Wrigley, the makers of Skittles candy, has settled a lawsuit accusing a cannabis company of trademark infringement for marketing cannabis-infused edibles under the name “Zkittlez.”
In a proposed permanent injunction filed in a Chicago federal court, Terphogz LLC agreed to not use Skittles, Zkittlez, or other similar terms for cannabis products and sales and stop using slogans such as “Taste the Z Train” and “Taste the Strain Bro,” which Wrigley argued was too similar to its longtime slogan “Taste the Rainbow.” Terphogz also agreed to give the zkittlez.com domain name, although it can continue to use the letter “Z” as long as it doesn’t cause confusion.
Wrigley, a Chicago-based unit of privately-held Mars Wrigley, accused Terphogz of undermining nearly 50 years of goodwill with its “freewheeling use” of Skittles to sell cannabis products, some of which also carried a rainbow theme. Terphogz claimed it did not sell cannabis but licensed its intellectual property rights to other companies that sold legal cannabis. A judge rejected Terphogz’s bid for dismissal of the case in November 2021.
Mars Wrigley previously won a lawsuit that involved the use of the Skittles logo on illegal cannabis products, specifically mentioning products called “Medicated Skittles,” “Starburst Gummies,” and “Life Savers Medicated Gummies,” that were being illegally sold online throughout the United States and Canada. Mars initially filed the lawsuit in May 2021 claiming that the illegal products infringed upon registered trademarks and, according to a complaint, “pose a great danger to the public as anyone, children and adults alike, could easily mistake the infringing cannabis-infused products for Wrigley’s famous and beloved candies and inadvertently ingest.” A federal judge ordered the online retailers destroy all infringing products and packaging and pay various fines for infringing on the trademarks.
“I also find that advertising and offering for sale of a potentially dangerous product using appropriated trademarks that are evidently and obviously attractive to children represents a marked departure from ordinary standards of decent behavior that deserves to be denounced and deterred,” said Judge Patrick Gleeson. “I have placed significant weight on the issue of harm not only to the Plaintiff but also to members of the public who might accidentally consume the Defendants’ Infringing Product believing it to be a genuine SKITTLES product. The fact that SKITTLES are a confectionary product that are attractive to children reinforces the need to denounce the Defendants’ conduct.”
Candy brands are fighting back against various cannabis-infused knockoff products that use the more recognizable branding to help market and sell their products. In addition to the violation of trademark laws, candy brands argue children are also out in danger as they may confuse the cannabis-infused edibles with candy products they are more familiar with.
Ferrara Candy Co., makers of Nerds and Trolli candies, sued Boca Raton-based Top Five Wholesale for copying its branding on for cannabis-infused edibles. Ferrara’s lawsuit claimed Top Five sold counterfeit THC-infused versions of its Nerds Ropes and Trolli gummy candies that posed a health hazard due to containing “more than 60 adult servings” of THC, creating “a health hazard to the consuming public, especially children.”
The Hershey Co. previously filed a federal trademark infringement lawsuit against TinctureBelle LLC and TinctureBelle Marijuanka LLC, alleging TinctureBelle’s Ganja Joy, Hasheath, Hashees and Dabby Patty too closely resembled Hershey’s Almond Joy, Heath, Reese’s peanut butter cups and York peppermint patty candies, respectively. The lawsuit was settled and TinctureBelle was ordered to halt sales and destroy any remaining inventory and packaging. As part of the settlement, TinctureBelle could not make any disparaging statements about Hershey and was required to take down a website that was aiming funds for the lawsuit in support of TinctureBelle.
