A final judgment recently rendered in WM. Wrigley Jr. Company v. Roberto Conde, et al., is nothing short of a cautionary tale for cannabis companies infringing on trademarks. The judgement is also a reminder that parody is NOT a defense to trademark infringement in this type of commercial context.
The parties
We all know Wrigley – it’s a titan in the food industry and offers a range of products like gum, mints, and candies, including Skittles, Starburst, and Lifesavers. Wrigley is the owner of numerous trademarks and, relevant here, owns and have used the famous SKITTLES and STARBURST marks.
The judgment, which signs off on the parties’ consent decree, is against Steven Mata, an individual who lives and conducts business in Orange County. Mata does business as OC420, which is a retailer of edible cannabis products. Relevant here, Mata marketed and sold products like “Medicated Skittles,” “Medicated Cannaburst Gummies,” and a “Munchies Edible Deal.”
The packaging is clearly meant to imitate the Skittles and Starburst packaging, which adopts and uses the word marks in the same fashion and features a graphic design that is also nearly identical to the original candies.
The problem
There is a line between using another’s mark to make political or social commentary and using another’s mark to gain recognition and increase sales of your own product. We’ve written before about cannabis companies that have attempted to spoof well known marks and have paid a price for it.
Hershey’s, for example, initiated multiple lawsuits over several years against companies that branded cannabis-infused chocolate products with names such as “Mr. Dankbar,” “Reefer’s Peanut Butter Cups,” “Hasheath,” and “Ganja Joy,” all meant to imitate their non-cannabis Hershey’s counterpart. These cases ultimately settled out of court.
The judgment
The judgment indicates that Mata’s conduct constituted:
Trademark infringement;
Trademark dilution;
Unfair competition and deceptive acts;
Dilution under relevant California Business and Professions Code statutes; and
Counterfeiting.
In so finding, the judgment includes an injunction against any further counterfeiting, infringement, dilution, and unfair competition. Mata must also recall any products, packaging, and advertising that is already out in the world, and provide them to Wrigley’s attorneys for destruction. Finally, Mata must provide an accounting of all profits from the products and “disgorge” (turn them over) to Wrigley, in addition to statutory damages of $2 million per counterfeit mark, as well as pre-judgment interest, Wrigley’s costs and attorneys’ fees in prosecuting the case.
Oof. This is one of the harshest judgments we’ve seen in a while, and that’s because Mata’s conduct was malicious and willful. (Side note: this also means that if Mata files for bankruptcy, this judgment would be non-dischargeable.)
Mata is in really bad shape here. Please don’t put yourself in a similar position. Make sure to work with good intellectual property lawyers to clear your brand from the get-go.
If you’re interested in similar cases, here are past articles of other case studies:
Trademark Infringement Litigation Case Study: Uncle Bud’s
Trademark Litigation: Happi Hour is Over
Wrigley Goes After Canna Trademark Infringers
Reminder: The Parody Defense to Trademark Infringement is Tricky
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