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On December 18, 2021, rules promulgated under the Trademark Modernization Act of 2020 (“Act”) went into effect. The rules, among other things, implement two major additions to the repertoire of trademark proceedings:  (1) expungement, and (2) reexamination.

The purpose of these new proceedings is to assist the United States Patent and Trademark Office (“USPTO”) in addressing “dead wood” and the clutter of registered marks that are not actually in use, or were registered with inaccurate goods or services. With these new rules, the USPTO also seeks to combat fraudulent registrations and the resulting loss of available trademarks.  The Act provides an efficient method for third parties to bring unused trademark registrations to the USPTO’s attention and provides the USPTO new authority to clean things up. Before the Act, the USPTO itself had very limited authority to review and reconsider trademark registrations.

Expungement Proceeding

The purpose of an expungement proceeding is to decide whether or not the registered mark has never been used in commerce in connection with some or all of the listed goods or services . A petition to expunge can be filed between three and ten years following the date of registration. However, the Act provides that until December 27, 2023, the proceeding can be instituted for any registration that is at least three years old.

Reexamination Proceeding

A reexamination proceeding looks to see whether the registered mark was used in commerce with some or all of the goods or services before a certain date depending on the filing basis. For use-based filings under Section 1(a), the record must show use on or before the date of filing. For intent-to-use based filings under Section 1(b), as initially filed or as amended, the date is the later of (1) the filing date of the amendment to allege use, or (2) the expiration of the deadline for filing the statement of use for the goods listed in the petition, including all approved extensions. The reexamination proceeding can be initiated during the first five years of registration.

Process Of Proceedings

The general process of the proceedings is simpler compared to litigation-esque cancellation proceedings. The petition is filed, then the director reviews and decides whether or not to institute the proceeding. If the proceeding moves forward, the USPTO will send an Office action notice to the registrant and the original petitioner has no further responsibilities.

The registrant must respond within three months by either proving use or amending or cancelling the registration (or submit a 30-day extension request). If the USPTO issues a final order of non-use, the registration will be cancelled in whole or in part depending on the petition. However, the registrant has the opportunity to request reconsideration or appeal before the Trademark Trial and Appeal Board.

A few key takeaways:

  • All registrants should retain accurate evidence of first use for each good and service listed on their trademark applications and registrations.
  • All trademark owners should review their registrations to ensure they accurately reflect what’s used in commerce. A registrant can voluntarily amend their registration to delete goods or services, or surrender registration altogether. The fee for voluntarily amending the registration is $0. But if a registrant deletes goods after one of the proceedings starts, there is a $250 fee per class.
  • A registrant can utilize these proceedings as a tool in the clearance, prosecution, and enforcement of their mark.

If you hold trademark registrations and need assistance with the review of your portfolio, Emerge Law Group is here help. Please feel free to contact attorneys Delia Rojas or Sean Clancy from Intellectual Property Practice Group.

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By default, the author of an original work of creative authorship owns the copyright to that work upon creation.  And under Section 204 of the Copyright Act a transfer of copyright ownership is not valid unless it’s in writing.

That means, with some specific exceptions, an independent contractor who creates an original work of creative authorship fixed in any tangible medium of expression (e.g. written words, musical works, dramatic works, graphic works, pictures, designs, architectural drawings, sculptures, websites, software or computer code etc.) owns the copyright to that work unless a transfer of ownership has been agreed upon in writing.

If you’re an independent contractor, this can create substantial negotiating leverage during (or after) the course of a project because you own the copyright to the work until you sign it away.

If you’re hiring independent contractors, you probably want to ensure that your contractors have signed off to transfer copyright ownership. Otherwise you might find that you don’t actually own the creative work you thought you paid for.

We have seen both sides of it, even among sophisticated people: both contractors and businesses that hire them sometimes neglect the fundamental issue of copyright ownership when they agree to work together.  Clients have showed us invoices, email correspondence, text messages, detailed scopes of work, and even formal contracts with assertive language about payment timing, recordkeeping, portfolio rights, warranties, indemnification, and limitations of liability.  Yet they sometimes overlook the critical concept of copyright ownership of the work product.  It doesn’t need to be complicated — a simple one page contract (or a single boilerplate phrase) identifying and transferring the work can do the trick.

A few important notes and caveats:

A well-known exception to this writing requirement applies to copyrightable works prepared by an employee “within the scope of his or her employment” (not acting as an independent contractor).  Copyright ownership for such work automatically vests with the employer as “works made for hire.”  Critically, this exception requires (a) employment status and (b) acting within the scope of employment.  Employment status is often (but not always) fairly clear (think W-2, payroll).  But sometimes an employee’s scope of employment is not clear if it isn’t written down in their job description or employment contract.  Software code from a salaried computer programmer or an employee manual from a human resources director are clearly works within the scope of their employment — but what if those employees took photos for their employer’s website while on the clock?  Created logo designs?  It isn’t always clear whether or not creative works fall within an employee’s job description.  Whenever there’s doubt, it is safest to have a signed contract.

