The marijuana brand Zkittlez tastes a lawsuit brought by candy maker Skittles
We need a more creative name for the award-winning Zkittlez cannabis strain.
On Monday, one of the world’s largest confectionery companies, Wrigley, a small but influential company in Ukiah, California, sued Terphogz – promoter of the Zkittlez variety and brand.
Wrigley sued Terphogz for trademark infringement, misrepresentation of origin, unfair competition, trademark dilution, cybersquatting and related claims.
Mars Wrigley Confectionary – part of Mars, Incorporated – is the largest rubber manufacturer in the world with 2015 annual sales of $ 33 billion. The massive conglomerate claims Terphogz illegally marketed the Zkittlez brand to gain worldwide recognition. Wrigley petitioned an Illinois court to force Terphogz to stop using the Zkittlez trademark, destroy all Zkittlez merchandise, surrender their website, zkittlez.com, and pay attorney’s fees.
“Wrigley took this action to protect the public from the misleading and dangerous business practices of Terphogz and to protect the goodwill and reputation of Wrigley’s renowned SKITTLES brands,” the lawsuit said.
The Zkittlez brand, now using The Original Z, defended its actions, stating on Instagram, “We have never done candy / edible collaboration with a company.”
That defense might not work, experts say.
Counterculture habits are now a commercial liability
The trademark lawsuit is an example of some kind of growing pain for the $ 18.3 billion newly legal cannabis industry.
Counterculture creators have long committed trademark infringements. But in weed now legal, it’s a growing commercial liability. The operators have left numerous problematic marks over the decades: Skywalker OG, Gorilla Glue # 4 and Bruce Banner, for example.
Shabnam Malek, Cannabis Branding Expert and Brand and Branch Partner in Oakland, CA, said, “This is where the culture of an industry stands before the industry’s new frontier. I think it’s ongoing billing. “
Illegal seshes aroused corporate anger
The action was triggered by illegal edible manufacturers using counterfeit Skittles and Starburst packaging in Illinois, according to the Chicago-based Wrigley lawsuit. The company filed two lawsuits against sellers and distributors of unlicensed THC candy in the new recovery state.
Illinois has licensed marijuana stores that ban harmful, child-friendly products. But Illinois is also inheriting a huge illegal market with pop-up seshes where vendors sell untested, illegal THC products in counterfeit packaging that are imported from China.
Wrigley told Reuters, “We are deeply concerned that our brands are being used illegally to sell THC-infused products.”
Trademark infringement now on Wrigley’s radar
Wrigley’s third lawsuit is slightly different, but it makes a common complaint related to cannabis – they want to close down the Zkittlez brand sold by Terphogz LLC of California.
The rural Californian company never made an edible or a candy labeled Zkittlez, but instead grew and promoted the Zkittlez strain and associated branding such as t-shirts and glasses.
In 2016, the Zkittlez variety won the best flower in the world’s largest cannabis competition, the Emerald Cup, and brought a series of victories for what is now the dominant variety.
The Terphogz brand said in an Instagram post on Tuesday: “We have never made sweets. We have no affiliation or business in or with Illinois or Canada. “
Branding expert Malek said, “That doesn’t mean you can use an existing brand name, especially one associated with a children’s candy product, to identify your strains of marijuana.”
Cannabis branding 101
Malek, founding president of the International Cannabis Bar Association, cited two main reasons.
One – child safety restrictions on advertising and products. They are standard in regulated cannabis markets. For example, states prohibit certain shapes or colors of rubber and can enforce them at any time. A Zkittlez-like brand could violate state regulators.
“You can’t market or promote your products in a way that appeals to children,” she said. “It will put you in the crosshairs of regulators.”
Second – the long history of non-cannabis brand owners pushing cannabis companies through. Just because a strain like Gorilla Glue sticks or tastes like tropical candy doesn’t mean you can take advantage of a massive company’s intellectual property.
“I’m not a bit surprised, in this case, that the owners of the Skittles brand have been investigating a cannabis company that uses the Zkittlez name to identify a strain or, more generally, a cannabis product.”
Shabnam Malek, Partner, Brand and Branch LLC
“This is almost a definite version of problems. You are being sued by trademark owners. In this case, I’m not a bit surprised that the Skittles brand owners have followed a cannabis company that uses the Zkittlez name to identify a strain or, more generally, a cannabis product, ”said Malek.
Wrigley explains, “Instead of creating its own branding architecture, Terphogz simply got involved in Wrigley’s famous SKITTLES brands by choosing ‘ZKITTLEZ’ as the name of his medication, knocking off Wrigley’s nationally registered slogan TASTE THE RAINBOW and even copying Wrigley’s S logo. ”
Wrigley could come for lunch for Zkittlez’s money
It is true that the Wrigley suits tie two separate themes together – the unchecked illicit market in Illinois and the worldwide trademark of Zkittlez.
But Malek said the owners of Terphogz might still have problems.
“I think it’s a problem from a handful of different areas. They are now on the brand owner’s radar and they are dissatisfied with violations and, in many cases, with the marijuana component, ”she said.
The Wrigley suit calls Terphogz’s earnings “badly received”.
Wrigley explains, “Terphogz’s freewheeling use of Wrigley’s SKITTLES Marks has been hugely successful. With ZKITTLEZ goods getting a premium of 20% in the market, Terphogz has made huge profits. However, these illicit gains came at both the expense of the public, who believe Wrigley approves the ZKITTLEZ merchandise Terphogz sells, and of Wrigley, who has lost control of the reputation of its SKITTLES brands. “
In the past few months, the Zkittlez brand’s Instagram account has apparently shifted to Z-related branding. Her “Zruntz” prerolls took second place in the Emerald Cup this year. The brand now instagrams of “The Original Z.”
The Zkittlez variety will live on
Of course, Zkittlez’s genetics are here to stay. Breeders continue to infuse these syrupy-sweet, tropical, and potent indica genes with contemporary cannabis strains.
Doja Pak, Elite Indoor Breeder, writes, “Zkittlez and Runtz aren’t going anywhere, so don’t even stumble. Calling my dawgs because they made waves. “
But nowhere either: licensed weed brands in 2021 that are committing violations.
Let the creativity of the tribe name flow
Copyright expert Malek said technology companies are constantly having to create new, non-infringing brand names. Just hit some vowels together like Google, Uber, and Reddit did. Growers should be at least as creative.
Good weeds take on a life of their own, she said. Malek urged all growers, large and small, to be more creative and purposeful when naming varieties in a connected world.
connected
The best new cannabis strains to grow in 2021
For example, Zkittlez went from nothing to a world-leading strain in five years. Cell phones and social media are turning everyone’s home-grown weeds into a rating for a global audience. This audience also includes the U.S. Patent and Trademark Office and contested companies.
“What has become a nuisance today, and how they find their way into branding and product packaging, I think is the problem,” she said.
“Even when you are in your garage, what is your point of view? [That cannabis] doesn’t actually stay in your garage and that name will follow it outside of the garage. The name itself takes on a life of its own. “
How would you rename Zkittlez? Comment below.
David Downs
David Downs directs news and lifestyle coverage as chief of the California Bureau for Leafly.com. He has written for WIRED, Rolling Stone and Billboard and is the former cannabis editor of the San Francisco Chronicle and author of several cannabis books including ‘Marijuana Harvest’ by Ed Rosenthal and David Downs. He is the co-host of the Hash Podcast. TW: @davidrdowns | IG @daviddowns
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