{"id":7643,"date":"2017-08-10T15:46:56","date_gmt":"2017-08-10T15:46:56","guid":{"rendered":"http:\/\/www.denverpost.com?p=2746264&amp;preview_id=2746264"},"modified":"2017-08-10T15:46:56","modified_gmt":"2017-08-10T15:46:56","slug":"gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name","status":"publish","type":"post","link":"https:\/\/cannitrol.com\/blog\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name\/","title":{"rendered":"Gorilla Glue lawsuit: Marijuana biz stuck in the middle of branding battle over popular weed strain\u2019s name"},"content":{"rendered":"<div id=\"wp_fb_like_button\" style=\"margin:5px 0 5px 5px;float:right;height:100px;\"><script src=\"http:\/\/connect.facebook.net\/en_US\/all.js#xfbml=1\"><\/script><fb:like href=\"https:\/\/cannitrol.com\/blog\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name\/\" send=\"true\" layout=\"standard\" width=\"450\" show_faces=\"false\" font=\"arial\" action=\"like\" colorscheme=\"light\"><\/fb:like><\/div><div class=\"media_block\"><\/div>\n<div class=\"row\">\n<div class=\"large-10 large-centered small-12 columns\">\n<div class=\"entry-meta-date\">Published: Aug 10, 2017, 8:43 am \u2022 Updated: Aug 10, 2017, 10:59 am<span class=\"single-comments-link\" \/><\/div>\n<p class=\"byline\">By <span class=\"author\"><a class=\"url fn n\" href=\"http:\/\/www.thecannabist.co\/author\/awallace\/\" rel=\"author\">Alicia Wallace<\/a><\/span><em>, The Cannabist Staff<\/em><\/p>\n<p>This origin story is the stuff of legend in the cannabis world.<\/p>\n<p>Back in 2012, A Nevada medical marijuana cultivator working under the under the uniquely spelled pseudonym \u201cJoesy Whales\u201d was trimming a new plant born from a happenstance encounter between established strains Chem\u2019s Sister, Sour Dubb and Chocolate Diesel.<\/p>\n<p>The phone rang.<\/p>\n<p>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.<\/p>\n<p>The hybrid marijuana strain was thus christened: Gorilla Glue #4.<\/p>\n<p>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.<\/p>\n<p><a href=\"http:\/\/www.gorillatough.com\/\" target=\"_blank\" rel=\"noopener\">The Gorilla Glue Company<\/a> \u2014 maker of adhesive products such as Gorilla Glue, Gorilla Epoxy and Gorilla Tape \u2014 is suing Peabody, founding partner Ross Johnson and their company <a href=\"http:\/\/www.gorillaglue4.com\/\" target=\"_blank\" rel=\"noopener\">GG Strains LLC<\/a>, alleging trademark infringement, dilution, unfair competition and cybersquatting. By licensing and marketing products under \u201cconfusingly similar\u201d names, GG Strains is ultimately trading on the reputation and goodwill that the family-run, Sharonville, Ohio-based company built over 23 years of business, according to the March 24 complaint.<\/p>\n<p>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 fun-loving, guerrilla marketing of marijuana\u2019s underground heyday is now being viewed in the <a href=\"http:\/\/www.thecannabist.co\/2016\/01\/06\/marijuana-marketing-brands-willie-nelson-snoop-dogg\/45906\/\">same light as that of traditional industry<\/a>.<\/p>\n<figure class=\"figure wp-caption aligncenter\"><img loading=\"lazy\" class=\"size-full wp-image-25080\" src=\"https:\/\/cannitrol.com\/blog\/\/wp-content\/uploads\/2017\/08\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name.jpg\" alt=\"Gorilla Glue #4 (marijuana review)\" width=\"1000\" height=\"600\" \/><figcaption class=\"wp-caption-text\">An example of the Gorilla Glue #4 strain, grown in Colorado. (Ry Prichard, The Cannabist)<\/figcaption><\/figure>\n<p>As Gorilla Glue Co. moves to protect a brand built over more than two decades, the entrepreneurs behind GG Strains said a loss wouldn\u2019t just be detrimental to their company, it would also set an awful precedent for intellectual property in the cannabis industry.<\/p>\n<p>\u201cWe\u2019re not millionaires, we\u2019re cannabis breeders and cultivators,\u201d GG Strains\u2019 Johnson told The Cannabist. \u201cMost 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.\u201d<\/p>\n<h3>No longer an underground concern<\/h3>\n<p>The court complaint filed by Gorilla Glue Co. is 140 pages, laden with lists and images of the company\u2019s trademarks \u00a0juxtaposed with pictures from GG Strains\u2019 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.<\/p>\n<p>Another exhibit includes a screenshot of Facebook search results for \u201cgorilla glue\u201d \u2014 it shows an alternating mix of posts about repaired coffee mugs and images of trichome-covered nugs.<\/p>\n<figure class=\"figure wp-caption aligncenter\"><img loading=\"lazy\" class=\"size-full wp-image-85293\" src=\"https:\/\/cannitrol.com\/blog\/\/wp-content\/uploads\/2017\/08\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name.png\" alt=\"GG-strains-trademark-application-gorilla-image\" width=\"586\" height=\"356\" \/><figcaption class=\"wp-caption-text\">GG Strains submitted this image in a trademark application in Washington state. (Courtesy of the Washington Office of the Secretary of State)<\/figcaption><\/figure>\n<p>GG Strains\u2019 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.\u2019s complaint alleges.<\/p>\n<p>\u201cThis lawsuit is not a comment on any federal or state policy matters, medical or pharmaceutical issues, or choices in recreation,\u201d the complaint states. \u201cBut Gorilla Glue 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.\u201d<\/p>\n<p>GG Strains is no longer an underground concern, said Gorilla Glue Co.\u2019s attorney Thomas F. Hankinson, a partner with the Cincinnati firm <a href=\"http:\/\/www.kmklaw.com\/\" target=\"_blank\" rel=\"noopener\">Keating Muething &amp; Klekamp PLL<\/a>.<\/p>\n<p>\u201cIt is a business that should be held to the same standards of fair play in branding that apply to all other businesses,\u201d Hankinson told The Cannabist. \u201cGG Strains not only took the name, but intentionally traded on Gorilla Glue\u2019s reputation for high-quality adhesives\u2019 \u2018stickiness.&#8217;\u201d<\/p>\n<p>Gorilla Glue Co. officials declined to be interviewed for this story, citing the ongoing legal matter and referred questions to attorney Hankinson.<\/p>\n<p>\u201cGorilla Glue (Co.) just wants to protect its brand and communicate reliably with its customers through that brand,\u201d Hankinson said.<\/p>\n<p>\u201cGG Strains\u2019 side of this case is ironic,\u201d he added. \u201cTheir whole business model is making cannabis industry players pay a license fee for the name, which they don\u2019t even own. So when they pitch it as \u2018Gorilla Glue versus cannabis,\u2019 that is far from the case.\u201d<\/p>\n<h3>\u201cThe dominoes have already started to fall\u201d<\/h3>\n<p>While the outcome of <em>Gorilla Glue Co. v. GG Strains<\/em> could influence future trademark cases in and beyond the cannabis industry, the lawsuit isn\u2019t terribly surprising, intellectual property attorneys told The Cannabist.<\/p>\n<p>The case should stand as a stark reminder for other marijuana firms that they\u2019re no longer operating in the shadows, said Amanda F. Conley, a partner at Oakland, Calif.-based <a href=\"http:\/\/www.brandandbranch.com\/\" target=\"_blank\" rel=\"noopener\">Brand &amp; Branch LLP<\/a>, which provides intellectual-property legal services to the cannabis, technology, gaming and publishing industries.<\/p>\n<p>\u201cIf anything, it\u2019s surprising it took so long,\u201d she said.<\/p>\n<p>Mainstream brands already have been eyeing the cannabis industry, said Shabnam Malek, a Brand &amp; Branch partner and president of the National Cannabis Bar Association.<\/p>\n<p>In 2014, <a href=\"http:\/\/www.thecannabist.co\/2014\/10\/16\/tincturebelle-hershey-ganja-joy\/21644\/\" target=\"_blank\" rel=\"noopener\">The Hershey Co. sued Colorado Springs-based TinctureBelle<\/a> for breaching design and name patents by selling edibles that resembled Reese\u2019s, Almond Joy and Heath candy bars. <a href=\"http:\/\/www.thecannabist.co\/2014\/10\/16\/tincturebelle-hershey-ganja-joy\/21644\/\">Months later, TinctureBelle settled<\/a>, agreeing to recall and destroy its edibles \u2014 with names such as Reefers, Ganja Joy and Hasheath \u2014 that looked like Hershey products.<\/p>\n<p>The Girl Scouts of the United States of America have sent out demand letters to dispensaries, requesting they cease selling marijuana with the <a href=\"http:\/\/www.thecannabist.co\/2014\/01\/13\/girl-scout-cookies-marijuana-review\/2511\/\">Girl Scout Cookies<\/a> name, Conley observed.<\/p>\n<p>Several of Brand &amp; Branch\u2019s cannabis clients have been approached by mainstream companies alleging infringement, Malek said.<\/p>\n<p>\u201cThe dominoes have already started to fall,\u201d she said.<\/p>\n<p>The cannabis industry does have unique concerns relative to trademark matters, both attorneys said.<\/p>\n<p>For instance, businesses that previously operated in the shadows don\u2019t 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.<\/p>\n<figure class=\"figure wp-caption aligncenter\"><img loading=\"lazy\" class=\"size-full wp-image-85329\" src=\"https:\/\/cannitrol.com\/blog\/\/wp-content\/uploads\/2017\/08\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name-1.jpg\" alt=\"Gorilla Glue #4 (2)\" width=\"1600\" height=\"1067\" \/><figcaption class=\"wp-caption-text\">Another example of the Gorilla Glue #4 strain, grown in Colorado. (Vince Chandler, The Denver Post)<\/figcaption><\/figure>\n<p>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.<\/p>\n<p>\u201cOne issue that we still haven\u2019t really tested,\u201d Conley said, \u201cis to what extent a cannabis company can assert trademark rights in federal court.\u201d<\/p>\n<p>The bottom line, she said, is that cannabis companies should be prepared to rebrand if they believe they are violating another firm\u2019s trademarks.<\/p>\n<h3>\u201cWe\u2019re not selling glue\u201d<\/h3>\n<p>Faced with the prospect of conflict with The Gorilla Glue Co., GG Strains did indeed remarket their award-winning marijuana strains this spring, said the company\u2019s interim CEO Catherine M. Franklin. Gorilla Glues #4, #1 and #5 are now marketed as GG#4, GG#1, and GG#5.<\/p>\n<p>However, it\u2019s 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 <a href=\"http:\/\/www.thecannabist.co\/2014\/07\/21\/marijuana-five-questions\/11874\/\">sometimes, strains advertised and sold as Gorilla Glue #4<\/a> aren\u2019t actually grown from GG Strains\u2019 proprietary plant genetics, she added.<\/p>\n<figure class=\"figure wp-caption aligncenter\"><img loading=\"lazy\" class=\"size-full wp-image-72742\" src=\"https:\/\/cannitrol.com\/blog\/\/wp-content\/uploads\/2017\/08\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name-2.jpg\" alt=\"Alaska Marijuana\" width=\"1100\" height=\"733\" \/><figcaption class=\"wp-caption-text\">Display jars are shown containing various strains at the Rainforest Farms marijuana shop in Juneau, Alaska, on Jan. 18, 2017. The store\u2019s best-seller is Gorilla Glue. (Mark Thiessen, The Associated Press)<\/figcaption><\/figure>\n<p>Following GG Strains\u2019 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, <a href=\"http:\/\/www.gorillaglue4.com\/\">gorillaglue4.com<\/a>, and trademarks.