And we’re talking about copyright ownership here, which is different from permission to use the copyright (also known as a license).  Oregon sits within the 9th Circuit where courts can find an implied license under the right circumstance, where permission to use the materials is understood although ownership does not transfer.  But relying on such implied licenses is risky and uncertain because the parameters of implied licenses aren’t always clear.  How long does the license last?  Does it cover all types of uses of the work?  Is it transferrable?  Can the license be terminated?  Without a clear written understanding, material disagreements can develop later.  So despite the possibility of implied licenses, it is best to have a written document in place, even a short one, to ensure that everyone understands who owns the copyright.

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Is there such a thing as organic marijuana? Like most things in the industry, the answer isn’t simple. Many cultivators use organic techniques. So yes, organic cannabis exists. However, can flower, concentrates, oils or edibles be marketed as organic? That answer is NO.

Federal Regulation of the Word “Organic”

Use of the word “organic” on agricultural products is regulated by the U.S. Department of Agriculture (USDA) under the Organic Food Production Act of 1990 (OFPA). Only agricultural products certified by approved agencies may be marketed as “organic”. Marijuana is considered an agricultural product under the OFPA, but the USDA will not certify marijuana as organic because the substance remains illegal under federal law.

“Organic” Marijuana Products

So where does this leave marijuana producers? Can a business name include the word “organic”? How can “organic” products be described to discerning consumers or sensitive medical patients seeking such products? Here are a few thoughts:

  • Business Name – In August 2014, the USDA issued a statement to its various certifying agencies stating that business names containing the word “organic” do not inherently constitute a false or misleading statement. Therefore, technically you can use the word “organic” in a business name BUT it may not be practical to do so (see labelling below).
  • Labelling – Remember, the key issue is to protect consumers by preventing false advertising and providing uniformity. Consequently, the USDA regulates how you can use “organic” in labeling products. There are two main product label parts: (1) the principal display panel (PDP); and (2) the information panel. The PDP portion of the package is the front, what consumers most likely see at the time of purchase. The information panel includes the list of ingredients contained in a product and other product information. We do not recommend using the term “organic” on the PDP for marijuana products. Therefore, if a business name includes “organic” it should not appear on the PDP. You may consider an assumed business name or branding product lines. However the information panel can be used to identify ingredients used in the product that have been certified organic.
  • Alternative Terms – Businesses can use other words or phrases to describe their products. Alternative terms such as “clean”, “natural”, “local”, “whole” and “sustainable” are not regulated liked the word “organic”.
  • Alternative Certification Programs – Lastly, there are alternative certification programs for the marijuana industry equivalent to organic certification. Currently two private companies have been created, Clean Green Certified and Certified Kind. Alternative certification costs approximately $1,800 to $2,000 per year. But remember, even with alternative certification, you cannot market products as “organic”.

Prior to the OFPA, organic food was regulated by the states. There were substantial differences in organic farm regulations from state to state. For example, by 1990 three states operated their own organic certification programs, four states used independent certification organizations, and fifteen states defined organic techniques but did not require certification. Organic farmers found the patchwork of state regulation to be confusing to consumers and lobbied Congress to pass federal law to provide consistent and uniform information to consumers and promote fair trade practice. My prediction is that states at the forefront of marijuana legalization will begin self-regulating, similar to the food industry. In fact, Oregon passed the nation’s first organic certification law in 1973. Maybe Oregon will lead the way again by developing marijuana industry standards.

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Franchise law is a heavily regulated area of law.  We help clients expand their businesses through franchising and other distribution methods. We have experience in many industries including, restaurants, health, and beauty, alcohol, and cannabis among others. Our representative services include the following:


We also help potential franchisees interested in buying a franchise. We are able to assist with evaluation of franchise opportunities with respect to:

Alternative Structures

However, not all businesses are suited to franchise. We are also experienced with helping clients structure alternative distribution methods to prevent classification as a franchise.


Our M&A attorneys are highly experienced in counseling clients who are considering acquisitions or exit strategies.  We have many years of experience handling deals of various types and sizes, ranging from sales of small closely-held business, private companies, and publicly-traded corporations.  We have represented business owners, private equity firms and investment banks in a wide range of industries. 

We have a deep business bench, and Emerge attorneys have handled transactions of all shapes and sizes.  Whether your deal is valued at $100,000 or $100,000,000, our experienced attorneys will guide you through the deal process.

We understand the intensity, technical skill and judgment needed to get deals done, and we provide our clients with timely, practical and cost-effective legal advice.  We are highly capable in all aspects of M&A, including the following:


Emerge Law Group is highly experienced in the cannabis industry.  We have helped many clients obtain state licenses and local permits to operate cannabis businesses throughout California, Oregon, and Washington.

