This submit written by Harris Bricken lawyer Fred Rocafort was initially Up to date on July 20, 2023 on The Trademark Lawyer web site and is republished right here with their permission.
Candymaker Wrigley and Terphogz, LLC have reached a settlement in a high-profile lawsuit over Terphogz’s use of the mark ZKITTLEZ on hashish merchandise and different merchandise comparable to clothes (WM. Wrigley Jr. Co. v. Terphogz, LLC, No. 21-CV-02357 (N.D. Ailing. July 3, 2023)). Wrigley argued that Terphogz infringed on its SKITTLES logos, together with its tagline TASTE THE RAINBOW and its S brand. As a part of the settlement settlement, Terphogz has agreed to instantly stop all use of the ZKITTLEZ marks, together with TAZTETEHZTRAINBRO, ZKITTLEZ HEMP, and ZKITTLEZ HEMP & Cloud Design.
Wrigley’s go well with, filed in 2021, alleged trademark infringement, false designation of origin, unfair competitors, trademark dilution below each federal and Illinois regulation, and violation of the Federal Anti-Cybersquatting Shopper Safety Act in addition to the Illinois Uniform Misleading Commerce Practices Act. Additionally named within the lawsuit had been 5 companies allegedly reselling merchandise bearing the ZKITTLEZ marks. Pursuant to the events’ settlement, the courtroom enjoined Terphogz from utilizing the ZKITTLEZ marks.
This case is only one of many involving using well-known sweet or snack manufacturers on hashish merchandise. The Federal Commerce Fee (FTC) and the US Meals and Drug Administration (FDA) lately issued joint cease-and-desist letters to 6 corporations “advertising edible merchandise containing Delta-8 tetrahydrocannabinol (THC) in packaging that’s nearly similar to many snacks and sweet youngsters eat, together with Doritos tortilla chips, Cheetos cheese-flavored snacks, and Nerds Sweet” (Press Release, FTC, FTC Sends Cease and Desist Letters with FDA to Companies Selling Edible Products Containing Delta-8 THC in Packaging Nearly Identical to Food Children Eat, July 5, 2023). In 2022, Nerds-maker Ferrara sued Akimov LLC over its use of the NERDS and TROLLI logos on cannabis-related items (Ferrara Candy Co. v. Akimov LLC, No. 22-CV-80768-RAR (S.D. Fla. Oct. 27, 2022)). As within the Wrigley case, the courtroom enjoined the defendant from utilizing Ferrara’s logos.
Regardless of related outcomes, there are vital variations between the Wrigley and Ferrara information. In Ferrara, a number of the defendant’s merchandise featured marks similar to these registered by Ferrara. Akimov’s merchandise included “THC-0 Apple Rings” that prominently displayed the TROLLI mark and a “Medicated Nerds Rope”. In distinction, Terphogz didn’t make the most of any SKITTLES marks on their merchandise. Moreover, the infringing merchandise in Ferrara had been “THC-infused sweet merchandise”; Terphogz didn’t promote any cannabis-infused sweet (or certainly any sweet) bearing the ZKITTLEZ marks.
Akimov’s use of NERDS and TROLLI marks presents grave dangers each to Ferrara and shoppers. For Ferrara, gross sales of the infringing merchandise may end in misplaced revenues and reputational points. In the meantime, there’s a clear potential for confusion on the a part of shoppers, significantly contemplating the real Nerds and Trolli merchandise’ enchantment to youngsters. As Ferrara famous in its grievance that its sweet merchandise are marketed “as a enjoyable and satisfying deal with for kids of all ages,” therefore it “would by no means condone or authorize using the Ferrara Logos and Ferrara Commerce Gown in reference to merchandise that might be dangerous to youngsters.”
Wrigley then again presents a extra nuanced scenario. Whereas the allusion to the Skittles model is evident, utilizing a punny mark like ZKITTLEZ isn’t the identical as utilizing an similar mark with out authorization. It may be fairly argued that there’s not chance of confusion between SKITTLES and ZKITTLEZ. In reality, the US Patent and Trademark Workplace (USPTO) allowed Terphogz’s software to register the mark ZKITTLEZ HEMP & Cloud Design (Software Serial No. 88703451) in connection to clothes, regardless of Wrigley’s earlier registration of the SKITTLES mark for clothes (Wrigley has since filed an opposition to the registration of Terphogz’s mark with the Trademark Trial and Attraction Board (TTAB)).
Variations between the 2 instances apart, a transparent message emerges for hashish companies contemplating using marks impressed by established manufacturers: Don’t! Whereas that is sound recommendation for any enterprise, the hashish business should count on heightened scrutiny of their actions. Manufacturers may not thoughts names that riff on their marks if used on run-of-the-mill merchandise – however they may object if hashish is concerned.