If this feels like déjà vu (all over again), it’s probably because earlier this month, I wrote about The Gorilla Glue Company’s lawsuit for trademark infringement against GG Stains LLC out of Nevada. In that case, Gorilla Glue, the manufacturer of a variety of adhesives sold under the “Gorilla” brand and distinctive logo, alleged trademark infringement, dilution, unfair competition, and cybersquatting against GG Strains, which marketed one of its popular strains under the name “Gorilla Glue.” The allegation was that by marketing its cannabis strains under “confusingly similar” names, GG Strains was trading off the goodwill and reputation established by Gorilla Glue over the course of 23 years. The parties ultimately settled the dispute a few weeks ago, and GG Strains will have to cease using the Gorilla Glue marks.
Now, we have another allegation of trademark infringement by Tapatio Foods LLC, the famous American hot sauce brand. Tapatio has filed two separate complaints against TCG Industries, LLC (d/b/a Payaso Grow), alleging federal trademark infringement, federal and state unfair competition, and dilution. Sound familiar? TCG has a cannabis-infused hot sauce called “Trapatio” that bears an image of a “man in [a] sombrero, yellow shirt, and red tie” that is (according to Tapatio) “confusingly similar” to Tapatio’s trademarked images.
For ease of reference, here are several past blog posts relating to trademark infringement, and how to choose a brand that won’t get you sued:
- Cannabis Branding: Choosing a Mark that Won’t Get You Sued
- Another Cannabis Trademark Application Bites the Dust
- Organic Marijuana: Not Exactly
- Cannabis Trademarks: “Deadwood” Policies Could Implicate Cannabis Registrations
- Cannabis Trademarks and Legal Use in Commerce
And here are the factors a court will consider in assessing whether one mark is likely to be confused with another, proving trademark infringement (AMF Inc. v. Sleekcraft Boats):
- Strength of the mark;
- Proximity of the goods;
- Similarity of the marks;
- Evidence of actual confusion;
- Marketing channels used;
- Type of goods and degree of care likely to be exercised by the purchaser;
- Defendant’s intent in selecting the mark; and
- Likelihood of expansion of the product lines.
The two most basic factors I recommend our cannabis clients evaluate before they select a brand are 1) is your mark similar to or the same as an existing mark, and 2) Are you intentionally “riffing” off an existing brand? Remember that parody is not a defense to trademark infringement that will typically fly in a commercial setting. When you choose a mark as a “parody” of an existing brand, chances are you’re actually infringing a registered trademark, and possibly diluting a famous mark. And the fact that you knew of the senior trademark would absolutely play against you in litigation, as your infringement would be deemed willful.
Of course, these two factors are only the beginning of the analysis. There are instances where similar, or even the same brand names can coexist if the goods those brands are used on are completely different and marketed through separate channels to disparate groups of consumers. The analysis for likelihood of confusion can be quite complex.
Before adopting a new brand name, we recommend consulting with an experienced trademark attorney and we also recommend having them perform a trademark clearance search to ensure your brand won’t be infringing any existing registrations. This recent flood of cannabis trademark litigation is only an indication of what’s to come as the cannabis industry continues to grow.
