Following the settlement of a lawsuit with Mars Wrigley over alleged trademark infringement violations by Terphogz over cannabis products under the name Zkittlez, Terphogz has released the following statement:
“After using the ‘Zkittlez’ mark for over 10 years with no complaints from the candy maker, we welcomed the opportunity to resolve any trademark concerns with Wrigley. We want to let consumers know they can still enjoy our unique and highly sought-after cultivar under the name ‘The Original Z.’”
Wrigley sued Terphogz in a Chicago federal court in 2021 for trademark infringement and demanded that the cannabis company never use the letter “Z” and pay $250,000 in damages, with Terphogz rejecting the demands as unsupported by federal trademark law.
A proposed permanent injunction filed in a Chicago federal court when the case was originally settled would prohibit Terphogz from using “Skittles,” “Zkittlez,” or other similar terms for cannabis products and sales. The company would also have to stop using slogans such as “Taste the Z Train” and “Taste the Strain Bro,” which Wrigley argued was too similar to the longtime Skittles slogan. Terphogz also agreed to give up the zkittlez.com domain name, although it can continue to use the letter “Z” as long as it doesn’t cause confusion. Per the settlement agreement, Terphogz will stop using “Zkittlez” and the “circle Z” branding but will now offer products as The Original Z and continue using its Z branding.
“It’s important to distinguish between my clients and unregulated pirates that Wrigley sued separately who sell adulterated candy or who use packaging identical to Wrigley’s including their registered trademarks,” said Terphogz’s attorney Timothy Alger.
In addition to the lawsuit filed against Terphogz, Wrigley also brought lawsuits against five other companies for violation of intellectual property rights. One lawsuit, filed against Orange County, Calif. cannabis edibles company OC420 and its owner, Steven Mata, resulted in Mata having to recall any products and advertising that had already been produced and give it to Wrigley in addition to all profits made form the products that were alleged to have violated trademark laws. Mata was also order to pay $2 million in damages. Mars Wrigley said the unauthorized use of trademarks is confusing for consumers and damages the reputation the brand has built up over the years.
“At Mars Wrigley we take great pride in making fun treats that parents can trust giving to their children and children can enjoy safely. We are deeply disturbed to see our trademarked brands being used illegally to sell THC-infused products, and even more so to hear of children ingesting these products and becoming ill,” a Mars company spokesperson said in a previous email.
Wrigley didn’t outright accuse Terphogz of harming children, but Terphogz was the only company mentioned by name in Wrigley’s initial statement. Candy companies have had to deal with cannabis brands using branding and advertising that is more familiar to consumers, but the potential danger posed toward children who wouldn’t be able to tell the difference between cannabis-infused products and regular candy is causing the candy companies to go after the cannabis counterfeits. Data from the Washington Poison Center showed there were 122 cases of THC exposure in children under five years old in the first nine months of 2020, compared to 85 in the same time frame in 2019.
“The situation has become more and more egregious,” said Christopher Gindlesperger, a spokesman for the National Confectioners Association, a trade organization in D.C. with 350 members, including Mars Inc., Hershey’s, Ferrara and Mondelez. “The cannabis companies cannot and should not be allowed to tarnish existing brands at will. It creates consumer confusion.”
