“Go­rilla Glue #4” lands busi­ness in a sticky spot

The Denver Post - - BUSINESS - By Ali­cia Wal­lace

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.”

Smok­ing go­rilla

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.

Re­mar­ket­ing ef­forts

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.

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