Cannabis Trademark Litigation: Case Studies

Cannabis companies are facing a trademark tug-of-war as they try to protect their brands. Here’s what you need to know:

Federal trademark registration isn’t available for cannabis products
Companies are getting creative with state-level trademarks and related products
Big brands are suing cannabis companies for similar names/logos
Courts usually side with established brands

Key cases:

Case	Outcome	Lesson
Starbucks vs. Starbuds	Starbuds forced to rebrand	Don’t copy famous brands
Wrigley vs. Terphogz (Zkittlez)	Zkittlez name banned	Parody isn’t a defense
Hershey vs. TinctureBelle	TinctureBelle products destroyed	Avoid lookalike packaging

Takeaways for cannabis companies:

Create unique, original branding
File state trademarks where possible
Consider federal trademarks for related legal products
Be ready for potential federal law changes

The cannabis trademark landscape is evolving rapidly. Companies with strong, distinctive brands will be best positioned as laws change.

Trademark Law in Cannabis

Cannabis companies can’t get federal trademark protection. Why? The U.S. Patent and Trademark Office (USPTO) won’t register trademarks for products that break federal law. And cannabis is still illegal at the federal level.

But it’s not all doom and gloom. Cannabis companies have some options:

State-level trademarks
Common law rights
Federal trademarks for legal, related products

Let’s dive in.

Trademark Options for Cannabis Companies

State-Level Protection

Cannabis companies can get state trademarks where weed is legal. The downside? They only work in that state.

Common Law Rights

Using a trademark in business can create some rights, even without registration. But these are limited and tougher to enforce.

Federal Workarounds

Some cannabis companies get clever. They trademark legal products related to their brand:

Product Type	Example
Clothing	T-shirts with company logo
Accessories	Rolling papers or pipes
Services	Cannabis education classes

Hemp and CBD

The 2018 Farm Bill changed things for hemp. Now, companies can get federal trademarks for hemp products with less than 0.3% THC.

Naming Challenges

Creating unique names is tough for cannabis companies. Common terms are often taken or too generic.

Aaron Pelley from Harris Sliwoski says:

"You can’t protect yourself until you’re in the marketplace. But you have to show proof that you’ve sold something in the marketplace before you can get a trademark."

Tips for Cannabis Companies

Check existing trademarks before naming
Avoid common cannabis terms
Create unique names
File for state trademarks where possible
Consider federal trademarks for related, legal products

Tim Sitzmann from Winthrop & Weinstine sums it up:

"The interplay between state and federal law is one of the biggest concerns when it comes to trademarks."

The cannabis trademark world is tricky. But with smart planning, companies can build and protect their brands, even with current legal limits.

Hershey vs. TinctureBelle Case

Hershey Co. sued TinctureBelle, a Colorado cannabis company, in June 2014. Why? TinctureBelle was selling weed-infused treats that looked a lot like Hershey’s famous candies.

Here’s the scoop:

TinctureBelle’s products were dead ringers for Hershey’s classics:

Hershey’s Original	TinctureBelle’s Copy
Reese’s Peanut Butter Cups	Hashees Peanut Butter Cups
Heath Bar	HashHeath
Almond Joy	Ganja Joy
York Peppermint Patty	Dabby Patty

Hershey wasn’t happy. They sued for trademark infringement, worried that kids might mistake these cannabis products for regular candy.

Jeff Beckman from Hershey said:

"This case is no different from the many other types of trademark infringement we regularly pursue."

But TinctureBelle’s president, Char Mayes, was caught off guard:

"The lawsuit from Hershey came as a huge surprise to us… we changed our entire label line approximately 6 months ago, long before these allegations surfaced last week."

The case wrapped up fast. TinctureBelle had to stop selling the copycat products, trash their inventory, and keep quiet about Hershey.

What’s the takeaway? Big brands are eyeing the cannabis market. And cannabis companies? They need to get creative with their own branding, not just copy the big guys.

2. Better Made vs. Michigan Cannabis Companies Case

In March 2024, Better Made Snack Foods Inc. sued several Michigan cannabis operators. The 94-year-old potato chip company claims the "Better Smoke" brand infringes on their trademark.

Legal Arguments and Effects

Better Made’s lawsuit targets over a dozen cannabis operators, including IVP Holding, LLC and Zen Republic, LLC. Their main arguments:

1. Trademark Infringement

Better Made says the "Better Smoke" logo looks too much like theirs. They worry customers might get confused.

2. Brand Dilution

The chip maker claims these cannabis companies are weakening their brand’s uniqueness.

3. Reputation Damage

Better Made fears being linked to cannabis could hurt their image in Michigan.

