Back in April, we discussed Florida law enforcement’s concerns over THC edibles whose packaging infringed on the trademarks of famous candy brands. These fakes have the potential to confuse consumers, as well as help minors conceal their use of THC products. We revisited the topic earlier this month, when we argued that the USPTO’s refusal to register cannabis trademarks was contrary to the public interest.
One trademark owner is now fighting back against cannabis fakes. The Wm. Wrigley Jr. Company (“Wrigley”) is suing five companies selling counterfeits of its candies. In addition to Skittles, the infringing products include fake Life Savers and Starburst, which are also Wrigley brands.
Broadly speaking, the infringing products can be separated into two groups. Some of the products exactly copy one of Wrigley’s registered trademarks. For example, a lawsuit filed in a California federal court concerns products such as “Medicated Skittles,” “Life Savers Medicated Gummies” and “Starburst Gummies.” On these counterfeits, trademarks such as SKITTLES appear exactly as they do on genuine products. Only upon closer inspection does it became clear that the products are not legit. A bag of “Skittles,” for example, has cannabis leaves in the design.
In other cases, the infringement is not as clear-cut. For instance, a suit filed in an Illinois federal court concerns ZKITTLEZ and related marks (collectively known as the “ZKITTLES Marks”). According to Wrigley’s complaint, the “ZKITTLEZ Marks are substantially identical in sight, sound, meaning, and commercial impression to Wrigley’s SKITTLES Marks.” Wrigley also notes that the infringer “uses the same distinctive red color featured on packages of SKITTLES candy and the same colors of SKITTLES candy in connection with advertising, selling, and distributing its ZKITTLEZ goods.”
Ultimately, whether SKITTLES and ZKITTLEZ are “substantially identical” will be a question of fact for the Illinois court to determine. It is important to note, however, that there are significant differences between the two kinds of infringement.
Based on anecdotal experience, it seems that the most common reaction to these names is amusement. This suggests that there may not really be that much likelihood of confusion with actual candy like Skittles. In fact, the USPTO, which in our experience has a rather low threshold for finding similarity, did not find the two marks to be similar.
THC edibles that bear the SKITTLES mark clearly have no place in our marketplace (at least not until Wrigley decides to enter the cannabis space!). However, when it comes to products like Zkittlez, courts must be careful not to set precedents that have an excessive chilling effect on creative branding, unduly expanding the protection enjoyed by companies such as Wrigley.
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