Candy Brands Filing Trademark Suits Due to Cannabis Copycats

Candy Brands Filing Trademark Suits Due to Cannabis Copycats

Mars Wrigley is the latest candy manufacturer to file suit against companies for selling cannabis-infused edibles in packaging that mimics its famous brands...

Mars Wrigley is the latest candy manufacturer to file suit against companies for selling cannabis-infused edibles in packaging that mimics its famous brands. In its suit, Mars Wrigley alleges that the defendants are infringing on Wrigley’s trademarks by selling THC-infused products that illegally resemble Skittles, Life Savers, and Starbursts. 

“The lawsuit is intended to stop the illegal and dangerous misuse of its world-famous trademarks in the marketing and sale of THC-infused edibles, which resemble Mars Wrigley’s genuine products such as Skittles and Starburst,” Mars Wrigley said in a statement. “Mars Wrigley does not manufacture or sell any products containing THC.”

The Rise of Cannabis Edibles

Edibles are one of the fastest-growing segments of the cannabis industry. In fact, edibles have outperformed the rest of the cannabis market by 29 percent in the last three months compared with the same period in 2020.

As cannabis edible sales have grown, candy corporations are taking notice. So, while cannabis companies may have been able to fly under the radar several years or so, they are now receiving cease and desist letters for misusing well-known candy company trademarks and copyrights. According to the New York Times, lawsuits have been brought by the Hershey Company (against TinctureBelle for products resembling Reese’s Peanut Butter Cups, Heath bars, Almond Joy bars and York peppermint patties), Mondelez International (against a company selling Stoney Patch Kids) and Ferrara Candy Company (against a store selling Medicated Nerds Rope). 

Mars Wrigley Trademark Lawsuits

In May, Mars Wrigley filed two lawsuits involving infringing edible products, including “Starburst Gummies” and “Cannaburst Gummies.” According to the suit against Packaging Papi, LLC, the defendants misappropriated Wrigley’s trademarks for use on packaging that is marketed and sold empty to third-party cannabis retailers. These cannabis retailers fill the packaging with edible products that are often genuine Skittles or Starburst candies infused with or otherwise containing THC. The edible products are then marketed and sold to consumers without Wrigley’s authorization.

“Defendants’ unauthorized and infringing use of Wrigley’s famous trademarks endangers the public and is likely to cause confusion and damage Wrigley’s valuable rights,” the complaint states. “Defendants’ unlawful actions are a danger to children and adults who may mistakenly ingest the edible cannabis products thinking them to be Wrigley’s genuine SKITTLES® or STARBURST® candies, when they are not, and unknowingly and unwillingly subjecting themselves to doses of THC, sometimes in very large and unsafe quantities.”

Mars Wrigley filed a similar suit against 2020Ediblez. It also alleges that the company mimics its packaging and infringes the trademarks of its Skittles, Starburst, and Life Savers brands.

Mars Wrigley filed a third lawsuit against Terphogz, a California cannabis company that markets the Zkittlez strain and brand of cannabis. Terphogz doesn’t sell edibles, but rather promotes the popular cannabis strain via t-shirts, jars, and other products.

The suit alleges that Terphogz’s ZKITTLEZ Marks are substantially identical in sight, sound, meaning, and commercial impression to Wrigley’s SKITTLES Marks. According to the complaint, “Terphogz 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.” Mars Wrigley further contends that Terphogz’s use of the ZKITTLEZ Marks is likely to cause confusion as to the source and sponsorship of Terphogz’s goods and to impair the distinctiveness of Wrigley’s SKITTLES Marks.

“Rather than create its own brand architecture, Terphogz simply helped itself to Wrigley’s famous SKITTLES Marks, picking ‘ZKITTLEZ’ as the name of its drugs, knocking off Wrigley’s federally registered TASTE THE RAINBOW slogan, and even copying Wrigley’s S logo” the lawsuit alleges. The suit includes claims for trademark infringement, false designation of origin, unfair competition, trademark dilution, and cybersquatting.

Mars Wrigley is seeking a permanent injunction on the sale of any products using Zkittlez marks and the destruction of any products or merchandise using the marks. Wrigley also requested to have the Zkittlez website surrendered to it and all social media accounts be disabled. The candy company also wants Terphogz to withdraw its trademark application for the ZKITTLEZ brand.

Marketing Considerations for Cannabis Companies

As the Mars Wrigley lawsuits highlight, companies must be mindful of intellectual property concerns when marketing cannabis products. As the industry gains legitimacy, it is coming under increased scrutiny, particularly from major brands who will not tolerate their trademarks being used to promote cannabis products.

Before marketing cannabis products, it is also imperative to understand the advertising restrictions for cannabis products, which are significant and vary from state to state. Most states prohibit engaging in advertising or marketing directed towards children. Many also restrict the type of packaging that may be used and prohibit the use of images that may be attractive to children.

As this area of law continues to develop, we encourage both brand owners and cannabis companies to stay informed about legal updates and work with experienced counsel when developing IP strategies.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact Ron Bienstock, Dan McKillop, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.

This article is a part of a series pertaining to cannabis legalization in New Jersey and the United States at large. Prior articles in this series are below:

• New York’s Off-Duty Conduct Law Now Includes Cannabis Use
• Appellate Division Relies on Hager to Uphold Reimbursement of Medical Cannabis
• US House Passes Cannabis Banking Reform Legislation

Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.