This legal battle brings up some big issues:

Issue	Impact
Brand Protection	Shows how food companies struggle to protect trademarks from cannabis industry use
Consumer Confusion	Questions if customers might mistake cannabis products for regular snacks
Industry Boundaries	Tests trademark law when companies from different sectors have similar branding

Better Made wants the court to:

Ban the defendants from using Better Made trademarks
Destroy all infringing product labels and materials
Hand over profits from Better Smoke products
Pay damages

This case could set the tone for how old-school brands defend their trademarks against new cannabis companies. It also shows why cannabis businesses need to create their own unique branding.

As cannabis goes mainstream, we might see more cases like this. Courts will have to balance protecting trademarks with the needs of the growing cannabis market.

3. Wrigley vs. Steven Mata (OC420) Case

Wrigley just scored a big win against a cannabis company. Here’s what happened:

Steven Mata, who owns OC420 Collection, got slapped with a major lawsuit. Why? He was selling weed-infused candies that looked just like Skittles and Starburst.

The court didn’t mess around. They found Mata guilty of trademark infringement and hit him with a $2 million fine per counterfeit mark. Plus, he has to give up all profits from his knockoff candies.

Here’s the kicker: The court called Mata’s actions "willful and malicious." That means he can’t wiggle out of this debt through bankruptcy.

Mata’s products were pretty blatant copies. He called them "Medicated Skittles" and "Medicated Cannaburst Gummies." Not exactly subtle.

The court sided with Wrigley on everything:

Wrigley’s Claims	Court’s Findings
Counterfeiting trademarks	Guilty
Dilution of famous trademarks	Guilty
Unfair competition	Guilty

So, what can other cannabis companies learn from this?

Don’t try the "it’s just a parody" defense. It won’t fly.
Stay away from big brand names, even if you’re in a different industry.
Get creative with your own branding.
Know the risks. Trademark infringement can cost you big time.

Bottom line: As the cannabis industry grows up, companies need to play by the rules. That means original branding and staying on the right side of the law.

4. Toys R Us vs. ZAZA R US Case

Toys R Us is suing ZAZA R US, a Brooklyn cannabis shop, for trademark infringement. Why? ZAZA R US copied Toys R Us’s logo, swapping the star for a cannabis leaf.

Legal Battle and Industry Impact

The lawsuit’s in full swing:

Toys R Us sent a cease and desist in January 2023
ZAZA R US ignored it
A judge says Toys R Us can move forward

Toys R Us wants:

What	Why
Stop ZAZA R US	No more using Toys R Us’s brand
Money	Damages, profits, royalties
Extra cash	Legal fees

This isn’t just about toys and weed. It’s a wake-up call for the cannabis industry:

Don’t copy famous brands
Create your own look
Be ready for legal fights

A legal expert put it bluntly:

"I suspect that whatever fun ZAZA R US was having with its branding is over in the face of an army of serious intellectual property lawyers."

This case could set the rules for how federal trademark law works in cannabis. The message? Be original, or get sued.

5. Starbucks vs. Starbuds Flowers Case

Starbucks isn’t happy with Starbuds Flowers. On June 28, 2023, they sued the cannabis company in New York. Why? They think Starbuds is copying their brand.

Here’s what Starbucks is upset about:

What	How It’s Similar
Logo	Green circle, looks like Starbucks’
Name	Sounds like "Starbucks"
Image	Woman with crown (like Starbucks’ mermaid)
Products	Joints with a similar logo

Starbucks didn’t just jump to a lawsuit. They:

1. Sent warning letters

2. Complained to New York’s cannabis office

3. Filed a big lawsuit

What does Starbucks want? They’re asking the court to:

Shut down Starbuds Flowers
Give Starbucks all of Starbuds’ profits
Destroy products with the copycat logo

A Starbucks rep said:

"We’ve built our brand for 50+ years. We’ll act when others misuse it."

This case is a wake-up call for cannabis companies. The message? Create your OWN brand. Don’t copy others, or you might end up in court.

6. Ferrara Candy Company vs. Cannabis Edibles Maker Case

In May 2022, Ferrara Candy Company sued Top Five Wholesale over THC-infused edibles that looked like popular candy brands. This case shines a light on trademark issues in the cannabis world.

Here’s the quick rundown:

Who	What	When	Result
Ferrara Candy Company	Sued Top Five Wholesale	May 31, 2022	Won on March 20, 2023

The court said Top Five copied Ferrara’s stuff – names, packaging, logos. You name it. They had to stop selling, trash their stock, and hand over all the cash they made.

Why It’s a Big Deal

This isn’t just about candy. It’s about kids’ safety. These THC treats packed a punch – up to 600mg of THC. That’s like 60 adult doses in one package.

The FDA’s numbers are scary:

10,448 THC edible exposures from January 2021 to May 2022
77% were kids and teens
65% were accidents

Samuel Levine from the FTC put it bluntly:

"Companies must ensure that their products are marketed safely and responsibly, especially when it comes to protecting the well-being of children."

