On July 13, 2017, Chicago-based chewing gum company W.M. Wrigley Jr. Company filed a trademark infringement lawsuit against Chi-Town Vapers LLC, another Chicago based E-cigarettes company for marketing and selling E-cigarettes with a packaging which had striking resemblance to chewing gum products manufactures and sold by Wrigley.
Wrigley filed the civil action in the United States District Court for the Northern District of Illinois, demanding a jury trial, seeking for damages and injunctive relief, for willful trademark infringement, dilution and unfair competition, under the Trademark laws of the United States.
In its allegations, Wrigley strongly asserted that it has been a famous global leader in manufacturing and selling wide range of gum, mints and candies. For over 100 years it has been selling chewing gum under the Doublemint mark and trade dress, and it owns extensive common law trademark rights for the Doublemint mark and Doublemint Trade Dress. It asserted on its various federal trademark registrations Registration Nos. 102001, 582862, 2425411, 2776644 and 2778540, reiterating its extensive trademark ownership rights.
Further, Wrigley asserted its common law trademark rights and ownership of several federal registrations over its other famous brands including Juicy Fruit mark and trade dress, with U.S. Registration Nos. 105032, 619549 and 2836550. Wrigley claimed that Chi-Town Vaper’s trademark infringement effects its business and that the Chi-Town is trying to promote its own business, by wrongfully using Wrigley’s goodwill of several years; for that Chi-Town Vapers is marketing and selling E-liquid for electronic cigarettes through their on-line website www.chi-twovapers.com and in their physical retail stores in Illinois.
It further claimed that Chi-Town Vapers was manufacturing and selling liquid e-cigarettes products with misappropriated trademarks from variety of other popular candy and food brands, including Double mint, Juicy Mint, Hawaiian Punch, Kahlua, Mountain Dew, Red Bull and Nutella.
Wrigley in its numerous claims for relief, reinstated that the E-cigarettes marketed and sold by Chi-Town Vapers, is likely to cause confusion as to the source, affiliation or sponsorship in the minds of the consumers. This does not only lead to willful disregard to Wrigley’s trademark rights, but involves taking an unfair advantage of the goodwill and reputation built by Wrigley which sells completely different variety of products like fruit chewing gums, mints and candies.
What concerns most to the United States Food and Drug Administration, the Senate and others, is that marketing harmful products such as electronic cigarettes in packaging similar to the packaging of famous chocolates and fruit flavored candies, explicitly targets children under the age of 18. Last year in May the federal government issued a long overdue ban on selling E-cigarettes to anyone under the age of 18 and issued the requirement for cigarette manufacturers to disclose their products to the government for approval. This major step was taken to regulate the purchase and use of such devices, specially amongst young people, who actually have no insight of the harmful consequences.
Keeping in mind the several efforts by the federal government to strongly scrutinize the purchase and use of cigarettes, this trademark infringement suit brings in the open numerous legal and social perspectives. This particular claim is not only about protection of common law rights and federal trademark rights of a famous food brand, but throws a bright light, on protection of public from wrongful deception, which may ultimately lead to damage to their valuable rights to life, health and social care.
Ayushi Harsh graduated with a a Master of Laws degree, with a specialization in Intellectual Property Law from the George Washington University Law School in May 2017. Before coming to United States, she earned an integrated degree of Bachelor of Arts and Bachelors of Law from the Symbiosis International University, Pune, India. Ayushi is a trained and qualified Indian classical dancer. She loves to read, mostly non-fiction, biographies and auto-biographies, loves to travel and is an ardent foodie.