Page 16 - November 2018 | Cleveland Metropolitan Bar Journal

BarJournal INTELLECTUAL PROPERTY

JULY/AUGUST 2015
FEATURE Intellectual Property and the

Cannabis Industry

BY KRISTEN M. HOOVER

edical marijuana has taken root presents unique challenges by being legal at Registering these marks for ancillary goods
in Ohio. As the state enters this the state level and illegal at the federal level. and services helps establish priority of use and,
budding industry, cannabis Not all forms of IP protection may be open in the event of descriptive marks, can help
businesses will face all the to cannabis business; however, ignoring IP build secondary meaning. Both priority and
Mchallenges traditional, new protection may lead to a permanent loss of secondary meaning may later give an advantage
businesses do, as well as countless extra hurdles rights as mentioned above. if marijuana is ever federally legalized and federal
because of the ongoing federal prohibition on trademark registration is possible.
cannabis. Intellectual property (IP) rights are Trademark Protection Beyond federal protection, many businesses
often overlooked by entrepreneurs in every A trademark serves as a source identifier for utilize state trademark protection. As states have
industry but are valuable assets that should goods and services and protects the goodwill decriminalized marijuana use, secretaries of state
not be ignored. Without an understanding of that a business develops and fosters in their in Colorado, Oregon, Florida, Minnesota, and
what IP protection is available, businesses risk a brand. Therefore, there is significant value California have allowed businesses to register
permanent loss of rights. in protecting a business’s trademarks. Most trademarks for cannabis goods and services.
IP rights can be even more vital in a nascent industries engaged in interstate commerce seek Further, common law provides for some
industry where the field is wide open for out federal protection of their marks through trademark protection as well; however, it does not
competition and early-acquired IP rights registration with the United States Patent and allow for recovery of damages for infringement.
that provide a market advantage may prove Trademark Office (USPTO). However, the Additionally, it is notoriously difficult to enforce
indispensable. IP rights are used to give USPTO will only register marks that relate to common law trademarks.
entrepreneurs a competitive edge by granting commerce which may lawfully be regulated by In Ohio, under Chapter 3796: 6-3-
IP owners the right to exclude. This prevents Congress. Marijuana is still classified as a Class 1 24 of the Ohio Code titled “Advertising,
IP owners from having their brands, trade drug; therefore, it is federally illegal and seeking marketing, and signage,” the state is requiring
secrets or innovations ripped off by competitors. federal registration on the good “cannabis” or dispensaries to submit names, logos, signs and
Additionally, IP rights can be licensed and used services for the “sale of cannabis,” will not work advertisements to the state board of pharmacy
to generate additional revenue streams, attract at the USPTO. for approval. After review, the Board may:
investors and add value to the company. On the other hand, the cannabis adjacent (a) require a specific disclosure be made in
The most common existing forms of IP industries might obtain registration. The USPTO the advertisement in a clear and conspicuous
protection are trademarks, patents, copyrights has registered marks for ancillary goods such as manner if the advertisement would be false or
and trade secrets. Some of these types of grinders or vaporizers and services including misleading without such a disclosure; (b) make
protection have both state and federal levels cannabis directories, medical advice related recommendations with respect to changes that
of protection. However, the cannabis industry to cannabis, and cannabis advocacy groups. are necessary to protect the public health,
safety, and welfare; or (c) prohibit the use of
the advertisement. While not a guarantee
or bar to obtaining trademark protection, it
is important to know there is an additional
approval that must be obtaining when Ohio
cannabis businesses select a name or logo.
Copyright Protection
Copyright law, unlike trademark law, does not
prohibit registration of works that concern illegal
acts or matter. Therefore, companies with logos
or related artwork that are cannabis-related works
may rely on copyrights. To benefit from copyright
protection, a logo must:
• Be original to the author, which means
the author must have created the work
independently (i.e., the work must not
be copied);
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