Candy giant WM Wrigley Jr. Company (“Wrigley”) filed lawsuits in Illinois and California federal courts against Terphogz, LLC on Monday, alleging the cannabis company infringed on Wrigley’s Skittles candy brand trademark. Terphogz, dba Zkittlez, is a renowned cannabis breeding group known for the famous Zkittlez strain of cannabis.
The complaint filed in Chicago alleges that “[r]ather than create its own brand architecture, Terphogz simply helped itself to Wrigley’s famous Skittles Marks, picking ‘Zkittlez’ as the name of its drugs.” It continues, alleging that Terphogz copied the brand’s S logo and “taste the rainbow” slogan, allowing Terphogz to “reap enormous profits” while causing Wrigley to “los[e] control over the reputation of its Skittles Marks.” Wrigley further asserts that “Terphogz’s use of the Zkittlez marks is likely to cause confusion among consumers, end-users, and others.”
SKITTLES v ZKITTLEZ
Wrigley brought seven claims against Terphogz, including one count each of trademark dilution and cybersquatting, deceptive trade practices, and three counts of trademark infringement. If successful, Terphogz could be permanently forbidden from using the Zkittlez marks identified above, ordered to transfer the domain name zkittlez.com to Wrigley, and abandon its U.S. Trademark applications for the mark “Zkittlez Hemp,” in addition to paying Wrigley’s reasonable attorney’s fees and costs.
In 2018 Wrigley brought a similar lawsuit against Florida-based Get Wrecked Juices LLC, a company that makes e-cigarette flavors that Wrigley contended infringed on its trademarks for the popular Starburst and Skittles candies. The defendant allegedly sold flavors called Pink Starburst and Skeetlez.
The Terphogz lawsuit marks the latest in trademark infringement claims against cannabis companies for using branding resembling candy companies. In May 2020, Canadian snack giant Mondelez, the maker of Sour Patch Kids candies, settled a California lawsuit against three vape shops for selling cannabis-infused gummies under the name “Stoney Patch.” A similar case was filed in November 2020 against cannabis delivery service Tops Cannabis for marketing “Medicated Nerds Ropes.” Note that the defendants in these actions were not licensed cannabis operators, which are forbidden by state law from packaging cannabis products in a way that resembled products typically marketed to children.
In another recent case, Ohio-based adhesive manufacturer, the Gorilla Glue Company, sued Nevada-based GG Strains LLC for its use of the trademarked name “Gorilla Glue” for its cannabis strains. Rather than engage in costly litigation, the parties reached a settlement under which GG Strains was forced to discontinue its use of the Gorilla Glue names, turn over its website URLs and rebrand its products. Even without protracted litigation, the founder of GG Strains estimated that the dispute and rebranding have cost the company nearly $250,000.
This past August, Terphogz announced its intent to create a joint venture and strategic alliance with Halo Labs, Inc. with plans to establish and jointly operate a licensed commercial cannabis cultivation facility at Ukiah Ventures Inc. The companies’ Letter of Intent proposed an 18,000 square foot indoor grow estimated for completion by the middle of this year. The joint venture would also manufacture cannabis products using Zkittlez’s existing proprietary cannabis genetics under Halo’s various California licenses. There has been no word from either company regarding how Wrigley’s recent lawsuit filing might impact plans.
This content is intended for general information only. It should not be construed as legal advice, nor does it create an attorney-client relationship between the author and any recipient. Readers are advised to consult with counsel before relying on this information.
Nicole is a California cannabis lawyer and specializes in data privacy, cybersecurity, and labor and employment. Nicole works with licensed cannabis and hemp operators throughout the country to comply with their obligations under the law and to develop risk management best practices.
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