Wrigley Opposes Dismissal in Cannabis Case Over “Skittles” Trademark

Candy manufacturer Wm. Wrigley Jr. Company seeks to maintain its trademark dispute over its Skittles mark and the cannabis product Zkittlez, and on Tuesday, Wrigley opposed a motion to dismiss. Wrigley, which produces Skittles candy, alleges that hemp company Terphogz LLC infringed Wrigley’s trademarks to sell items branded “Zkittlez”— including cannabis and drug paraphernalia. 

Wrigley filed its complaint in May 2021, claiming that it “invested nearly 50 years and hundreds of millions of dollars” into its Skittles trademark and the “taste the rainbow” slogan and advertising campaign that “has become one of the longest-running most successful campaigns in the history of advertising.” But the candy company alleges that Terphogz has infringed upon that goodwill by using the name Zkittlez, the “S” logo, and playing upon the “taste the rainbow” slogan by using phrase “#taztetheztrainbro”

On July 23, Terphogz (a California company) moved to dismiss the case (venued in the Northern District of Illinois), claiming lack of personal jurisdiction and improper venue — or, in the alternative, moving to transfer the case to the Northern District of California.

On Tuesday, Wrigley opposed dismissal and transfer, pointing to Terphogz’s various contacts with Illinois, including selling and shipping products to customers in Illinois. Wrigley also notes that the Seventh Circuit’s long-arm caselaw supports a finding of jurisdiction where Terphogz’s website includes a “ship-to” option to send its products to Illinois.

In its dismissal motion, Terphogz claimed that its mere $634 in sales to Illinois was de minimis — not constituting the requisite minimum contacts with the state. But Wrigley responded that the small amount of alleged sales is immaterial to the finding of specific personal jurisdiction, and Illinois customers finding the allegedly infringing product on Terphogz’s nationally distributed website supports finding of jurisdiction. Wrigley also argues that the Illinois federal court should retain jurisdiction, denying the motion to transfer to the Northern District of California. 

Separately, Wrigley has also asked the Trademark Trial and Appeal Board to suspend Terphogz’s marks. That matter is ongoing.

Wrigley is represented by Kucala Law and Snell & Wilmer L.L.P. in the civil matter — and Snell & Wilmer L.L.P. in the trademark opposition. Terphogz is represented by Branfman Mayfield Bustarde Reichenthal in the TTAB matter and Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP and Emerge Law Group in the civil matter.