If your great business is to make a vape flavored with someone else’s brand, think again. Caused you are gonna get smoked (get it??) Yet another e-liquid company found itself in a sticky situation this month when the court put a stop to the distribution of these sweet (yet infringing) vape juice flavors.
Wrigley is well-known for being a litigious brand when it comes to the protection of its marks. We updated you last summer when Wrigley filed a trademark infringement action against Chi-Town Vapers, LLC for replicating Juicy Fruit and Doublemint packaging to advertise flavored vape juices.On September 29, 2017, that case came down on a consent judgment, which is essentially a fancy way of saying that the case settled.
According to the 2017 settlement, Chi-Town was enjoined from engaging in any further trademark infringement of any Wrigley brands, including its Joosy Fruit Gum E-Liquid and its Dbl Mint E-Liquid. Chi-Town is also prohibited from advertising or offering any products that look like or reference any Wrigley products, must not represent that it has any direct or indirect association with Wrigley products, and was ordered to send all infringing products to Wrigley’s counsel for destruction.
In addition to the injunction, Chi-Town was ordered to pay damages for its wrongful conduct. Damages included all profits and gains it received from its unlawful conduct, exemplary (punitive) damages as determined by the court, pre-judgment interest on all of the damages, and all of Wrigley’s costs and disbursements during the action (including attorney’s fees.)
Unsurprisingly, Chi-Town wasn’t the last to meet the wrath of Wrigley. Earlier this year, Wrigley’s filed a complaint against Get Wrecked Juices, asserting claims of trademark infringement, trademark dilution, and unfair competition.
Get Wrecked Juices wasa vape juice company selling various flavors of e-liquids. Among those flavors included PINK STARBURST and SKEETLEZ.
Wrigley’s reported in its complaint that its counsel attempted to write to Get Wrecked Juices several times with the request that it cease using Wrigley’s marks in the marketing and sale of its products. When Get Wrecked Juices didn’t respond and failed to remove the allegedly infringing products, Wrigley took the steps to file the suit.
The complaint alleged that Get Wrecked Juices knowingly used the STARBURST mark in its sale of its PINK STARBURST e-liquid without authorization from Wrigley. According to Wrigley, the confusion as to the sponsorship or affiliation of Wrigley to the e-liquid being advertised by Get Wrecked Juices was sufficient to support a claim of trademark infringement.
While SKEETLES is not necessarily identical to Wrigley’s registered SKITTLES mark, Wrigley alleged that it was confusingly similar to SKITTLES. Additionally, the use of a photo with small candies with the “S” on them on the SKEETLES e-liquid sales page served as a source of confusion as to whether there was an authorized association with Wrigley’s SKITTLES brand. Additionally, the description for the SKEETLES e-liquid read, “Experience the spectrum of visible light”which reads closely to Wrigley’s, “Taste the Rainbow” SKITTLES campaign. The use of the SKITTLES brand, Wrigley asserted, was enabling Get Wrecked Juices to trade on the goodwill and efforts of Wrigley’s marketing and advertising campaigns throughout the years.
Wrigley made several attempts to serve the complaint on Get Wrecked Juices. While the paperwork was finally served to a representative of Get Wrecked in mid-February, Get Wrecked and its representatives failed to file a response to the allegations.
While Wrigley had originally requested a jury trial on the matter of trademark infringement, this case was already looking pretty unpromising. In light of the lack of response, Wrigley requested that the court grant a default judgment in its favor, stating that it had a solid case of trademark infringement in light of the facts that 1) its trademarks (STARBURST and SKITTLES) were valid and protectable, and 2) Get Wrecked’s use of STARBURST and SKEETLEZ was likely to cause confusion among consumers. Additional factors in Wrigley’s favor included the fame and strength of Wrigley’s marks, its assertions that the marks were similar in commercial impression, and the assertion that consumers of these products would not exercise a high degree of care in purchasing the product and confirming the source thereof.
Interestingly, Wrigley noted in its memorandum to support default judgment in its favor that the FDA and the Senate have expressed concern over the marketing of e-liquids and e-cigarette materials to children. It also brought this matter up in introducing its complaint, stating that “[t]here is a growing concern, shared by the FDA, the Senate and others, that the marketing of e-cigarette materials in chocolate, fruit and/or candy flavors harmfully targets children under 18 years of age.”
On April 12, 2018, court ruled on the default judgment in favor of Wrigley. It specifically ruled that Get Wrecked Juices was in violation of Federal trademark law, state law, and that the violations were willful and intentional. It was ordered to cease its infringing actions and recall from all distribution and advertising anything bearing the infringing STARBURST and SKEETLEZ marks. While Get Wrecked was not found to be liable for punitive damages as Chi-Town was last year, Get Wrecked was ordered to pay Wrigley’s costs and attorney’s fees pursuant to federal law.
Unfortunately for those of you who were looking to try the SKEETLES flavored e-liquid, a search for Get Wrecked Juices shows that the company is no longer in business. This is probably due to the fact that Get Wrecked got wrecked and was ordered to pay all of those fees and costs associated with the case. This case can certainly teach at least one important lesson- always check your mailbox.
Author, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.