Emerge attorneys were instrumental in the drafting and passage of Oregon Measure 91, legalizing marijuana in the State of Oregon, and have represented cannabis businesses well before many law firms were willing to enter the cannabis industry. As a firm that has provided legal services in the cannabis space for many years, we are familiar with the unique and complex issues businesses and individuals face in an emerging and highly regulated industry.

We regularly help clients with:

Cannabis laws and rules are also regularly changing.  Members of our team are dedicated to attending legislative hearings, state agency and local city and county meetings to stay up-to-date on any new changes and how to adjust to any new changes.

See our Cannabis Industry page for more information.


There is tremendous excitement about the potential for psychedelic drugs to benefit a wide variety of populations, including terminally ill patients suffering with anxiety and depression. Until recently, psychedelic substances have been accessible only in the illicit market and are illegal under federal and state to manufacture, distribute, or possess. These substances have, since 1970, been treated as having no legitimate medical use, and no commercial application. As such, no one invested in this area or required legal services, outside of the criminal context.

Today, researchers in a multitude of clinical studies are proving the medical safety and efficacy of these medicines, with the objective of changing the treatment of these substances under the Controlled Substances Act. Companies are now actively raising money to develop intellectual property and seize market opportunities associated with psychedelic drugs.

In addition, advocates at the state and local levels are not waiting for the rescheduling of these substances and are active in undertaking efforts to decriminalize these substances and/or make them affirmatively legal under state and/or municipal law. Decriminalization already has occurred in cities including Denver, Oakland, Santa Cruz, and Ann Arbor. Oregon is poised to be the first state to make psilocybin therapy affirmatively legal. Emerge Law Group is working with a wide array of clients pushing forward in this emerging area.

See our Psychedelics Practice Group page for more information.



Businesses of all kinds benefit from a customized but systematic approach to structuring legal relationships. Emerge Law Group helps businesses and business owners with a variety of tax planning matters.

Representative client services include:


Estate planning encompasses everything from a will and power of attorney to combined estate and business succession planning. In almost all cases, the purpose of the plan is to help the client protect those they care about most in the event they can no longer be there for them.

Emerge Law Group has experience with a wide range of tools used in estate planning, including wills, trusts, and family business entity planning.


Emerge Law Group can assist with the resolution of difficult tax controversies. Our areas of emphasis and experience include:


Emerge Law Group assists clients with a wide range of real estate transactional matters.  We regularly help clients with:


Emerge Law Group also assists clients with all aspects of local government land use and development processes, ranging from preliminary property analyses and building permit issues to complex land use reviews and hearings. Our attorneys are experienced in obtaining land use entitlements and development permits for a wide range of uses.

We regularly help clients with:

Above all, we understand the value of working with cities and counties to enhance communities while developing the land to its potential. We strive to create solutions to land use issues that serve to better our clients and the communities in which they live and work.


The attorneys in Emerge Law Group’s Litigation and Alternative Dispute Resolution practice group litigate commercial, intellectual property, and public interest matters in state and federal courts, as well as private mediation and arbitration proceedings.  Our lawyers have represented national and regional financial institutions, major media, entertainment and technology companies, and other Fortune 500 companies in a broad array of high-stakes disputes.  Our team of litigators has handled leading cases that have shaped the law in cutting-edge business, technology, free speech, and public interest impact lawsuits in trial and the courts of appeal.

We have particular expertise in handling civil litigation and regulatory enforcement matters in the cannabis and psychedelic industries.  While many firms claim expertise in the these industries, few have our depth of experience successfully litigating contract, trademark, partnership, shareholder, land use, and real estate disputes in court and arbitration.  Even fewer firms have our level of experience handling writ of mandate proceedings against the government regulators.

Our litigators practice in California, Oregon, and Washington, but have appeared in state and federal courts nationwide.  Our knowledge of our clients’ businesses, goals and concerns, and our experience litigating at the highest levels, give us unique insight into possible outcomes and pitfalls as we continuously confront issues of new impression.

No matter what the industry, we pride ourselves in achieving our clients’ objectives through efficient and creative solutions primarily designed to avoid disputes in the first place—which is always the best litigation strategy.  Many times, our clients obtain excellent outcomes before or at the earliest stages of litigation because our adversaries quickly recognize the challenges they will face in litigating against us.  When litigation is unavoidable, however, we work hard to provide our clients with both cost-efficient and “big firm” quality representation.



Your intellectual property (or “IP”) strategy can harness your most valuable information and intangible assets including your name, your brand, your designs, your content, your services, and your products — what makes your business stand apart in a competitive world.  We can help you evaluate and build your IP portfolio, then secure it, monetize it, and protect it.

