- Featured People
- Todd Winter
Founder and Managing Partner
I have extensive (8+ years) experience representing the largest cannabis companies in the world, in all aspects of their businesses.
Trademarks Corporate Licensing Permits Regulatory Mergers and Acquisitions Corporations LLCs General Counsel Cannabis Medical Cannabis Medical Marijuana California Cannabis Business Investment Real Estate Branding Contracts
TODD WINTER, ESQ
Prior to founding WINTER LLP, Mr. Winter served as General Counsel to Kittrich Corporation for seven years at its worldwide headquarters in Southern California. Kittrich is a multi-national privately held consumer-products company with offices located throughout the U.S., Canada, China and Hong Kong and has over 500 employees.
Todd earned his B.A. in Economics, with Minors in Japanese and Marketing from the University of Iowa in 1993. Shortly thereafter he started his first career in the high-tech software industry. During the mid-90’s, he worked for two international (Israel and UK) software companies until he ultimately landed in California where he worked as the Western Regional Manager N.A. for a Belgian software and hardware manufacturer in the printing and packaging industry. Todd worked in this capacity prior to and during law school at Chapman University School of Law, where he earned his J.D. in December 2003.
While at Chapman, Mr. Winter focused on business and international law, receiving certificates in 2002 from the University of San Diego School of Law for his studies in Barcelona, Spain on International and Comparative Law; and in 2003 from the University of Santa Clara School of Law for his studies in Tokyo, Japan on International Intellectual Property Law. Also in 2003, Mr. Winter worked for a Vietnamese law firm, VILAF – Hong Duc, in Ho Chi Minh City, Vietnam, where he focused on foreign business investment in Vietnam. Upon his return to California, he clerked for the Honorable James J. Di Cesare, an Orange County Superior Court Judge.
Mr. Winter was admitted to the California Bar in June of 2004 and the Arizona Bar in May 2005. He is also a founding member of the NCIA.
Todd Winter replied:
Thank you for your question. Yes, I think they will continue with business as normal regardless of Mr. Sessions departure. In my opinion, it doesn't matter who the AG was or will be, the DEA, DOJ, IRS, and FDA all continue to work together towards keeping cannabis out of small business.
Todd Winter replied:
Is it possible to get a trademark for a cannabis related product?
Since trademarks are granted in a category and cannabis is illegal at the federal level, is it possble to get a trademark for a cannabis related product?
Todd Winter replied:
Thank you for your inquiry. This is a very important area of law in terms of growing/expanding cannabis brands in the U.S. and world. I speak on this issue a lot, as we have successfully helped some of the largest cannabis brands expand across state lines, without selling cannabis across state lines. The strategy involves a multifaceted and strategic approach, which we won't get into here. But, to your question, it all starts with a solid foundation, which are protectable and enforceable trademark rights.
As you likely know, the United States Patent and Trademark Office (USPTO) governs federal trademarks in the United States. These powerful IP rights cover products and services involved in interstate commerce (good/services sold across state lines). Each state also provides for its own trademark protection for goods and services that are, similar to cannabis businesses, conducted solely intrastate (within state lines). And, finally, you have trademark rights owned in Common Law, which are unregistered trademarks, but which are also enforceable against infringement if one can prove date of first use and ongoing use in intrastate or interstate commerce.
Based on the aforementioned, and that cannabis is not in lawful use in the U.S. (federally), you cannot obtain a federally registered trademark from the USPTO for any cannabis product. And, unfortunately, many states, like California, for example, take their direction from the USPTO. They will lure you in to apply for a state level trademark and take your fees, but in the end they will deny your applications, based on the USPTO's determination that the goods (cannabis) are not in lawful use in the U.S.
So, how do we get around this issue. Well, we have been very successful in helping clients build some of the most well known brands in the industry by securing federally registered trademarks for tangentially related goods and services to their cannabis good or service, that through trademark law will also protect them in the space that matters most, the actual cannabis good or service. It is by using this strategy, and only this strategy (at this time), that you can build a valuable cannabis brand that can be used throughout the U.S. and world.
There are also a number of other ways you can protect and leverage your unregistered intellectual property (trade dress, for example), including licensing, that will help you build a great brand in the cannabis industry. If you are interested, I spoke on this exact topic at this year's NCIA Business Summit in Oakland. You can access the NCIA for copies of all presentations.
Powered by Brainsy, Inc. (Patented and Patents Pending)