Cannabis Co. Blocked From Selling ‘Skittles’ Edibles
By Mike Curley · Listen to articleLaw360 (July 21, 2022, 4:00 PM EDT) — A California federal judge has signed off on a consent decree between the makers of Skittles and Starburst and the owner of a cannabis edibles company, with the deal stipulating that the cannabis company stop selling products that mimic the candies’ logos, in addition to monetary penalties.
Judge John W. Holcomb approved a settlement between Wm. Wrigley Jr. Co. and cannabis products seller Steven Mata in a suit alleging that Mata infringed Wrigley’s trademarks for Skittles and Starburst with his cannabis edibles. The settlement includes an injunction blocking Mata from selling the products. (click to enlarge)In a judgment signed Tuesday, U.S. District Judge John W. Holcomb gave the OK to the deal between Wm. Wrigley Jr. Co. and Steven Mata, who runs OC 420 Collection, a website that sells a variety of cannabis edibles.
In the suit, Wrigley alleged that Mata and a number of other companies and their owners had infringed its trademarks for the Skittles and Starburst brands with products such as “Medicated Skittles” and “Medicated Cannaburst Gummies,” which mimic the logos of the popular candies as well as other trade dress, such as the coloring and overall design of the packaging.
Wrigley settled with the other defendants in March, according to court documents.
According to the judgment, Mata took these actions with willful disregard for Wrigley’s registered trademark rights, with the intent to take advantage of the products’ recognition and the goodwill earned by the company.
As part of the consent decree, Mata and his company can no longer infringe the trademarks and trade dress or represent, directly or indirectly, that any of his products are associated with Wrigley’s brands.
In addition, Mata must immediately pull all the infringing products off shelves and deliver them to Wrigley’s attorneys for destruction of the products and packaging.
The consent decree also requires Mata to disgorge all profits he obtained as a result of infringing Wrigley’s trademarks, and pay damages of $2 million per counterfeit mark, per type of goods sold, as well as other unspecified damages.
Representatives for Wrigley and Mata could not immediately be reached for comment Thursday.
In June, a group of 23 attorneys general sent a letter to Congress asking it to take action on similar “copycat” THC products, saying the resemblance to name-brand candies has led to accidental exposure to the drug, especially in children.
Wrigley is represented by Douglas N. Masters and Kyle R. Petersen of Loeb & Loeb LLP.
Mata is represented by Jonathan Landis and Jacob I. Mojarro of Adli Law Group PC.
The case is Wm. Wrigley Jr. Co. v. Roberto Conde et al., case number 5:21-cv-00777, in the U.S. District Court for the Central District of California.
–Editing by Stephen Berg.
