Debra BorchardtJuly 5, 2023
Cannabis companies have learned the hard way that cheeky takeoffs on familiar brands can only last for a limited time. It was no surprise that candy creator W.M. Wrigley Jr. sued cannabis company Terphogz for copying its iconic candy Skittles and its phrase “Taste the Rainbow.” All of the logos were trademarked by Wrigley.
Wrigley complained that Terphogz advertised, distributed and sold or granted a license for others to advertise, distribute, and sell goods using the marks ZKITTLEZ, TAZTETHEZTRAINBRO, ZKITTLEZ HEMP, and ZKITTLEZ HEMP & Cloud Design (these marks, slogans and logos are collectively referred to as the “ZKITTLEZ Marks”). Terphogz also registered the domain zkittlez.com and sold goods bearing the ZKITTLEZ Marks.
It seems the two companies have finally agreed on a settlement for the case which began in 2021.
Wrigley’s told a judge in Illinois that the agreement includes a permanent injunction prohibiting the company from ever using the “Skittles” or “Zkittlez” marks and giving up a similarly named website. Terphogz will sign over the domain website to Wrigley.
Terphogz had even gone so far as trying to file its own trademark applications for its logos, which Wrigley opposed. In the settlement agreement, Terphogz agreed to withdraw its trademark applications.
In addition to the agreement to stop production of the product. The company is also not allowed to refer back to the Zkittelez name in advertising. That means Terphogz can’t promote any new business saying things like “formerly known as Zkittlez,” “made by the creator of Zkittlez,” “if you liked Zkittlez you will love brand X,” in posts, reposts, videos, photographs, images, pictures, text or links on its website, any social media account or YouTube.
Digging a little deeper into the internet connections, Terphogz is not allowed to use TikTok or Instagram accounts saying “_TheOriginalZ_” and “terphogz_official,” or allow others to do so on its web site or social media accounts as keywords, AdWords or in any type of search
engine optimization or use the SKITTLES Marks, the ZKITTLEZ Marks.
Terphogz is allowed to use the letter Z alone. Terphogz can use “The Original Z” to identify in packaging, labeling, and product lists a cannabis strain or cultivar, provided that it complies with applicable government law, rules or regulations, and may use the social media handle “__TheOriginalZ__” on Instagram and other social media platforms.
The company has to get rid of all Zkittlez inventory and inform all its vendors of the settlement agreement.
Wrigley’s was founded in 1891 and is wholly owned by Mars, Incorporated and makes up Mars Wrigley Confectionery. It is the largest manufacturer and marketer of chewing gum in the world. The company currently sells its products in over 180 countries and districts, operates in over 50 countries, and has 21 production facilities in 14 countries.
