Cannabis candy ‘Zkittlez” reaches settlement with Skittles candy over a trademark dispute. Where cannabis marketers frequently employ pot parodies to promote popular snacks and treats to their audiences, how are senior marks protected under the Lanham Act and how might consumer surveys be used?
Cannabis Trademark Context and Consumer Surveys
The cannabis industry’s rapid expansion, and its tendency to name and market products using marijuana-related puns and parodies, has led to a number of trademark infringement cases. “The Walking Dead” television series succeeded in a case against “The Toking Dead,” a graphic novel and comic book series, and one of the pieces of evidence used was a likelihood of confusion survey. When parody and puns are an industry standard, courts are frequently called on to determine whether there is any infringement.
All “Z” Difference Is Not Enough
In another instance of potential pot parody, Wm. Wrigley Jr. Co.–the maker of Skittles candy–filed a suit against a California-based cannabis producer, Terphogz LLC, the maker of a cannabis-infused candy called Zkittlez. Wrigley alleged trademark infringement, false designation of origin, unfair competition, and trademark dilution due to the name and marketing strategy for Zkittlez.
The lawsuit accused Terphogz not only of marketing its product–to adults–under the “Zkittlez” name, but also using the slogan “TazteTheZstrainBro,” which Wrigley alleged infringed on the Skittles “Taste the Rainbow” ad campaign. On June 28, after a year of negotiation, the parties reached a settlement barring Terphogz from using the term “Zkittles” and requiring it to turn over its zkittlez.com website to Wrigley.
Ways Consumer Surveys Help Brands Recover in Cannabis Relate IP Claims
If the above case had gotten further along in its litigation, either side could have introduced a consumer survey as evidence relating to likelihood of confusion, trademark dilution, or false advertising. In fact, properly conducted consumer surveys have been used successfully in many similar cases. MMR Strategy Group has experience conducting consumer surveys in actions arising from trademark and false advertising disputes in the cannabis industry. If you are involved in trademark infringement litigation and require consumer survey research, contact MMR Strategy Group.