IP encompasses multiple areas of law and different types of information or material.

Our Intellectual Property practice focuses on:


Trademarks include names, signs, logos, designs, phrases, slogans, expressions, and sometimes even colors, sounds, or smells that identify or distinguish one business compared to others.  Trademark protection is fundamental in securing your “brand.”


Copyright covers original works of creative authorship fixed in a tangible medium of expression.  This includes literary, dramatic, musical, and artistic works, such as poetry, novels, designs, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.  Depending upon the type of work, “moral rights” (such as the right of attribution) may be implicated as well.


Trade secret laws can vary somewhat between states, but generally trade secrets cover information, including drawings, cost data, customer lists, formulas, recipes, patterns, compilations, programs, devices, methods, techniques or processes that derive economic value from not being generally known and are the subject of efforts that are “reasonable under the circumstances” to maintain secrecy.


Depending upon where you live or operate, there is a special patchwork of laws and regulations that protect and regulate personal information.  If you are handling or giving out personal or potentially sensitive information, you may be implicating privacy laws.


Publicity rights address the commercial use of an individual’s face, name, image, or likeness.  These rights vary state-to-state.  Marilyn Monroe, for example, lived in multiple states which created complex questions about her publicity rights.

Our Intellectual Property services include:


In states where new cannabis banking opportunities exist, Emerge Law Group has the proven expertise in creating canna-banking programs to efficiently capitalize on those opportunities. Our Banking Practice Group specializes in working with banks and credit unions to develop regulatory compliant programs and operational best practices. We also train banking staff to become experts in canna-banking so they can effective understand and manage the risk affiliated with canna-banking.

We regularly help clients with:


At Emerge Law Group, we recognize that employees are the heart and soul of any successful business.  Our Employment Law Practice Group works with employers to help them effectively manage their workforce, navigate the complex web of federal, state and local employment laws and, if necessary, defend against claims before administrative agencies and in court.

We regularly help clients with:


Our corporate finance and securities lawyers are experienced attorneys who have practiced at large law firms, worked as in-house counsel for public companies and investment banks, and owned and operated start-up companies. We work with clients to help achieve their financing goals while safely navigating the highly technical securities law landscape. 

In addition to representing issuers, we also routinely represent institutional and individual investors, including in connection with fund formation and investments.

Our expertise includes:

We have a deep understanding of the financing options available to businesses, including simple unsecured loans, asset-backed financing, convertible debt, common and preferred equity, crowdfunding and various other structures.  We work closely with our clients to understand their business and financing needs, ensure they are prepared to approach investors and choose the right partners, structure and negotiate terms, navigate the due diligence process and successfully close the deal.



Emerge attorneys have represented businesses in the alcohol and beverage industry, including wineries, breweries, distilleries, restaurants, bars, movie theaters, golf courses, and gas stations.  We can help you vet new locations, acquire existing locations, and apply for the appropriate liquor license.  We also provide training to comply with applicable rules and regulations, prepare operating procedures, submit renewals, and keep clients protected in the event of any potential violations or administrative hearings.


Emerge Law Group is highly experienced in the cannabis industry.  We have helped many clients obtain state licenses and local permits to operate cannabis businesses throughout California, Oregon, and Washington.  We regularly help clients with:

Cannabis laws and rules are also regularly changing.  Members of our team are dedicated to attending legislative hearings, state agency and local city and county meetings to stay up-to-date on any new changes and how to adjust to any new changes.

See our Cannabis Industry page for more information.


Emerge Law Group is a leader in the psychedelics industry.  There is tremendous excitement about the potential for psychedelic drugs to benefit a wide variety of populations, including veterans struggling with PTSD and terminally ill patients suffering with anxiety and depression.  Until recently, psychedelic substances have been accessible only in the underground; they are illegal under state and federal law to manufacture, distribute, or possess.  These substances have, since 1970, been treated as having no legitimate medical use, and no commercial application.  As such, businesses have not invested in this area or required legal services, outside of the criminal context.

Today, psychedelics are proceeding toward legalization on multiple paths.  Researchers in a multitude of clinical studies are proving the medical safety and efficacy of these medicines, with the objective of changing the treatment of these substances under the federal Controlled Substances Act, opening legal access to them.  Private and public companies are now actively raising money to develop intellectual property and capitalize on the market opportunities associated with psychedelic drugs.  Opportunities to be early actors in this new arena are tremendous.

See our Psychedelics Practice Group page for more information.


Our business transactions team is made up of highly experienced transactional attorneys who have practiced at large law and accounting firms, worked as in-house counsel for public companies and investment banks, and owned and operated start-up companies. We understand complex legal matters and provide high quality legal services in a cost-effective manner.  Our clients value our experience, knowledge and judgment.


Our team routinely advises clients regarding:


Emerge attorneys also advise on-going concerns with: