Many of you have likely heard of the lawsuit against the breeders of the award-winning Gorilla Glue 4 cannabis strain; in March, the Ohio-based Gorilla Glue liquid adhesive manufacturer filed a trademark infringement suit against GG Strains. And while this lawsuit is stirring up controversy in the industry, it’s not the first suit of its kind, nor will it be the last.
In 2014, candy maker Hershey Co. sued, in federal court, two dispensaries selling products that the company felt were infringing on its trademarked products, claiming that TinctureBelle’s Hasheath and Dabby Patty products were rip-offs of Hershey’s Health bar and York peppermint patty candies. “Similarly, Conscious Care sold Reefer’s peanut butter cups and Mr. Dankbar, takeoffs of Reese’s Peanut Butter Cups and Mr. Goodbar brands,” reported Reuters.
Both suits were settled with the cannabis companies agreeing to cease sales of the brands in question and to “destroy any remaining inventory and packaging,” according to Reuters, citing federal court documents. One of the issues under debate is the concept of a “parody” on a trademarked brand. “A parody exists when one imitates a serious piece of work, such as literature, music or artwork, for a humorous or satirical effect,” according to Corporate.FindLaw.com. There is a possible defense against copyright infringement, called “fair use,” but when parodies are created for monetary gain, the results are often not favorable to the company creating the parody.
In another case, the owner of Michigan-based dispensary Buds R Us recently received a letter “from Blank Rome, counselors at law, saying he infringed on Toys R Us’ intellectual property (IP) rights with the name of his dispensary and a logo complete with Geoffrey the Giraffe smoking a joint,” reported Fox2 Detroit. If Buds R Us doesn’t change its name, a lawsuit could follow. But as Fox2 reported, the owner is considering a name change.
Copying popular names or logos that appeal to children is also dangerous territory. In fall 2016, “The Oregon Liquor Control Commission … approved a rule that prohibits using some popular strain names on packaging and labeling. Rob Patridge, chairman of the commission [said], ‘If you walk through a toy store and you can identify things that are strain names ... those are probably inappropriate. It’s almost as simple as that,’” reported The Oregonian. Prohibited names include 20 strains; those strains will still be allowed to be sold if they’re labeled with initials or other short-hand references instead of the full strain name.
It seems wise to avoid copyrighted material and trademarks when creating your business name, logos, strain names, etc. As the cannabis industry becomes more mainstream, it will be increasingly in the line of sight of mainstream businesses. Why risk having to stop selling one of your most popular strains, or changing the name of your established business, or in the worst-case scenario, being faced with an infringement lawsuit that could cost you hundreds of thousands of dollars or worse, when you could avoid that altogether?
