“Gorilla Glue #4” lands business in a sticky spot
This origin story is the stuff of legend in the cannabis world.
In 2012, a Nevada medical marijuana cultivator working under the uniquely spelled pseudonym “Joesy Whales” was trimming a new plant born from a happenstance encounter between established strains Chem’s Sister, Sour Dubb and Chocolate Diesel. The phone rang.
When Whales, whose real name is Jackie Don Peabody, answered the call, the resin secreted by the flower caused his hands to stick to the phone like glue.
The hybrid marijuana strain was thus christened Gorilla Glue #4.
But the branding inspired by what has been called an innocent story of inception has landed the fabled breeders of the highly decorated, extremely potent and wildly popular Gorilla Glue #4 in an even stickier legal situation.
The Gorilla Glue Co. — maker of adhesive products such as Gorilla Glue, Gorilla Epoxy and Gorilla Tape — is suing GG Strains LLC, the company founded by Peabody and business partner Ross Johnson, alleging trademark infringement, dilution, unfair competition and cybersquatting. By licensing and marketing products under “confusingly similar” names, GG Strains is ultimately trading on the reputation and goodwill that the family-run company, based in Sharonville, Ohio, built over 23 years of business, according to the March 24 complaint.
Although not the first litigation of its kind in the cannabis industry, the case represents another coming-of-age moment for the maturing legal industry: The funloving, guerrilla marketing of marijuana’s underground heyday is now being viewed in the same
light as that of traditional industry.
As Gorilla Glue Co. moves to protect a brand built over more than two decades, the entrepreneurs behind GG Strains said a loss wouldn’t just be detrimental to their company, it would also set an awful precedent for intellectual property in the cannabis industry.
“We’re not millionaires — we’re cannabis breeders and cultivators,” GG Strains’ Johnson said. “Most people have backed down from corporate businesses, so no case has set precedent as of yet. Down the line, this (case) will set the precedent.”
The court complaint filed by Gorilla Glue Co. is 140 pages, laden with lists and images of the company’s trademarks juxtaposed with pictures from GG Strains’ state trademark applications, which include cartoon art such as a sunglasses-wearing gorilla smoking a blunt with one hand and holding an award chalice in the other.
Another exhibit includes a screenshot of Facebook search results for “gorilla glue” — it shows an alternating mix of posts about repaired coffee mugs and images of trichome-covered nugs.
GG Strains’ apparent ambitions with respect to continued use and growth of the name has increased as medical and recreational use of marijuana have been legalized in more and more states, Gorilla Glue Co.’s complaint alleges.
“This lawsuit is not a comment on any federal or state policy matters, medical or pharmaceutical issues, or choices in recreation,” the complaint states. “But Gorilla Glue (Co.) has a famous, valuable brand built through tremendous products and strong consumer confidence, and as a business matter must take appropriate steps to protect its rights.”
GG Strains is no longer an underground concern, said Gorilla Glue Co. attorney Thomas F. Hankinson, a partner with the Cincinnati firm Keating Muething & Klekamp PLL.
“It is a business that should be held to the same standards of fair play in branding that apply to all other businesses,” Hankinson said. “GG Strains not only took the name but intentionally traded on Gorilla Glue’s reputation for high-quality adhesives’ ‘stickiness.’ ”
Gorilla Glue Co. officials declined to be interviewed for this story, citing the ongoing legal matter and referred questions to Hankinson.
“Gorilla Glue (Co.) just wants to protect its brand and communicate reliably with its customers through that brand,” Hankinson said.
“GG Strains’ side of this case is ironic,” he added. “Their whole business model is making cannabis industry players pay a license fee for the name, which they don’t even own. So when they pitch it as ‘Gorilla Glue versus cannabis,’ that is far from the case.”
No longer in shadows
While the outcome of Gorilla Glue Co. vs. GG Strains could influence future trademark cases in and beyond the cannabis industry, the lawsuit isn’t terribly surprising, intellectual property attorneys said.
The case should stand as a stark reminder for other marijuana firms that they’re no longer operating in the shadows, said Amanda F. Conley, a partner at Oakland, Calif.-based Brand & Branch LLP, which provides intellectual-property legal services to cannabis, technology, gaming and publishing industries.
“If anything, it’s surprising it took so long,” she said.
Mainstream brands already have been eyeing the cannabis industry, said Shabnam Malek, a Brand & Branch partner and president of the National Cannabis Bar Association.
In 2014, The Hershey Co. sued Colorado Springsbased Tincturebelle for breaching design and name patents by selling edibles that resembled Reese’s, Almond Joy and Heath candies. Months later, Tincturebelle settled, agreeing to recall and destroy its edibles — with names such as Reefers, Ganja Joy and Hasheath — that looked like Hershey products.
The Girl Scouts of the United States of America have sent out demand letters to dispensaries, requesting they cease selling marijuana with the Girl Scout Cookies name, Conley observed.
Several of Brand & Branch’s cannabis clients have been approached by mainstream companies alleging infringement, Malek said.
“The dominoes have already started to fall,” she said.
The cannabis industry does have unique concerns relative to trademark matters, both attorneys said.
For instance, businesses that previously operated in the shadows don’t have the luxury of establishing years of use for a trade or design mark. Likewise, the companies might not have been able to avail themselves of legal services because of bar association restrictions.
Furthermore, strain names can be considered varietals and, thus, are not capable of serving as trademarks, and common-law trademark rights are limited to geography, creating issues when a cannabis company looking to expand out of state via licensing encounters another company of the same name.
“One issue that we still haven’t really tested,” Conley said, “is to what extent a cannabis company can assert trademark rights in federal court.”
The bottom line, she said, is that cannabis companies should be prepared to rebrand if they believe they are violating another firm’s trademarks.
Faced with the prospect of conflict with Gorilla Glue Co., GG Strains did indeed remarket their awardwinning marijuana strains last spring, said the company interim CEO Catherine M. Franklin. Gorilla Glues #4, #1 and #5 are now marketed as GG#4, GG#1 and GG#5.
However, it’s tricky for GG Strains to ensure those rebranding practices extend everywhere cultivators are growing, dispensaries are selling and consumers are seeking the famous strain, Franklin said. And sometimes, strains advertised and sold as Gorilla Glue #4 aren’t actually grown from GG Strains’ proprietary plant genetics, she added.
After GG Strains’ rebranding efforts, Gorilla Glue Co. offered to settle the case, Franklin said. That initial settlement offer was a no-go, she said, because it required GG Strains to relinquish its website, gorillaglue4.com, and trademarks.