Some states are slapping warning labels on edibles. But will kids read the fine print on what looks like candy?

What Cannabis Companies Need to Do

Make your own look – don’t copy candy
Use packaging kids can’t open
Warn about THC clearly
Follow your state’s rules

This isn’t a one-off. Similar lawsuits are popping up all over. With cannabis sales hitting $30 billion a year, companies need to play it smart and safe.

7. Wrigley vs. Terphogz LLC (Zkittlez) Case

Wrigley took Terphogz LLC to court over the "Zkittlez" name. Why? They thought it was too close to their "Skittles" candy brand.

Here’s what happened:

Wrigley sued in May 2021
They claimed trademark infringement
It’s part of a bigger trend: big brands vs. cannabis companies

What Came Out of the Settlement?

Terphogz Can’t Use	Terphogz Must Do
"Skittles" or "Zkittlez"	Give up zkittlez.com
"Taste the Z Train" slogan	Tell vendors to ditch Zkittlez stock
"Taste the Strain Bro" slogan	Drop trademark applications for their logo

Terphogz CAN use the letter "Z" – but only if it won’t confuse people.

What This Means for Cannabis Companies

Don’t copy famous brands
Check if your name’s already taken
Think ahead when picking names

Bottom line? The cannabis industry needs to wise up about branding. As the market grows, so does the risk of legal trouble.

Common Themes in Cases

Big brands vs. small cannabis companies. That’s the typical setup in cannabis trademark battles. Let’s break it down:

Trademark Tactics and Defenses

Big brands attack:

Claim trademark infringement
Argue consumer confusion
Protect brand image

Cannabis companies defend:

Claim unique branding
Point to state-level legality
Try to disprove confusion

Real cases tell the story:

1. Wrigley vs. Terphogz LLC (Zkittlez)

Wrigley sued over "Zkittlez". The result?

Terphogz Can’t Use	Terphogz Must Do
"Skittles" or "Zkittlez"	Give up zkittlez.com
"Taste the Z Train" slogan	Stop vendor Zkittlez sales
"Taste the Strain Bro" slogan	Drop logo trademark applications

2. Wrigley vs. Steven Mata (OC420)

Wrigley won. Mata sold "Medicated Skittles" and "Medicated Cannaburst Gummies". The court:

Found Mata guilty
Ordered product destruction
Fined $2 million per counterfeit mark

3. Toys R Us vs. ZAZA R US

Toys R Us sued ZAZA R US, claiming:

Goodwill exploitation
Similar signage use

They want ZAZA R US to stop and pay up.

Key Takeaways:

Big brands protect trademarks aggressively
Cannabis companies often lose
Courts favor established brands
Parody doesn’t work commercially

"Parody is NOT a defense to trademark infringement in this type of commercial context." – Lexology

What Cannabis Companies Should Do:

Be careful with naming
Don’t copy famous brands
Create unique branding
Consult IP lawyers

As cannabis grows, so do legal risks. More states legalizing? Expect more trademark fights.

Key Court Decisions

Cannabis trademark litigation has exploded. Let’s look at the court rulings that are shaping the game.

The Legal Landscape Shift

1. Federal Law Still Trumps

In Kiva Health Brands LLC v. Kiva Brands Inc., a California court tossed out a cannabis edibles company’s trademark claims. Why? Cannabis is still federally illegal. The court said:

"At a high level, the goods are related: they’re both food items. But look closer, and they’re quite different."

2. Delta-8 THC Gets a Win

The Ninth Circuit Court of Appeals gave delta-8 THC products trademark protection in AK Futures LLC v. Boyd Street Distro, LLC. They said delta-8 THC falls under the Farm Act’s "hemp" definition. This could be huge for cannabis businesses.

3. Parody? Nice Try

In WM. Wrigley Jr. Company v. Roberto Conde, et al., the court slammed Steven Mata for selling "Medicated Skittles." The verdict? Harsh:

Guilty of trademark infringement and counterfeiting
Must destroy all infringing products
Owes $2 million per counterfeit mark, plus Wrigley’s legal costs

4. Watch Your Marketing

The Trademark Trial and Appeal Board (TTAB) denied "Bakked" trademark applications in In re National Concessions Group, Inc. Why? The product was marketed as a dabbing tool, which the TTAB saw as drug paraphernalia.

5. Courts Get More Power

In BBK Tobacco and Foods LLP v. Central Coast Agriculture Inc., the Ninth Circuit said district courts can now refuse pending trademark applications. Before, only the TTAB could do this.

Court Decision	What It Means
Kiva Health Brands LLC v. Kiva Brands Inc.	Federal law blocks cannabis trademarks
AK Futures LLC v. Boyd Street Distro, LLC	Delta-8 THC can get trademark protection
WM. Wrigley Jr. Company v. Roberto Conde, et al.	Parody doesn’t work as a defense
In re National Concessions Group, Inc.	Marketing can kill your trademark application
BBK Tobacco and Foods LLP v. Central Coast Agriculture Inc.	Courts can now reject pending applications

The takeaway? Cannabis trademarks are a legal minefield. Some doors are opening, but federal law still looms large. Get expert legal help to navigate this mess.

