To say Wrigley is feeling burned by Chi-Town Vapes’ use of e-cigarette flavor names that are uncomfortably close to the company’s iconic gum and candy brands is an understatement.
In response, the Chicago-based gum maker filed a trademark infringement lawsuit against Chi-Town Vapers LLC, Chi-Town Lab Inc. and owner Robert Wilson. Wrigley is seeking a permanent injunction against selling any products confusingly similar to Wrigley trademarks, a recall of the products from all distribution channels, all profits obtained by Chi-Town Vapers through the alleged trademark infringement, and other damages.
William Wrigley Jr. registered the trademarks for Juicy Fruit and Doublemint gum in 1915. The complaint alleges Chi-Town Vapers has attempted to hijack two of Wrigley’s valuable brands by selling “Dbl Mint” and “Joosy Fruit” e-cigarette liquids both online and at the company’s Bensenville, Ill., location.
Prior to filing the lawsuit, Wrigley attempted to get Chi-Town Vapers to stop selling the products. In July 2014, Wrigley attorneys sent a letter to Chi-Town Vapers asking the company to stop selling e-cigarette flavorings that they were marketing under the names of Juicy Fruit, Doublemint and Skittles. Although Chi-Town didn’t respond to the letter, the company did remove pictures of the products from its website. But in November 2015, Chi-Town Vapers began to market Dbl Mint vape liquid, and by January 2016, had introduced the Joosey Fruit Gum flavor, copying the look and feel of Wrigley’s Doublemint and Juicy Fruit Trade Dress on the company’s website, according to the lawsuit.
Charles Lee Mudd Jr., principal attorney at Mudd Law in Chicago, the firm representing the defendants, said his clients categorically deny Wrigley’s allegations. “Our clients have not intended to engage in any unlawful or infringing activity,” he said. “[They] believe it is best for all parties involved to address and resolve any disputes in a manner that protects all parties’ rights.”
Although electronic cigarettes, commonly known as e-cigarettes, are marketed as an alternative to traditional cigarettes and the perception for some has been that they are safer, there is no evidence that completely backs this theory, and little is known about the health risks of these devices. E-cigarette liquid also contains nicotine, something Wrigley is opposed to being associated with.
“The use of popular candy brands in the marketing, sales, and promotion of e-cigarettes is … grossly deceptive and irresponsible. We strongly condemn these actions, which are directly at odds with our anti-tobacco policy and our strict marketing standards,” Wrigley spokeswoman Michelle Green said in a statement released July 17, according to a Chicago Tribune report.
Andrei Mincov, founder & CEO of the Trademark Factory, explained that a trademark essentially only protects the brand in the context of the products and services for which the brand is used by its owner, and theoretically, anyone can use the same or similar brand to manufacture or market unrelated products or services under that same brand. “But then, there’s the issue of famous marks which – at least in those countries that recognize the concept, allows their owners to enforce their famous marks against those who use them, even for unrelated products and services.”
Chicago Attorney Doug Masters, who is representing Wrigley, said the company filed the lawsuit to prevent its famous brands from being used to sell vaping products. “The law prohibits unauthorized use of Wrigley’s brands that is likely to confuse people into believing that the vape companies are affiliated with or authorized by Wrigley,” he said.
New Jersey trademark attorney Jef Henninger said the case will likely rest on whether or not there is a likelihood of confusion – the basis for trademark infringement. He gave these examples:
When Toyota launched the Lexus line of cars, Mead Data Central (owners of Lexis Nexis) sued for trademark infringement on the grounds that consumers of upscale products might confuse “Lexus” with “Lexis,” but a market-research survey undertaken at the time did not support this argument. Mead lost the case in 1989 when the Court of Appeals for the 2nd Circuit held that there was little chance of consumer confusion.
But in 2012, the Trademark Trial and Appeal Board ruled a trademark application for a brand of aloe vera beverages called “L’Oreal Paris” should be denied because consumers familiar with L’Oreal’s cosmetic and personal care products would likely mistakenly believe that the drinks originated, were associated with, or sponsored by L’Oreal.
Because the products in the Wrigley lawsuit are different, it remains to be seen whether the court thinks consumers are likely to be confused into believing that e-juice and chewing gum come from the same source, which is a necessary requirement for Wrigley to establish their case of trademark infringement.
“In this case, Wrigley should be able to easily win as the names are similar enough to cause confusion among consumers. I assume the flavors are relatively similar as well so it is clear to me that this was willful infringement, which could increase the damages that Wrigley receives,” Henninger said. “There is really no likelihood of confusion here since they are not selling gum; just relating to the flavor of the gum.”
The case is really about getting a free ride with a brand that’s not yours, according to Mincov, who also believes Wrigley won’t have much of a problem proving Chi-Town’s intent to take advantage of the brand that is forever linked to Wrigley, at least in the minds of the public.
“Something tells me that Chi-Town Vapers’ lawyers would not be completely successful in convincing the court to let them off the hook, based on the difference in products and services,” he said. “I predict that Chi-Town will be able to prove their case on trademark infringement, but will lose on the unfair competition issue.”