By Scott Hervey
According to cannabis folklore, cannabis cultivators in 2010, Josey Whales and Lone Watie created a strain of marijuana that was so sticky, Mr. Whales, during a phone call, commented that the plant made his hands “stick to things like Gorilla Glue.” From that, Whales and Watie came up with a name of their strain – Gorilla Glue#4. Since that time, the strain has won numerous competitions and has become extremely popular with consumers. Whales and Waite formed GG Strains, LLC which certified and authorized select cultivators around the country to market cannabis as “Gorilla Glue #4”; they operated the website <gorillaglue4.com> which sold clothing and other merchandise; and they applied to register certain trademarks with the state of Colorado which incorporate GORILLA GLUE.
Apparently, the Ohio-based Gorilla Glue Company became aware of the existence of the Gorilla Glue Strain in late 2016. Not surprisingly, the Gorilla Glue Company was not pleased. In March, 2017 the Gorilla Glue Company sued GG Strains, LLC for trademark infringement and trademark dilution. In October, 2017 the parties settled the dispute and, as a condition of settlement, GG Strains must transition away from “Gorilla Glue” as a strain brand name. This rebranding is not inexpensive; GG Strains estimates it will cost $250,000 to rebrand.
While we will never know the outcome of this case, it is interesting to look into what the outcome could have been had GG Strains mounted a defense.
Under section 43 of the Lanham Act, infringement occurs when the use by one party of a mark is likely to cause confusion, or to cause mistake, or deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods, services, or commercial activities by another person. Under the Ninth Circuit’s ruling in AMF Incorporated v. Sleekcraft Boats, the determination of “likelihood of confusion” is made by examining the following factors: 1) the strength of the mark; 2) the proximity of the goods; 3) the similarity of the marks; 4) the evidence of actual confusion; 5) the marketing channels used; 6) the type of goods and the degree of care likely to be exercised by the purchaser; 7) the defendant’s intent in selecting the mark; and 8) likelihood of expansion of the product line. This line of analysis is similar for most jurisdictions.
Strength of the Marks
Generally, arbitrary and fanciful marks are entitled to wide protection while marks that are suggestive are entitled to a restricted range of protection. Where a suggestive mark is the subject of a suit, infringement will be found only if the marks in question are very similar and the goods are closely related.
While the word “Glue” is merely descriptive of glue, “Gorilla” certainly is not. As such, the mark would be considered a strong mark – either arbitrary or only slightly suggestive. As a strong mark, it is entitled to a wider degree of protection.
Relatedness of the Goods/Services
For related goods, the danger is that the public will mistakenly assume there is an association between the producers of the related goods, even though no such association exists. Where the goods are complementary and the public is more likely to make such an association, the less similar in appearance the marks need to be to support a finding of likelihood of confusion.
How related are marijuana and marijuana products to glue? In general, it is not common for a single manufacturer to sell both products. Further, both products are not sold in the same type of stores and do not have any discernable overlap in consumer groups. If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012). Due to the unrelated nature of the goods, this factor would not favor a finding of confusion.
Similarity of the Marks
Similarity of the marks is tested on three levels: sight, sound, and meaning. Each must be considered as they are encountered in the marketplace. Although similarity is measured by the marks in their entirety, similarities weigh more heavily than differences.
It is not necessary that every word of a trademark be appropriated in order for there to be an infringement. Where the marks are exactly the same and the goods are competitive, infringement is almost always found. Where there are differences between the marks, those differences must be looked at in tandem with the similarities or differences in the goods or services. Where the goods or services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dis-similar goods or services.
Here both parties use the words “Gorilla Glue.” However, because GG Strains incorporates “Gorilla Glue” into a logo that is unique and different from that of the Gorilla Glue Company, this factor may tend to favor a finding of no likelihood of confusion.
Evidence of Actual Confusion
Evidence that use of the two marks has already resulted in consumer confusion is persuasive proof that future confusion is likely. Where a plaintiff is able to introduce evidence of actual confusion, it’s likely the court will find infringement. Since we have no facts which show actual confusion, this factor is neutral in our analysis.
Convergent marketing channels increase the likelihood of confusion. This is because likelihood of confusion is not determined in a vacuum; it is determined by the context that a customer perceives the marks in the marketplace.
The Gorilla Glue Company uses all media platforms to market its product. It runs advertisements on television, radio and in print, and also uses the Internet. While it’s not clear the extent to which GG Strains markets its products, it does have a website.
Evidence showing that the defendant intended to incorporate elements of the plaintiff’s mark favors a finding of likelihood of confusion. Courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived. Here it is alleged that GG Strains adopted the use of “Gorilla Glue” due to the sticky quality of its cannabis.
Likelihood of Expansion
Inasmuch as a trademark owner is afforded greater protection against competing goods, a “strong possibility” that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing. When goods are closely related, any expansion is likely to result in direct competition. Here, it is not likely that either party will begin producing competing products.
If this case had moved forward, based only on the information in the complaint, I suspect that the Gorilla Glue Company would have had difficulty with its trademark infringement claim. Given the differences in the marks themselves, and primarily based on the unrelated nature of the goods, it is reasonable to conclude that a trier of fact would find consumer confusion not likely.
However, the Gorilla Glue Company would likely have had success on its dilution claim. Under Section 43(c) of the Lanham Act, dilution can exist where there is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” In determining whether a mark is likely to cause dilution, the court will consider: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; and (vi) Any actual association between the mark or trade name and the famous mark.
There is a lesson to be learned for the burgeoning legal cannabis industry. The strain brands that incorporate the marks of others (like Girl Scout Cookie), once thought to be “clever” or “humorous”, are not likely be viewed similarly by the mark owners. The likelihood that disputes will evolve into lawsuits will only escalate as more states legalize recreational use of cannabis.