The Gorilla Glue adhesive company decided that GG Strains out of Nevada was making too much money by infringing on their trademark with their Gorilla Glue #4, #1 and #5 strains. The Gorilla Glue adhesive is manufactured out of Ohio which is working on establishing its medical marijuana program, but the Gorilla Glue company itself has no immediate intentions of involving itself in the recreational marijuana or medical marijuana business. Does this sort of lawsuit further legitimize the recreational marijuana industry?
Copyright and trademark infringement lawsuits have almost become a right-of-passage in the business world that signifies a truly established company. During cannabis prohibition, it never occurred to a business that they should sue for the nickname of an illegal substance. Will a tidal wave of lawsuits now come crashing in on the recreational marijuana industry? Do you think other legal marijuana companies will face lawsuits for the fun strain names that they casually picked before recreational weed states decided to walk the straight and narrow path?
An adhesives firm and a cannabis business have agreed to patch up their differences and send the “gorilla” packing from dispensaries.
The Gorilla Glue Co. and GG Strains LLC reached a settlement in the trademark infringement case the Ohio-based glue maker brought against the Las Vegas-based developer of marijuana strains, court records show.
Under the settlement agreement, GG Strains and its licensees of the company’s numbered strains initially named Gorilla Glue #4 (additionally #1 and #5) will have to transition away from that name, any gorilla imagery and similarities to Gorilla Glue Co. trademarks by Sept. 19, 2018, according to documents filed in federal court for Ohio’s southern district.
GG Strains also will eventually have to shut down its gorillaglue4.com website and transfer that domain name to Gorilla Glue Co. by Jan. 1, 2020, according to the Sept. 21 court order.
Other terms of the agreement included the following:
-The parties cannot disparage each others’ companies, services or actions
-GG Strains has 12 months to cease using the word “Gorilla,” an image of a gorilla or the “Gorilla” trademarks.
-In the nine-month period following Dec. 18, 2017, GG Strains can only use the Gorilla words, images or trademarks preceded by a different name and the phrase “formerly known as” or within a “History” page on GG Strains’ website.
-GG Strains is required to disable the gorillaglue4.com website (can redirect it until Jan. 1, 2020, and explain the redirect for nine months following Sept. 19) and transfer website to Gorilla Glue Co., which will not activate or use it.
-Assign interest in GG Strains’ registered “Gorilla Glue” trademarks to Gorilla Glue by Jan. 1, 2020.
-Affiliated companies, dispensaries, cultivators and other partners have to stop using the word “gorilla,” or any Gorilla Glue Co. trademarks or imagery. Licensees of the strain have up to 90 days from Sept. 19, 2017, to stop using the gorilla word, images or trademarks. For 12 months after Sept. 19, 2017, GG Strains and only its licensing partners can use the prohibited words if preceded by a different name and the phrase “formerly known as.”
The settlement did not involve any monetary transactions between the firms, said Tom Hankinson, Gorilla Glue Co.’s attorney, and officials for GG Strains.
Gorilla Glue Co. and GG Strains reaching settlement terms was a “good thing,” Hankinson said Wednesday.
“I hope that other industry participants will respect these companies’ resolution of the matter,” he said. “I can’t comment specifically on Gorilla Glue’s future activities, but it has invested a great deal in the Gorilla Glue brand. It means a lot to the company and its stakeholders, and it would be a good bet that the company intends to protect its rights in that brand.”
GG Strains officials are in the throes of rebranding efforts and plan to contact partners, licensees and other industry members informing them of the settlement, the new names and some of the timetables outlined in the agreement, said Catherine Franklin, the company’s chief executive officer. The new names include: GG4 and/or Original Glue, GG5 and/or New Glue, and GG1 and/or Sister Glue, according to documents GG Strains provided to The Cannabist.
Ross Johnson, a founder of GG Strains, estimated the dispute and the ongoing rebranding efforts cost the firm $250,000.
“We’re going to survive; we’re going to overcome it,” Johnson told The Cannabist on Wednesday. “Is it a setback? Most definitely it is a setback. But it’s all behind us now, and it’s allowing us to move forward.”
The Sharonville, Ohio-based Gorilla Glue Co. filed the lawsuit against GG Strains in March, alleging trademark infringement, dilution, unfair competition and cybersquatting.
By licensing and marketing products under the “confusingly similar” names of Gorilla Glue #4, Gorilla Glue #1 and Gorilla Glue, #5, GG Strains is trading on — and profiting from — the reputation and goodwill the Gorilla Glue Co. built during its 23 years of business, the firm alleged in the March 24 complaint.
Gorilla Glue Co.’s initial claims for relief included having GG Strains stop using the Gorilla Glue names, logos and imagery; deliver up for destruction any advertisements, signs, clothing or other materials containing the alleged infringing marks; disable the gorillaglue4.com website and transfer the domain to Gorilla Glue Co.; withdraw and cancel any applications or trademarks containing the words “Gorilla Glue”; and pay any and all profits arising from the alleged unlawful acts.
GG Strains officials denied the infringement claims, arguing that the two brands could coexist — akin to the Deltas (faucets and airlines) and Doves (soaps and chocolates) of the world. GG Strains executives and founders also said they started a rebranding effort to change the “Gorilla Glue” numbered strains to “GG4,” “GG1,” and “GG5.”
According to the strain company, the naming had originated from a reputed episode where the company’s founders and budtenders commented on the glue-like, sticky nature of the plant’s resinous trichomes.
Intellectual property experts said the Gorilla Glue case represented another coming-of-age moment for the maturing legal cannabis industry: that the guerrilla, tongue-in-cheek brand names developed during the heyday of underground marijuana was now being regarded in the same light as traditional business.