied for the first time. Wow. So that made me I was screaming my head off. But right before we got on our call today, I hung up the phone with my team of lawyers and paralegals and assistants, and docketing, clerks and Associates, and we've been on the phone for two hours. And um, you know, I hung up the phone and said to them, You know, I know we're not together, I know, we can't see one another. But I just was, it made me happy to tell them how happy I am with the work that they've done and the resiliency that they've showed and the efficiency that they've showed over the course of the last team, the last 18 months of being remote and not being together. So it was a two hour call, and yeah, it's a lot of work to do. It's a heavy lift on a lot of their parts, but it made me happy to be in the room, the virtual room with all of them and, you know, feeling that team work and that the team work ethic, it just really made my day.
Darshan
That's awesome. That's wonderful. So So, what we're gonna do is we're gonna have you back very soon, I hope you'll consider coming back and this was wonderful, thanks again. Of course,
Christiane
always. This is the DarshanTalks podcast, regulatory guy, irregular podcast with host Darshan Kulkarni. You can find the show on twitter at DarshanTalks, or the show's website at DarshanTalks.com