<\/p>\n<p>Said GG Strains company partner Johnson: \u201cIf we settle with these guys outside of court, they\u2019re going to go after everybody,\u201d referring to the cultivators and dispensaries that grow and sell the strain, along with the merchandise they produce referencing the strains.<\/p>\n<p>The cannabis company argues that the two brands should coexist \u2014 much akin to Delta Airlines and Delta Faucet, or Dove soap and Dove Chocolate.<\/p>\n<p>\u201cWe\u2019re not selling glue,\u201d Franklin said, claiming that Gorilla Glue #4 was denied a federal trademark because it was cannabis, not because they were violating trademarks on similarly named products.<\/p>\n<p>\u201cIt was a name that kind of stuck,\u201d she said. \u201cWe didn\u2019t piggyback off anything. Nobody is buying this thing because they like glue.\u201d<\/p>\n<h3>Another fight: Which court should hear case?<\/h3>\n<p>Jurisdiction for the case is also a serious concern for GG Strains.<\/p>\n<p>The Gorilla Glue Co. filed the suit in its home state of Ohio. GG Strains, on the other hand, argues that the battle should play out in Nevada, where the company operates.<\/p>\n<p>The lawsuit was filed in Ohio federal district court because Gorilla Glue Co. alleges that \u201cone or more residents in Ohio have purchased clothing directly through defendant\u2019s website, the defendant received payment from Ohio through its website, and the clothing was shipped to Ohio.\u201d<\/p>\n<p>GG Strains officials claim they were \u201cbaited\u201d into the Ohio courtroom. They allege that only two purchases from Ohio were made through GG Strains\u2019 website, and that those purchases were made by Gorilla Glue Co.\u2019s chairman and a vice president.<\/p>\n<p>GG Strains company partner Johnson said that were the case to move forward in Ohio, it would put immense strain on the Las Vegas-based company and adversely affect the health of defendant Peabody, who requires dialysis.<\/p>\n<p>\u201cWe\u2019re not the youngest,\u201d Johnson said. \u201c(Peabody is) 63, I\u2019m 59. For us to go fight a battle in Ohio \u2026 it would literally be impossible for us to do it correctly.\u201d<\/p>\n<h3>\u201cThey\u2019re going to listen to Joesy Whales\u201d<\/h3>\n<p>Settlement talks between Gorilla Glue Co. and GG Strains have been rekindled in recent days.<\/p>\n<p>On Wednesday, attorney Hankinson told The Cannabist that Gorilla Glue planned to reenter settlement talks. He confirmed that he had previous settlement talks with GG Strains\u2019 founders, interim CEO and lawyer, but said he could not comment on the specifics of the discussions, citing confidentiality agreements.<\/p>\n<p>\u201cWe can say that GG Strains backed away from prior conversations and shut down the negotiations,\u201d he said. \u201cWe\u2019re certainly still open to it.\u201d<\/p>\n<p>GG Strains\u2019 Franklin confirmed that a request to reenter settlement talks was made, but said her firm had some needs of its own.<\/p>\n<p>The cannabis company is seeking a two-year transition period during which it can work with cultivators and dispensaries to rebrand Gorilla Glue #4 to GG#4.<\/p>\n<p>The transition period would also help GG Strains rein in the unauthorized activity, Franklin said.<\/p>\n<p>\u201cIt would allow the celebrity status that GG#4 has achieved and maintain that (status) without having more people come in and be able to manipulate her,\u201d she said, adding that she was confident the growers of GG#4 \u2014 even those growing unauthorized strains \u2014 would work with GG Strains to stay on the right side of the law.<\/p>\n<p>\u201cThey\u2019re going to listen to Joesy Whales before they listen to the Gorilla Glue (Co.),\u201d she said, referring to Peabody\u2019s popular pseudonym.