When Big Brands Meet Bongs: Trademark Enforcement in the Cannabis Industry

By Jonathan M. Purow

As the cannabis industry grows state by state, so do the trademark concerns relating to it. Prior to the legalization of medicinal and recreational marijuana, strain names on the black market frequently “paid homage” to popular trademarks, such as the adhesive Gorilla Glue and the internationally known machine gun the AK-47. Over the past several years, we have started to see a handful of trademark owners pursuing actions for trademark infringement and related claims regarding strain names or ancillary cannabis products such as edibles. These lawsuits include:

  • Tapatio Foods LLC filed a complaint in federal district court in California for trademark infringement and related claims against the makers of a cannabis-infused hot sauce called Trapatio. Prior to the lawsuit, Trapatio’s makers had sought a trademark registration for TRAPATIO with the United States Patent and Trademark Office for medicinal herbs and related products. The parties have apparently reached a settlement and Trapatio no longer offers its product for sale.
  • The Gorilla Glue Company, makers of the famous glue, sued GG Strains LLC for GG Strains’ use of the trademark GORILLA GLUE for a cannabis strain. After a few months, the Gorilla Glue Company and GG Strains reached a settlement, in which GG Strains agreed to cease use of GORILLA GLUE and enforce the terms of the settlement on affiliated companies, dispensaries, cultivators and partners. News of the lawsuit and subsequent settlement have led to other businesses discontinuing the sales of GORILLA GLUE strain cannabis, though searches of databases online show that certain dispensaries continue to use GORILLA GLUE to describe a cannabis strain.
  • The world-famous candy purveyor Hershey Company has been particularly aggressive with its trademark enforcement efforts in the cannabis industry. First, in 2014 Hershey threatened to sue TinctureBelle LLC (itself a clear pun on the name Tinker Bell) for selling products such as Ganja Joy, Hashees and Reefers and Hasheath that bore similarity to Hershey candy designs. TinctureBelle settled the lawsuit and ceased all allegedly infringing acts.

Last year, Hershey’s pursued separate trademark infringement claims against edible producer Good Girl Cannabis Co. and the dispensary Harborside, contending that the parties had infringed Hershey’s JOLLY RANCHERS trademark by selling “Jolly Meds” edibles. Good Girl Cannabis Co. settled quickly, but Harborside fought back aggressively after Hershey’s counsel demanded that Harborsidepay $20,000 in “liquidated damages” and keep the agreement confidential. Instead, Harborside filed a lawsuit for declaratory judgment. When Harborside showed that it was willing to vigorously fight against Hershey’s claims, Hershey’s relaxed its position and ultimately entered into a settlement agreement with Harborside in which Harborside admitted no liability and the case was dismissed. This is not to say that Harborside did not take steps to address Hershey’s claims of infringement, as Harborside notified Jolly Meds, the manufacturer of the offending Jolly Meds products, of Hershey’s claims. Jolly Meds has since changed its corporate name and the name of its products to J:Meds, and has even filed a trademark application for J:MEDS.

The common thread with these cases is that ultimately the owners or purveyors of the cannabis products capitulated and changed their strain or product names. While it is tempting to ride on the goodwill of a well-known trademark or something similar thereto,ultimately it is not worth the risk since the trademark owner has the right to come calling.