Welcome to The Outlaw Report’s new Q&A series, focused on the cannabis landscape of the Mid-Atlantic. Our series aims to shine a spotlight on the trailblazers and experts who are shaping the local cannabis industry. Through their first-hand experience and insights, we explore the successes, challenges, and stories of businesses and individuals at the forefront of cannabis policy, business, and innovation in the region.
Our first interview features District Trademark, a women-owned law firm specializing in trademarks, based out of D.C.
District Trademark is comprised of attorneys Angela Shin and Paulina Prosper, who work with brands to establish and safeguard their trademarks, from strategy and consultation, to application/prosecution and maintenance. They also specialize in navigating the complexities of federal trademarks for businesses involved in the cannabis industry. Read the full interview below!
Welcome and thank you for joining us! To start off, could you tell us a bit about District Trademark and the services you offer?
District Trademark is a DC-based law firm with a nationwide practice, focused on trademark law and strategy. Our niche practice allows us to dedicate our firm’s talent, expertise, and resources to helping clients protect and monetize their brands. We counsel businesses of all sizes and across all industries on trademark strategy and represent them before the U.S. Patent and Trademark Office. The majority of our legal services is trademark prosecution, which is a fancy way of saying we work with clients to prepare and apply for federal trademark registration. Federal registration, however, is tricky for our cannabis clients. For these businesses, we help craft trademark registration strategies that provide brand protection within a complicated patchwork of state and federal laws.
What is your favorite part of being based in D.C.?
We love D.C. so much we put “District” in our own trademark! There are so many facets to D.C. that we love: diverse communities, international feel, sophistication of business owners, dynamic neighborhoods, fun arts scene, interesting people, and free museums! While our main office is in Georgetown, we venture all over the DMV to meet with clients and our network of branding and marketing specialists. We also have a second office in Colorado, where our managing partners, Paulina Proper and Angela Shin, met while attending law school (many moons ago). We love our Colorado mountains AND our Washington monuments!
When it comes to securing and maintaining their brands, what are you most excited to guide your clients through?
Many clients come to us when they have run into a legal problem with their brand. Whether it’s a stalled or failed federal registration or a potential infringement issue, we are always excited to dive in and guide our clients through solving their trademark problems in ways that help their businesses succeed. A strong brand reputation is the most valuable asset for most of our clients. We see our role as a trusted advisor to our clients and a member of their business team. And nothing beats sending our clients their brand new trademark registration certificates!
How would you describe District Trademark’s ethos?
We are committed to excellence in every aspect of the legal services we provide to our clients. Our standards are high because we know that our clients’ trust must be earned. Whether a start-up or Fortune 1000 company, every client that engages District Trademark can be sure that our attorneys will put the full weight of their knowledge, skill, and attention to meeting their needs. Our favorite answer is “yes”. Our attorneys genuinely enjoy finding creative legal solutions to help businesses develop and protect their valuable brands.
What is the biggest benefit that you would say you bring to your clients?
We love what we do! Our clients get the benefit of attorneys who live and breathe trademarks. They also get practical, strategic legal counsel from attorneys with decades of broad business and IP experience, who understand the concerns of business owners. Because of our focused practice, we are able to offer an exceptional value to our clients. Our firm’s mission is to make effective trademark counsel accessible to a wide range of businesses, from startups to established companies. We are committed to providing the bulk of our legal services on a flat-fee basis, so that costs are predictable and competitive. Because all we do is trademarks, we are able to streamline our processes, and the efficiencies we capture are passed on to our clients. Also, we are pretty fun to work with! Learn more about our co-founders here: https://district-trademark.com/our-firm/#our-team
What are some of the unique challenges faced by cannabis brands when it comes to trademarks?
The cannabis market is constantly evolving, and brand protection is becoming more and more important as the market matures. However, federal trademark registration is still unavailable for plant-touching products due to federal regulations. As a result, cannabis businesses face significant hurdles in protecting their brands’ identity, reputation, and market presence. Without federal registration, they are often left vulnerable to brand infringement, counterfeiting, and dilution. We help cannabis businesses develop creative brand protection strategies within the current patchwork of federal and local law. Some of these strategies include development of strong brand presence in common law, federal registration for ancillary non-cannabis products, and robust licensing to protect brands as they expand into different markets. We also provide state-level registration services (to the extent available) in the jurisdictions where District Trademark operates (D.C. and Colorado). By staying on top of both legal and market trends, we help our cannabis clients build their brands, and prepare them to pivot when necessary as the laws evolve.
Can you share an example of when your services yielded a positive outcome for your clients?
We love getting creative in helping our clients secure trademark registrations. For example, we recently helped a client through the process at the USPTO to register a very strong trademark covering flavor enhancing “drops” for beverages. This company is getting into the cannabis space and plans to develop THC-containing tincture drops that can be added to a beverage of choice (think sparkling water or soda). The client is already producing non-THC drops for beverages, but never considered protecting their brand. We were able to counsel this company on the benefits of federal trademark registration for the non-THC products, and we were able to obtain approval of their trademark application. This type of brand protection is, of course, forward-looking (and forward-thinking): Our client will have an advantage over competitors, already having a federal registration in place for when brands covering THC-containing products (not just hemp) become eligible for federal protection.
Thank you for joining us, Angela and Paulina!
To learn more about District Trademark, visit their website.
