This story was republished with permission from Crain’s Chicago and was written by Brandon Dupré.
Mars Wrigley has filed a motion alleging a California cannabis company it previously settled with over trademark infringement is in violation of the agreement.
Wrigley, the maker of the popular candy Skittles, and Terphogz came to an agreement in 2023 for the cannabis seller to end the use of Skittles, Zkittlez or similar terms it used for cannabis-related sales.
Now the Chicago-based candy giant is saying Terphogz has not complied with the permanent injunction the two parties agreed on in Chicago federal court.
In the motion, filed on Dec. 6, Wrigley alleges “Terphogz was and is engaged in widespread violations” of the agreement, which includes continuing to sell a product called Zkittlez and failing to delete products with the same or similar name on social media platforms.
“Without question, Terphogz has failed to make a diligent and reasonable effort to comply with the PI,” the plaintiffs wrote. “Wrigley repeatedly contacted Terphogz’s counsel over the course of months, identifying more than a hundred violations, most of which have not been cured, and many new violations have occurred since putting Terphogz on notice.”
Wrigley is seeking a court order to bring Terphogz in compliance with the agreement and for the cannabis company to surrender any profits it has made off the product to Wrigley and additionally pay “$1,000 per day until they come into full compliance,” according to the filing.
In a separate filing responding to the Mars allegations, Terphogz contends that it is not in violation of the agreement, writing “Wrigley’s ‘gotcha’ motion” should be rejected by the court.
“Put simply, Wrigley’s motion is an attempt to put this Court in the role of micro-policing the internet for images that accumulated over more than a decade while Wrigley sat on its hands,” Terphogz’s team writes. “Since settling with Wrigley, Terphogz has acted diligently and reasonably in complying with the terms of the parties’ agreement and the Injunction, and in removing all allegedly infringing images and names from websites and social media accounts it controls.”
In an emailed statement to Crain’s, Timothy Alger, lead counsel for Terphogz, said the company developed the popular cannabis strain known as “zkittlez” 14 years ago while “Wrigley waited more than a decade to file a lawsuit.”
“We reached a settlement in 2023 that recognizes Wrigley’s trademark rights while also protecting Terphogz’s right to accurately brand its seeds as “The Original Z,” the statement continued. “Terphogz has been endeavoring in good faith to comply with the settlement and will continue these efforts.”
Mars Wrigley did not immediately respond to a request for comment.
The two sides came to the permanent injunction agreement in order to resolve a lawsuit the candy maker filed in 2021, which accused the cannabis company of trademark infringement and undermining the goodwill created by the Skittles brand with the “freewheeling use” of Skittles marks to sell cannabis, drug paraphernalia and other merchandise, according to the suit.
Gov. JB Pritzker recently mentioned the use of the term “Zkittlez” in a news conference addressing reporters shortly after losing a fight over a hemp regulation bill, a surprise legislative defeat for the governor.
“Some of these products, if you’ve ever seen them, it’ll say Skittles on the front with a ‘z,’ and they’re not Skittles, like the ones that you know, but rather this intoxicating hemp,” he told reporters. “So what we’re trying to do is keep people protected from products like that. This is consumer safety and health.”
It’s not yet clear when the next hearing on the alleged violation of the agreement will take place.
The Chicago-based candy giant says Terphogz has not complied with a previous permanent injunction. Read More
