E-cigarette manufacturers have long produced liquid nicotine in a variety of flavors, like strawberry or cotton candy, as a way to entice users with something that doesn’t simply taste like nicotine or smoke. But Chicago vape company’s attempt to appeal to customers’ palettes has garnered the ire of candy maker Wrigley, which accused the e-liquid maker of infringing on its Juicy Fruit and Doublemint brands.
Chicago-based Wrigley — which is owned by candy maker Mars — filed a lawsuit last week accusing Chi-Town Vapers of trademark infringement for producing and selling “Dbl Mint” and “Joosy Fruit” flavored liquids for e-cigarettes.
According to the lawsuit [PDF], Chi-Town Vapers is making an intentional effort to trade off the goodwill that Wrigley has made off the chewing gum brands, claiming that the vape company’s use of the names and flavors is “likely to cause confusion, harm the public, and damage Wrigley’s valuable rights.”
Wrigley, which has “extensive common law trademark rights” and federal registrations for both Doublemint and Juicy Fruit, claims that rather than develop its own brand names for products they chose to make their e-liquid for electronic cigarettes using the trademarks of other well-known companies.
Chi-Town Vapers used the Dbl Mint and Joosy Fruit marks with “full knowledge of, and in willful disregard of Wrigley’s right in its trademarks, and with the intent to obtain a commercial advantage that defendants otherwise would not have,” the lawsuit claims.
While Wrigley notes that packaging for its products has changed over the past century, there are elements that are that have been consistent, as the company invested “millions of dollars and significant effort” to advertise and promote the brands.
Chi-Town Vapers is attempting to profit off of this to sell its own products, the suit claims.
Not only do the company’s product, which are sold online and at its retail locations, mimic the chewing gum names and flavors, the lawsuit claims they also use packaging.
For instance, the packaging of Doublemint comes in a green package with a double arrow design and the words Doublemint. Chi-Town Vapers uses a similar package for its product: a green box with a double arrow and the words “Dbl Mint E-liquid.”
Chi-Town Vaper’s packaging for “Joosy Fruit Gum” also contains similar packaging to Wrigley’s product, both using a yellow package with red double arrows, along with the products’ name.
Not The First Time
According to the lawsuit, this isn’t the first time Wrigley has tussled with Chi-Town Vapers.
In June 2014, the candy maker sent a letter to Chi-Town Vapers detailing Wrigley’s rights and demanding the company stop selling Juicy Fruit, Skittles, and Dobulemint-like products.
While Chi-Town Vapers did not respond to the letter, the company removed the allegedly infringing images from its website.
A year later, however, the company once again began marketing and selling e-liquid using the Dbl Mint name and similar packaging. Although Wrigley’s counsel reached out to the company again on the issue, Chi-Town Vapers did not make changes to the product or its website.
Then beginning in Jan. 2017, Chi-Town Vapers resumed the marketing and selling of its Joosey Fruit e-liquid.
Wrigley claims that Chi-Town Vapers’ conduct is “willful, deliberate, intentional, and in bad faith.” Wrigley has been and will continue to be “greatly and irreparably” damaged by the defendants’ actions, the lawsuit claims.
The lawsuit seeks an injunction against selling any “confusingly similar” products to Wrigley’s trademarks, a recall of currently offered products, and undisclosed damages.