Cannabis Trademark Infringement Series: Gorilla Glue #4

Written by Neil Juneja, Founder & Managing Partner of Gleam Law, PLLC. 

Understanding how to protect your brand from being on the receiving or perpetrating end of trademark infringement is unbelievably important. To illustrate the importance of the topic, we are starting a three-part series on the biggest cannabis trademark infringement cases that have happened so far in this developing industry.

Early on in the cannabis industry, it was relatively easy to get away with “cute” cases of trademark infringement, like branding your edibles with a close likening to a well-known candy company like Reese’s Peanut Butter Cups or making a bong that looks like a Starbuck’s Frappuccino cup. But as the industry grows, more money is made, and states adopt legal frameworks and regulations, trademark infringement stops being cute and starts being a case for serious legal action.

Just ask the company that named a cannabis strain Gorilla Glue #4. The story of how they came to that name is pretty endearing and goes a little something like this. After handling a new and particularly sticky strain, a grower went to answer the telephone. He soon realized the phone was stuck to his hand. The resin excreted by the plant’s trichomes was so strong that he proclaimed it was like “Gorilla Glue,” a popular extra strength glue available in virtually every grocery store and corner pharmacy around the country.

GG Strains, a well-known cannabis company, named the strain Gorilla Glue #4 and it went on to become one of the more popular strains in legal states. Unfortunately, the true owner of the Gorilla Glue trademark eventually came knocking.

This began a six-month-long case between Gorilla Glue Co. and GG Strains LLC. Gorilla Glue Co. argued that the strain, Gorilla Glue #4, violated their trademark and damaged the brand’s reputation as a family-friendly company. Gorilla Glue Co. initially sought relief in the form of GG Strains LLC discontinuing the use of the Gorilla Glue names, logos, and images; destruction of any advertisement or material containing the alleged infringing marks; take down and hand over the domain to Gorilla Glue Co.; end any applications for trademarks containing “Gorilla Glue”; and give all profit arising from the alleged infringement to Gorilla Glue Co.

GG Strains LLC relied on an argument that their product (marijuana) was wholly different than the product Gorilla Glue Co. produces (adhesives). They denied all claims of infringement and instead argued that both brands could exist peacefully, without one diluting or damaging the reputation of the other.

While this case would have made for a fascinating court ruling and cannabis trademark precedent, it never got to that point. After six months of legal back and forth, the two companies eventually came to a settlement agreement.

Luckily for both parties, the settlement was as close to a win-win situation as you could ask for in these scenarios. No money had to exchange hands in the settlement, so GG Strains LLC was able to hold on to their profits. In return, GG Strains was granted one year to cease using the word “Gorilla” or an image of a gorilla and until then, they must only use those terms when preceded by “formerly known as” or on the “History” page of their website. GG Strains must also disable and hand over the domain by January 1, 2020; hand over any registered “Gorilla Glue” trademarks to Gorilla Glue Co.; and all licensees and dispensaries selling the product must also forego using the term “gorilla” or imagery of a “gorilla” in conjunction with the product. In return, neither party can disparage the other and Gorilla Glue Co. will not receive any monetary compensation for the alleged infringement.

The moral of the story here, as will be the moral in the rest of this cannabis trademark series, is that the legal cannabis industry is becoming too large to get away trademark infringement. It is always best practice to come up with original ideas for your cannabis trademark, staying far away from anything that could be considered profiting off the goodwill of another brand.

Trademark infringement is a serious issue. We can help you avoid it. If you have any questions regarding cannabis trademarks, set up a free consultation with Gleam Law.

Photo Credit: The Cannabist