Wrigley, the parent company of Skittles, the popular fruit-flavoured candy brand, has reached a settlement in a lawsuit against cannabis brand Terphogz. The lawsuit accused Terphogz of infringing on Wrigley’s trademarks by marketing products under the name “Zkittlez”.
As a result of this lawsuit, Terphogz has agreed to refrain from using terms such as Skittles, Zkittlez, or any similar variations for cannabis-related sales. They can no longer utilize their signature slogans such as “Taste the Z Train” and “Taste the Strain Bro,” which the lawsuit deemed too similar to Skittles’ renowned slogan, “Taste the Rainbow.” As part of the settlement, Terphogz will relinquish the domain name zkittlez.com. However, they may use the letter “Z” as long as it “does not cause confusion among consumers”.
This is the latest in a long line of trademark infringement legal cases that mainstream major brands have levied against companies operating in the cannabis industry. This article will explain the implications of this case for marketers as well as explore similar ongoing and settled legal cases.
Photo credit to leafmagazines.com
Who is Terphogz
Terphogz is a renowned cannabis breeding group from Mendocino County, California, primarily known for breeding the “Zkittlez” cannabis strain. Zkittlez or “Z” offers a unique terpene profile that quickly led to it becoming one of the most highly sought after genetics in the world. Terphogz offers a variety of strains that are mainly crosses of their Z genetics including Zmoothie, Z3, Hindu Zkittlez, Zlushi and Blooberry Z.
Terphogz is one of the most well-known and respected cannabis brands on the West Coast of the United States. The brand boasts hundreds of thousands of social media followers across several platforms.
Photo credit to leafmagazines.com
Cannabis and Mainstream Brand Trademarks
Terphogz is not the first cannabis brand to have legal action taken against them for infringing on mainstream brand trademarks, nor will it be the last. In fact, Terphogz isn’t even the first cannabis brand to have been successfully taken to court by Mars Inc’s Wrigley for trademark infringement. In August of last year, they served a number of trademark infringement notices to several cannabis companies for infringing on their Skittles, Starburst and Life Savers brand elements.
One judgment was ruled against a California-based brand named OC420 that was advertising products including “Medicated Skittles,” “Medicated Cannaburst Gummies,” and “Munchies Edible Deal.” The names and packaging mimicked Skittles and Starbursts, which was found to be an infringement. Mars Inc’s Wrigley is not playing games with the cannabis industry. This likely won’t be the last lawsuit that we will hear about in the candy and cannabis world.
In another recent high-profile legal case, the Gorilla Glue Company, an Ohio-based adhesive manufacturer, successfully sued GG Strains, a Nevada-based cannabis brand, for using the name “Gorilla Glue” for their cannabis strains. Under the settlement, GG must re-brand all of its products and packaging and turn over its website URLs to Gorilla Glue Company, the adhesive manufacturer.
Photo credits to Gleam Law
In June of 2021, an illegal cannabis dispensary in Vancouver, Canada named “Budway” was forced to pay $40,000 after being sued by sandwich chain Subway. In March 2019, hot sauce maker Tapatio Food filed a complaint in federal district court for trademark infringement against the cannabis-infused hot sauce brand called “Trapatio”.
In 2014, the Hershey Company threatened to sue Colorado-based TinctureBelle LLC for producing “Ganja Joy, Hashees, and Reefers and Hasheath”, cannabis-infused products that mimicked Hershey’s candy design and name trademarks. In February of 2019, delivery service UPS filed a complaint against three online cannabis retailers – “United Pot Smokers”, “UPS420”, and “THCPlant” – for infringing on their brand logos, names and other trademarks.
Photo credits to jdsupra.com
The Implications of Cannabis Industry Trademark Infringements
For many years, the cannabis industry was the Wild Wild West (and in some areas, still is). Most brands have largely operated in illegal or quasi-legal jurisdictions with little to no regulation or enforcement. Instead of taking the time and utilizing the immense resources it takes to build a quality brand from the ground up, many legacy operators simply took existing brands, iconography, slogans, etc and adjusted them to be more cannabis-related. In the beginning, utilizing this brand equity was acceptable and helped cannabis companies achieve recognition among consumers in an industry that essentially had no brand recognition or loyalty. As time passes, and the industry matures and evolves, ripping off existing brands and trademarks will no longer fly. Mainstream brands, large Consumer Packaged Goods companies and their well-funded legal teams are paying attention and are actively serving legal notices in order to protect their assets.
The future of the cannabis industry relies upon creativity, uniqueness and ingenuity. Brands must be thoughtfully built as they are in every other category. Taking an existing asset and twisting it to be 420-friendly simply will not cut it anymore. Cannabis industry marketers must conduct appropriate consumer research and formulate brands and products that fulfill their target’s needs and desires. It takes more work and time to create a distinctive brand that resonates with consumers, but it is worth it. Not only are consumers demanding that cannabis marketers bring new, creative ideas to the table – but so are the courts, the lawyers and the legal teams.
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