Shabnam Malek entered the cannabis law space around 2012, when the firm’s founding partner saw that the burgeoning sector could use some legal support with critical issues like brand protection. Since then, she has launched firms, advised organizations, and performed other roles related to trademarks, advertising, and other crucial business components.
As an Advisor for the Cannabis Media Council, Malek has been a leading voice in establishing advertising guidelines. The organization recently released its revised guidelines for responsible advertising. In August, Malek spoke with Cannabis & Tech Today Managing Editor Andrew Ward to discuss the guidelines and other regulatory issues surrounding cannabis.
CannaTech Today: What are the most significant legal challenges facing cannabis companies today, particularly in the realm of trademark law?
Shabnam Malek: What’s had my attention for years and continues to have my attention is the lawful use doctrine, which is what prevents cannabis companies from being able to secure federal trademark rights in this country.
I think [it] actually really plays into this idea of copycats and infringement because cannabis companies, the lawful ones, the ones operating with a license or even if they are in sort of a gray area, trying to enter the regulated markets, what’s preventing these companies from being able to participate in enforcing and controlling against copycats and the child-directed packaging is that they don’t have any federal trademark rights.
So ordinarily, you see an infringer, maybe in another state, you go to the district courts, and you file a trademark infringement lawsuit. And all this stuff is covered: counterfeiting is covered under this body of law, inferior goods, reputational harm, the whole bit. And that’s what you do. You go to the courts, you sue, you drag the defendant in there, and you make your case. But cannabis companies can’t do that because they don’t have federal trademark rights. We really need to see a change in that law.
C&T Today: Heading into the 2024 election, do you see any potential changes in federal trademark laws coming? Do you see any long-standing issues being addressed anytime soon?
SM: I obviously want to see cannabis descheduled altogether. I think rescheduling maybe, you know, that’s also a good path, at least in terms of criminal justice and medical access to cannabis. All those are great things. For the purposes of trademark protection and trademark rights, though, neither rescheduling really helps. And to some degree, descheduling may not help.
It really depends on what Congress does after some sort of statutory change, what Congress does with respect to FDA’s role in rolling out cannabis products broadly to consumers on a nationwide basis. So right now, even if cannabis were lawful at a federal level—and actually, there’s a version of it that is lawful, right? The hemp-derived cannabinoids—even where you have a farm bill stamp of approval for a cannabis product, you still may not be able to develop federal trademark rights because the product itself might violate the Food, Drug, and Cosmetic Act.
The FDA still has jurisdiction over certain types of products that consumers use. So what we need, apart from or in addition to some sort of descheduling or rescheduling, is a change in the law or some sort of maybe a statutory change, although lawful use is not itself statutory.
We need a law under the umbrella of the intellectual property framework in this country saying, ‘Hey, listen, either wholesale, you don’t need lawfulness for the U.S. Patent and Trademark Office to grant a trademark registration, or at least with respect to the cannabis sector, you don’t need lawfulness.’ And that would include some sort of regulatory compliance issue with FDA. That’s what we need for these federal trademark rights.
C&T Today: Can you explain the Cannabis Media Council’s guidelines and their significance for the industry?
SM: The Cannabis Media Council stands for the notion of responsible advertising in the cannabis sector. It is setting out to really create a platform and assist with cannabis companies who want to engage in advertising with a set of internal regulatory guidelines in mind.
The Cannabis Media Council is trying to encourage and educate mainstream advertising platforms and media platforms to offer cannabis companies an opportunity to advertise. And so it’s like, ‘build it and they will come.’
As we come and join these mainstream platforms that hopefully will be available to us, we’re going to come with a really responsible set of rules and guidelines for how we’re going to implement advertising. We have sort of the seven pillars of responsible cannabis advertising and this all sort of feeds into what the guidelines do and what the guidelines are.
C&T Today: What progress do you see in cannabis advertising, and what challenges remain?
SM: We are starting to see change. The Cannabis Media Council now has a new media partner, PMC Media, who is the publisher of Variety Magazine and Rolling Stone Magazine.
We are starting to see a shift. I have, through Cannabis Media Council’s work, spoken with other big mainstream media publishers about this idea of bringing on cannabis advertising.
I actually think cannabis advertising is on the near horizon. Now, what I don’t know and can’t predict is how social media companies are going to behave. We’ve seen some shift there, being a little bit more permissible for hemp-type advertising.
I think that’s probably where we need to see a little bit more of a sea change, is social media companies just saying to themselves, ‘Yes, we’re going to change our internal policies and we’re going to permit handles by and pages by cannabis companies and stop interfering with them.’
But for mainstream media, advertising, print, and radio, I definitely think we’re already seeing a change…We are convincing media platforms that they can play a role in legalization and the responsible growth of the cannabis sector by offering responsible advertising on their platforms.
Visit https://www.cannabismediacouncil.com for more information.