Tips for Cannabis Companies

Creating Unique Brand Names

Cannabis companies face a challenge: building a strong brand while navigating tricky trademark laws. Here’s how to do it right:

1. Don’t copy big brands

It’s tempting, but it’s a bad idea. Just ask Steven Mata. He tried selling "Medicated Skittles" and Wrigley sued him. The result?

$2 million fine per counterfeit mark
All infringing products destroyed
Mata had to pay Wrigley’s legal costs

Ouch.

2. Get creative with names

Make up new words or use existing ones that have nothing to do with cannabis. Some good examples:

Canopy: Short, easy to remember, and easy to trademark
Blissiva: Sounds relaxing without mentioning cannabis

3. Do your homework

Before you fall in love with a name:

Check the USPTO database
Look for state trademarks where cannabis is legal
Google it to spot potential issues

4. Be smart about registration

What to do	Good stuff	Not-so-good stuff
Federal (non-cannabis goods)	Protection across the US	Only for related products
State (cannabis goods)	Some local protection	No rights across state lines

5. Create sister brands

Make non-cannabis products to get federal trademarks:

Dried herbs for cooking
CBD products (less than 0.3% THC)
Branded merch

Josh Gerben, who founded Gerben IP, says:

"Brand protection is important for all industries – including the marijuana industry."

6. Use solid contracts

Protect your ideas:

Use strong NDAs before sharing
Include who owns what in all agreements

7. Keep your eyes open

Watch out for copycats:

Set up Google Alerts for your brand name
Watch what competitors are launching
If you see a problem, act fast

The cannabis trademark world is always changing. Keep an eye on federal laws and be ready to switch things up if needed.

What’s Next for Cannabis Trademarks

The cannabis industry is about to change big time. The DEA’s plan to move marijuana from Schedule I to Schedule III could shake up how cannabis companies protect their brands.

Here’s what might happen:

1. More trademark applications

Rescheduling could open the floodgates for cannabis trademark applications. Why? Federal trademark registrations for cannabis products might finally become a reality.

2. Easier brand protection

Right now, protecting cannabis brands nationwide is a headache. Rescheduling could change that, allowing companies to get federal trademark protection for their products.

3. It’s complicated

Don’t expect smooth sailing. The USPTO will need to figure out new rules, which could mean:

Application processing delays
New cannabis trademark guidelines
Potential legal battles

4. State vs. Federal clash

Even if federal law changes, state laws still matter. This could create a messy situation for cannabis trademarks.

Now	Future
No federal registration for cannabis goods	Possible federal registration for some cannabis products
State-level protection only	Potential nationwide brand protection
Focus on related goods and services	Direct protection for cannabis products

5. Getting ready

Smart cannabis companies are:

Filing trademarks for related, legal products
Building brand recognition now
Talking to trademark lawyers

6. Possible roadblocks

Even with rescheduling, some issues might stick around:

Recreational cannabis could still be federally illegal
The USPTO might face a flood of applications
New legal challenges could pop up

The cannabis trademark world is changing fast. Companies need to stay sharp and be ready to move when the laws shift.

"There are a number of different strategies that cannabis companies can employ to obtain federal trademark registrations." – Matthew G. Miller, Lerner David

While we wait, cannabis businesses should:

Keep building strong brands
Stay on top of state and federal laws
Be ready to file new trademark applications ASAP

The future of cannabis trademarks is up in the air, but it’s exciting. Companies that prepare now will be in the best spot to protect their brands when federal laws change.

Conclusion

The cannabis trademark world is changing fast. As the industry grows, so do legal battles over brand protection.

Here’s what we’ve learned:

Big brands are suing cannabis companies for similar names or logos. Courts usually side with established brands. To avoid lawsuits, cannabis companies need unique branding.

Recent cases show the risks:

Case	Outcome	Impact
Starbucks vs. Starbuds	Starbuds rebranded	Big brands win
Skittles vs. Zkittlez	Zkittlez dropped name	Copying famous marks is risky
Better Made vs. cannabis companies	Lawsuit ongoing	Using known logos is dangerous

These cases prove that copying isn’t worth the legal trouble. Cannabis companies must create original brands to stay safe.

As the industry grows, trademark strategies are evolving:

Focus on state-level protections where cannabis is legal
Register trademarks for related, legal products
Prepare for potential federal changes

"Cannabis companies can use different strategies to get federal trademark registrations." – Matthew G. Miller, Lerner David

The future of cannabis trademarks is unclear. But companies with strong, unique brands will be ready for whatever comes next.