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When the famous playwright William Shakespeare asked, ‘what’s in a name?’, it is unlikely he anticipated that in the modern cannabis industry the answer could potentially be a lawsuit.
But, in the twenty-first century this is beginning to become a common occurrence.
With cannabis brands ‘borrowing’ existing trademarks, names and slogans to advertise the effects, tastes or texture of their products – the fear of being associated with cannabis has caused conventional industries to pursue legal action.
The latest in this series of strain name sagas is the lawsuit between Mars Wrigley, the owner and producer of the confectionary brand Skittles, and cannabis company Terphogz LLC, who sell a cultivar and line of cannabis-based merchandise under the name Zkittlez.
Strain name changes
It appears that after a two-year trademark battle that began when Wrigley filed their original lawsuit in May 2021, Terphogz LLC has settled and has agreed to alter its marketing and branding strategy.
Earlier this month, in July 2023, Terphogz announced that their famous cannabis strain Zkittlez is now being sold under the name The Original Z, and they will no longer be using their Circle Z branding. Despite Wrigley’s original claim for $250,000, no financial damages were awarded to the confectioner.
The Lawsuit: Skittles v Zkittlez
Arguing that the cannabis brand damaged “nearly 50 years and hundreds of millions of dollars [spent on] cultivating the goodwill symbolised by the Skittles mark”, Mars Wrigley confectioner legally requested that Terphogz cease using any names, slogans, advertisements, and website domains that closely resemble or pay homage to Skittles the candy brand back in 2021.
Their 2021 complaint reads:
“Terphogz is in the business of selling cannabis, drug paraphernalia, and promotional merchandise. 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.”
Initially, Wrigley’s were seeking damages amounting to the tune of $250,000 and demanded Terphogz ‘never use the letter Z by itself or combined with any letters or numbers’.
However, this was rejected because the claims were unsupported through federal law and because they violated The First Amendment rights of Terphogz, which protects freedom of speech, assembly, and the press.
Two years on, in July 2023, the two companies were back in the courtroom, this time to discuss a more tactile proposed permanent injunction, that is unaccompanied by monetary damages.
According to Reuters, Terphogz LLC agreed to the injunction filed on Monday, July 3 in the Chicago Federal Court. This injunction forbids the cannabis company from using similar product names and slogans, and orders them to give up the domain name zkittlez.com.
Regarding this, in an announcement published on Friday, July 7, Terphogz released the following statement:
“After using the ‘Zkittlez’ mark for over 10 years with no complaints from the candy maker, we welcomed the opportunity to resolve any trademark concerns with Wrigley. We want to let customers know that they can still enjoy our unique and highly sought-after cultivar under the name ‘The Original Z’.
Although it seems arrangements have already been made and Terphogz appear to be settling, this will need to be approved by the court in the lawsuit’s final hearing, which is scheduled for Wednesday, July 12.
Trademark Trials and Tribulations
This candy coated court case is the latest in a series of lawsuits against cannabis cultivators, producers, and manufacturers for similar trademarking or branding issues.
Previously the Girls Scout Cookies cannabis strain came under fire and retailers stocking this cultivar, or products infused with it, found themselves on the receiving end of cease and desist orders.
Other companies like Wrigley’s have taken this a step further, and filed federal lawsuits. For example, in 2017 the adhesive brand Gorilla Glue Corp spent six months fighting GG Strains, the cultivators of the cannabis strain Gorilla Glue, in court arguing intellectual property infringements had been made.
At the time, and for almost two decades previously, GG Strains had been selling a range of strains under the family name Gorilla Glue, paying homage to the sticky texture of their buds.
Although GG Strains retained the right to use the word ‘gorilla’ when referencing the strain’s history, ultimately this lawsuit meant that they had to change their strain names, and so, they are now known as GG #1, GG#4 and GG#5.
Much like GG Strains, Terphogz agreed to rename their strain earlier this month, and Zkittlez has been rebranded to ‘The Original Z’. Terphogz have agreed to stop using the slogan ‘taste the strain bro’ and ‘taste the Z train’ and in return retain the right to use any letter of the alphabet, despite Wrigley’s original demands, so long as their branding does not confuse cannabis with confectionary.