Boston, MA

The United States Patent and Trademark Office will implement new trademark fees across a wide range of filings, effective January 2, 2021. This article provides information on some of the most relevant fee increases, with recommendations for strategies to maximize the allocation of resources in maintenance and enforcement of trademark rights.

The removal of hemp from the Controlled Substances Act definition of marijuana seemingly opened the door to a host of new opportunities for companies selling hemp and hemp-derived products, including the possibility of obtaining previously unobtainable federal trademark registrations. The general public appears to have understood this change in the law as making CBD and other hemp-derived products “legal.” However, there remain important and nuanced restrictions on hemp-derived products that affect the registrability of marks for CBD products, and the TTAB has now held that CBD products that are “food” are per se unlawful.

The Maine Marijuana Legalization Act sets forth the requirements for various types of marijuana licenses. As currently drafted, it mandates that any applicant for a marijuana license, other than a testing facility, must be a Maine resident. However, just as the coronavirus pandemic hit the U.S. causing the Maine's Office of Marijuana Policy (OMP) to delay the opening of the recreational market, two would-be adult-use applicants sued the OMP and its commissioner in federal court, contesting the statutory residency requirements.

The Massachusetts Supreme Judicial Court has weighed in on several recurring class action litigation issues, providing much needed guidance in an area where there is limited precedential case law in this jurisdiction. The decision also highlighted some important and somewhat subtle distinctions between class action practice in state court versus federal court.

While jurors in Colorado recently sided with a marijuana business on a RICO claim, the court’s instruction that the business constituted a criminal enterprise for purposes of the RICO statute as a matter of law shows that RICO liability remains a very real concern, even for state-legal businesses.

The Massachusetts Supreme Judicial Court imposed a duty on pharmacists to notify the patient and the prescribing physician when a health insurer informs the pharmacy that a “prior authorization” form is required to be filled out by the physician before the medication can be dispensed to the patient.

A cannabis startup accused of having “growth hacked” its way to the top by “relentlessly bombarding existing and prospective customers with text … messages without their consent” drives home the point that cannabis businesses, just like any other business, should be vigilant about complying with consumer protection laws that govern advertising. Startups flush with venture capital will be tempting targets to self-styled consumer advocates.

Given recently finalized state regulations governing the nascent recreational marijuana industry in Massachusetts, marijuana establishments should maintain a close watch on advertising, marketing, branding and promotional activities, which will be critical to managing risk.

The recreational marijuana business regulations were approved on March 9, 2018, after extensive hearings and public input. The regulations must be signed by the Secretary of the Commonwealth and published in the Massachusetts Register, which is expected to take place on March 23, 2018. The regulations become effective upon publication.

Massachusetts, Vermont and New Hampshire are showing indications of popular support for legalized marijuana in the face of the recent memorandum issued by U.S. Attorney General Jeff Sessions, rescinding a policy that allowed states to implement their own laws without fear of federal intervention so long as issues such as youth use, impaired driving and interstate commerce were addressed.

A recent case before the Massachusetts Appeals Court highlights the importance of reducing the scope of an attorney’s representation or the cessation of the representation to a clear writing. Even if the client is advised of a limited scope of representation in writing, later conduct or communications, as in this case, can alter the scope of representation. 

In a recent decision, the Massachusetts Supreme Judicial Court determined that an insurer does not have a duty to prosecute counterclaims under either the plain meaning of policy language or the “in for one, in for all” doctrine followed in Massachusetts, and that the definition of “defense costs” does not require an insurer to pay costs to prosecute a counterclaim.

On August 21, 2015, the U.S. Court of Appeals, First Circuit held that a rejected and withdrawn offer of settlement of the named plaintiff's individual claims in a putative class action made before the named plaintiff moved to certify a class did not divest the Court of subject-matter jurisdiction by rendering moot the named plaintiff's claims.

The Massachusetts Supreme Judicial Court recently ruled on two issues of particular relevance to the trial of medical malpractice cases. First, whether the plaintiff, through her counsel, complied with obligations to disclose the substance of and grounds for the opinions of an expert witness, and, second, whether certain materials obtained from the Internet qualify within the meaning of the "learned treatise" exception to the hearsay rule.

In a recent coverage dispute between a homeowners’ insurer and a commercial liability insurer, the Massachusetts Appeals Court provided much needed guidance on the “business pursuits exclusion.” The Court adopted a two-prong analysis that considers the continuity of the alleged business pursuit and if there is a profit motive behind the pursuit in determining whether the exclusion should apply. However, the Court provided little instruction on how those factors should be applied.

Life insurers currently subject to unclaimed property audits and market conduct investigations should point to the decisions and reasoning in two recent cases as justification for their position that they acted properly in paying death claims based on the language in their insurance contract and general insurance law principles.

Wilson Elser Attorneys, William T. Bogaert, David Eisen, Joanna Piorek and Jason M. Kuzniar Co-authored Recent Developments in Professionals, Officers and Directors Liability in the Tort Trial and Insurance Practice Law Journal, Vol. 47, Issue 1, Fall 2011 published by the Tort Trial and Insurance Practice Section of the American Bar Association.