By: John Acito
No matter how big or small, most businesses will take legal action to protect the value, brand recognition, and reputation associated with their intellectual property. Until recently, marijuana was illegal under federal and state law. Now that some states have legalized marijuana, cannabis companies are more highly scrutinized to intellectual property laws. Due to the fast expanding nature of the the cannabis industry and these companies, many canna-businesses find themselves too big to fly under the radar in avoiding intellectual property laws. In fact, some cannabis companies have been infringing on iconic trademarks to boost the exposure and likability of their brands.
TINCTUREBELLE V. HERSHEY’S
In 2014, The Hershey Company sued a Colorado Springs-based edible marijuana company for trademark infringement on their famous packaging (14-cv-01564-WYD), in the U.S. District Court for the District of Colorado. The major difference is that the products inside the packaging are infused with marijuana. The lawsuit was filed against TinctureBelle LLC and TinctureBelle Marijuanka in U.S. District Court in Denver. Undeniably, TinctureBelle packaging looks very similar to Hershey’s iconic Almond Joy ®, Heath ®, Reese’s ®, and York Peppermint Pattie ®. The names of the products are also similar: Ganja Joy, Hashheath, Hashees, and Dabby Patty.
As expressed in articles from The Denver Post (2), Hershey has concerns with consumers, especially children, confusing cannabis-based products for their products. Char Mayes, president of TinctureBelle, found this argument to be unfounded as the products are only sold in state-licensed medical marijuana dispensaries. Mayes says that to purchase, one must have a state-approved “red card” and products are not sold in recreational marijuana establishments. Hershey settled and TinctureBelle had to destroy or recall all products resembling the plaintiff’s products. The defendant was required to stop using the names resembling Hershey’s products and Hershey’s yellow, brown, and orange colors (4). Colorado Governor John Hickenlooper has since signed a bill requiring edibles sold in medical marijuana dispensaries to meet the same packaging standards as edibles sold recreationally.
GORILLA GLUE CO. V. GG STRAINS (5)
In March of 2017, The Gorilla Glue Company brought a lawsuit against GG Strains LLC for trademark infringement (1:2017cv00193), dilution, and unfair competition on their adhesive products. The case has been brought to federal district court for the Southern District of Ohio, which is Gorilla Glue’s primary place of business and a state where GG Strains has conducted business. Gorilla Glue prides itself on their reputation for creating strong adhesive products, and marketing that has lead them to become a nationally well-known brand recognized by the gorilla logo. The adhesive company argues that the recent boom in the marijuana industry and growing popularity of GG Strains is harmful to their brand. GG Strains, a Nevada based company, sells three strains of marijuana: Gorilla Glue 1, Gorilla Glue 4, and Gorilla Glue 5. The marijuana company has gained brand recognition through cannabis competitions and selling “Gorilla Gear” that bears the supposed infringing name. Both companies logos have gorillas on them, GG Strain has registered trademark in Washington and Colorado.
Gorilla Glue alleges that their products are associated with the terms “strength” and “stickiness,” which can also be attributed to strains of marijuana. The defendant, Mr. Whales, was trimming marijuana plants and when he grabbed his phone to answer a call noticed his hands were sticky. He told the caller that the plant made his hands “stick to things like Gorilla Glue (5).” The adhesive company claims that GG Strain chose the name “with the express purpose to exploit and trade on the goodwill and reputation for strength and stickiness that Gorilla Glue had built in its Gorilla Glue Mark,” which caused Mr. Whales to think of the brand so well associated with those characteristics (5).
The Gorilla Glue Company attempted to settle requiring GG Strains to give up their website and trademarks. In an article from The Cannabist, the cannabis company believes both companies can coexist with similar names like Dove Soap and Dove Chocolate (6). Their argument is that the two companies sell different products and are not competitors. In September of 2017, the companies reached a settlement granting GG Strains two years to sell off surplus product so they do not have to relinquish their achievements they have made so far.
On their website (7), GG Strains has an “immediate release” page to inform consumers of their rebranding. The company is transitioning from “Gorilla Glue 1”, “Gorilla Glue 4”, “Gorilla Glue 5” to “GG1,” “GG4,” and “GG5.” Additionally, marketing and packaging will be amended with their authorized partners. The Gorilla Glue Company will not take legal action if they meet the requirements stated in the settlement.
If you are a startup cannabis company, consider these cases examples of what not to do. As seen here, it’s not the best idea to brand your company in a way that piggybacks off the notoriety and good-will of another company. While it may seem to be a quick and fast way to create brand recognition, it could cause potentially bigger issues down the road. Additionally, putting in the work to grow your brand in a way that doesn’t step on the toes of others in the industry may be a more rewarding and respectable approach when trying to establish yourself in the cannabis space.
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