<\/p>\n<p>Considering Peabody\u2019s state of health and inability to travel, GG Strains officials said they\u2019ve requested that Gorilla Glue Co. executives travel to Las Vegas for any settlement discussions.<\/p>\n<p>\u201cWe want to see if we can work together,\u201d Johnson said Wednesday. \u201cSit down mano to mano, owner to owner, creator to creator and see what happens.\u201d<\/p>\n<h3>Read <a href=\"https:\/\/assets.documentcloud.org\/documents\/3922765\/GG-Strains-Gorilla-Glue-Corporation-Marijuana.pdf\">the lawsuit<\/a><\/h3>\n<\/p>\n<p><a href=\"https:\/\/assets.documentcloud.org\/documents\/3922765\/GG-Strains-Gorilla-Glue-Corporation-Marijuana.pdf\">GG Strains Gorilla Glue Corporation Marijuana Lawsuit (PDF)<\/a><\/p>\n<p><a href=\"https:\/\/assets.documentcloud.org\/documents\/3922765\/GG-Strains-Gorilla-Glue-Corporation-Marijuana.txt\">GG Strains Gorilla Glue Corporation Marijuana Lawsuit (Text)<\/a><\/p>\n<div class=\"entry-meta-tags\">\n<div class=\"entry-tags\">Topics: <a href=\"http:\/\/www.thecannabist.co\/tag\/branding\/\" rel=\"tag\">branding<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/colorado\/\" rel=\"tag\">Colorado<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/gorilla-glue-4\/\" rel=\"tag\">Gorilla Glue #4<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/intellectual-property\/\" rel=\"tag\">intellectual property<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/lawsuits\/\" rel=\"tag\">lawsuits<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/legalized-states\/\" rel=\"tag\">legalized states<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/marijuana-trademark-law\/\" rel=\"tag\">marijuana trademark law<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/marketing\/\" rel=\"tag\">marketing<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/ohio\/\" rel=\"tag\">Ohio<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/trademarks\/\" rel=\"tag\">trademarks<\/a>, <a href=\"http:\/\/www.thecannabist.co\/tag\/washington\/\" rel=\"tag\">Washington<\/a><\/div>\n<\/div>\n<div class=\"entry-meta-author\">\n<div class=\"authorimage\"><a class=\"url fn n\" href=\"http:\/\/www.thecannabist.co\/author\/awallace\/\" rel=\"author\"><img src=\"https:\/\/cannitrol.com\/blog\/\/wp-content\/uploads\/2017\/08\/gorilla-glue-lawsuit-marijuana-biz-stuck-in-the-middle-of-branding-battle-over-popular-weed-strains-name-3.jpg\" class=\"authormug\" \/><\/a><\/div>\n<p class=\"author-desc\">Alicia Wallace joined The Cannabist in July 2016, covering national marijuana policy and business. In her 14 years as a business news reporter, her coverage has spanned topics such as the economy, natural foods, airlines, biotech, retail,&#8230;<\/p>\n<\/div><\/div>\n<\/p><\/div>\n<p><!-- .row --> <\/p>\n","protected":false},"excerpt":{"rendered":"<div class=\"media_block\"><\/div>\n<p>When you think of Gorilla Glue, is what comes to mind an adhesive or a weed strain? A lawsuit against GG Strains could shake up marijuana industry branding. <\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[5062,6813,77,5577,6826,5667,6858,9,6833,5437,5019,1,3,173,61,1736],"tags":[5063,6818,2655,5580,6828,5673,6860,6835,5444,5022,2751],"_links":{"self":[{"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/posts\/7643"}],"collection":[{"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/comments?post=7643"}],"version-history":[{"count":0,"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/posts\/7643\/revisions"}],"wp:attachment":[{"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/media?parent=7643"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/categories?post=7643"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/cannitrol.com\/blog\/wp-json\/wp\/v2\/tags?post=7643"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}