Jennifer Briggs Fisher

Jennifer Briggs Fisher is a pioneer in cannabis law, leading Goodwin Proctor LLP's practice in the field. She represents industry clients, investors and service providers looking to access one of the fastest-growing market sectors in the U.S.

She is a co-founder of Women Leaders in Cannabis, a networking group for women entrepreneurs, investors and executives. And she serves as legal advisor to the Last Prisoner Project, a non-profit dedicated to cannabis criminal justice reform.

Now that recreational marijuana is legal in 18 states--though still banned under federal law--the legal landscape remains in flux. In late April, a day after the unofficial 4/20 marijuana holiday, Fisher said, "A lot of my clients were looking for a nice sales boost yesterday. San Francisco does a big Golden Gate Park event. Legalization has changed the dynamic as the product appeals to an ever wider audience."

In a significant case, Fisher is defending Kiva Brands Inc., a cannabis edibles market leader, in a federal trademark infringement suit filed by Kiva Health Brands LLC, owner of a federal trademark registration for its line of cosmetics and toiletries. The plaintiff contends the defendant's use of the Kiva mark confuses consumers. Kiva Health Brands LLC v. Kiva Brands Inc., 3:19-cv-03459 (N.D. Cal., filed June 19, 2019).

"Ordinarily, being the senior user has advantages. My client began in 2010 and Kiva Health Brands started in Hawaii in 2014. Yet my client can't be considered the senior user because we don't have the ability under federal law to apply for a trademark. That makes it interesting." Fisher said.

She had to find another way to defend the matter, which is among only a handful of trademark infringement cases in federal court involving a state-licensed cannabis company. In early maneuvering, Fisher and colleagues successfully moved to transfer the case to the Northern District, where her client is located, and defeated the plaintiff's preliminary injunction motion.

"The primary way we try to navigate the intersection of cannabis and federal-state trademark rights is to attack other elements of their infringement claim, such as the likelihood of confusion. Cannabis products can only be sold in very regulated channels of commerce in licensed dispensaries. You will never see my client's products on the same shelf as the plaintiff's." The trial judge has recently ordered mandatory settlement talks.

As the industry matures, it continues to define key product differentiators used in marketing. Fisher obtained a voluntary dismissal of a potential class action over the labeling of her client's cannabis resin vape cartridges under the state's Consumer Legal Remedies Act. Spitzer v Central Coast Agriculture LLC, CGC20585809 (S.F. Super. Ct., filed July 29, 2020).

"We had a thrilled client," Fisher said.

- John Roemer