Karma Koala Podcast 168: Jonathan Hyman and Jonathan Menkes, Partners @ Knobbe Martens – IP, Packaging, Branding & Advertising in The US Cannabis Sector

In this episode I speak with the very patient Jonathan Hyman and Jonathan Menkes whilst i mumble my way through a discussion about cannabis IP and associated issues. Both have been practicing in the space for over a decade.

They provide some great insights for anybody trying to understand how IP in the US works within the context of cannabis.

We take a bite in the RX bar approach

 

+ we talk about getting products like this off the market – “parody” doesn’t work is the key takeaway

Also
The current trademarking nightmare
Plant touching clients , non plant touching clients
International / EU IP Canada’s filing system
EU brands moving into the US market ?

Enjoy..

 

On April 30, 2024, the DOJ and DEA proposed reclassifying marijuana from Schedule I to III, a status unchanged since the 1970 Controlled Substance Act (CSA) and Nixon’s War On Drugs. While the formal rulemaking process to potentially reclassify marijuana will take months to complete, and could be subject to legal challenges, the ramifications for U.S. federal law would be both significant and unclear. One key area affected will be how the United States Patent and Trademark Office (USPTO) handles trademark applications related to cannabis. Traditionally, applications covering cannabis-related products have been barred under the CSA, but there is speculation on whether the USPTO will allow all previously barred applications if marijuana is reclassified, potentially eliminating the CSA as a basis for refusal. Another option may see the USPTO maintain the CSA as a bar to trademark registration but allow exceptions for products that can demonstrate compliance with a lower schedule. Jonathan and Jonathan would explore the options available to the USPTO and how cannabis brands should prepare for these changes. 

Partner
Knobbe Martens
Emory University School of Law
Intellectual Property


Jonathan A. Hyman is a partner in Knobbe Martens’ Los Angeles office and is also co-chair of the firm’s CBD and Legal Cannabis Group. Hyman’s practice includes domestic and foreign trademark prosecution, enforcement and clearance, proceedings before the Trademark Trial and Appeal Board, intellectual property licensing, copyrights, rights of publicity, domain name disputes, entertainment law and client counseling. He also frequently conducts in-house seminars to help clients manage and protect trademark portfolios. He currently represents clients in a wide range of industries and fields, including entertainment, sports, fashion and apparel, retail, technology, food and beverage, legal and medicinal cannabis and CBD, cosmetics, financial services, restaurants and hospitality, medical devices, pharmaceuticals, software and e-commerce. He excels at helping companies protect assets and increase value for capital raises/strategic exits.

 

Jonathan Menkes provides strategic trademark counseling and brand protection for clients across numerous industries. He is also the Co-Chair of the firm’s CBD and Legal Cannabis Group.

Jonathan’s practice includes domestic and foreign trademark selection and searches, trademark audits, unfair competition, false advertising, and notice and takedown procedures involving copyright and trademark claims on social media and domestic and foreign e-commerce websites. His litigation experience includes opposition and cancellation proceedings, ex parte and inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), and domain name disputes.

He has represented in a broad spectrum of industries, including NFT and blockchain technology, legal and medicinal cannabis and CBD, life sciences, food and beverage, automotive, software, fashion and apparel, and medical devices, among others. Representative clients include Monster Energy, Medterra, Highline, AutoWeb, and Rokform. Jonathan is also a contributor to the firm’s Fashion and Beauty Blog.

Jonathan worked as a summer associate with the firm in the summer of 2010 and joined the firm in 2011.

Clerk Experience

Judicial Extern for the Honorable James V. Selna, United States District Judge for the Central District of California

Certifications

  • Harvard Business School (Executive Education), Launching New Ventures (Certificate of completion issued March 2022)
  • Harvard Business School (Executive Education), Changing the Game: Negotiation and Competitive Decision-Making (Certificate of completion issued November 2021)
  • Harvard Law School (Executive Education), Leading Change for Lawyers (Certificate of completion issued July 2021)
  • Harvard Law School in collaboration with Harvard Business School (Online), Financial Analysis and Valuation for Lawyers (Certificate of completion issued July 2021)
Education
Boston College Law School (J.D.)
University of California – San Diego (B.A. Philosophy), Phi Beta Kappa, magna cum laude
Harvard Business School (PLDA 35)

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