Page 17 - November 2018 | Cleveland Metropolitan Bar Journal

• Possess a “minimal degree of creativity”; and • Reasonable steps must be used by the holder Conclusion
• Be fixed in a tangible form that is sufficiently of the information to maintain the secret. Cannabis businesses may face additional
permanent to be reproduced. Unlike the other forms of IP protection, which challenges in protecting their IP, but by
However, something to keep in mind is require disclosure, trade secrets are all about doing so in the beginning, they stand a
that short phrases (i.e., brand names, tag lines, maintaining the confidentiality. “Reasonable greater chance of finding success long
titles, slogans) are not copyrightable. Many steps” may seem vague, but consider taking term. Building their IP portfolio will allow
businesses included words in their logos so steps such as limiting the number of people them to maintain a competitive advantage
while logos with words may be submitted for who know the information, making sure those and failing to do so could hurt them in the
registration with the Copyright Office, the people know the information is confidential, future. Therefore, it should be a critical
copyright will only cover the design or graphic utilizing nondisclosure agreements, and business task for these emerging businesses
elements of the logo. Copyright protection for a including confidentiality provisions within to think about what IP protection makes
logo still provides some protection for cannabis employment contracts. Cannabis businesses sense for them.
businesses and the possibility of receiving can utilize trade secret protection to protect
compensation for the use of the logo by others. their sensitive business information as well by
meeting the three conditions above. Kristen M. Hoover is an
Patent Protection Additionally, trade secrets are frequently intellectual property attorney at
Patent protection is only available federally. Utility used by businesses as an alternative to McCarthy Lebit. Ms. Hoover’s
patents are available for “any new and useful patent protection for innovations. Cannabis practice focuses on patent and
process, machine, manufacture, or composition businesses working to develop new strains trademark prosecution, as well
of matter, or any new and useful improvement of cannabis may choose to keep those as copyright registration, trade secrets and
thereof” and grant inventors the right to exclude developments secret. Keep in mind however general intellectual property protection. Ms.
others from making, using, or selling it for up that independent development will not be Hoover handles both domestic and
to 20 years. Additionally, design patents are considered a violation of trade secret law. international intellectual property matters.
available that cover an aesthetic or ornamental Therefore, a competitor who innovates the She has been a CMBA member since 2014.
design and plant patents are available that protect same strain on their own could sell it without She can be reached at (216) 696-1422 or kmh@
asexually reproduced plants. Since patents are it being a trade secret violation. mccarthylebit.com.
issued by the USPTO which denies trademark
protection for cannabis goods and services, it
might be surprising to find out that the USPTO
has granted cannabis patents for all three types
including a utility patent for specific chemical Helping you navigate
profiles, design patents for cannabis devices, and
at least one plant patent for Ecuadorian Sativa. through difficult
Even though patent protection is available to the
cannabis industry, many cannabis businesses,
particularly in the medical marijuana industry, financial issues.
have opted to focus on innovation without
seeking patent protection. This may be due to
the difficulty of obtaining a patent for certain Our experienced • Economic Damages
technologies, particularly without supporting financial experts • Fraud Investigation & Deterrence
data, and obtaining cannabis research is still will help your • Valuations for Estate & Gift
quite difficult in the United States. Regardless, it
remains an option to be considered. clients with: • Business Valuations
• Insolvency & Restructuring
Trade Secret Protection
Trade secret protection exists at both the state and
federal level, and it differs greatly from the other Jeff Firestone, CPA, CFE, CVA
forms of IP protection. Business information such Director of Litigation Services
as business plans, customer lists, secret recipes, PHONE 440-892-8900 ext. 113
supplier information, and other proprietary
information can all be protected as a trade secret EMAIL jeff@mcmanamonco.com
provided the requisite steps are taken. There WEB www.mcmanamon.com
are three general conditions that must exist for
information to be considered a trade secret:
• The information must be a secret;
• The information must have commercial
value because it is secret; and
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