Trademark infringement: Wrigley sues e-liquid maker

Is IP theft a serious problem for vaping, as some people say?

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A Chicago-area vape company is being sued by Wrigley for infringement of the gum manufacturer’s trademarks. Specifically, Chi-Town Vapers sells two flavors of e-liquid using branding that are associated with Wrigley’s Juicy Fruit and Doublemint gums.

The New York post reports that Wrigley asked the company to stop selling its Doublemint-branded e-liquid in July 2014, and Chi-Town did, but then in November 2015, Chi-Town began selling the Doublemint flavor again, this time changing the name to “Dbl Mint.”

Chi-Town ignored another cease and desist letter from the gum giant’s lawyers, and then started selling the Juicy Fruit-inspired liquid called Joosy Fruit (or “Froot,” depending on whether you read the website description or look at the image). That was enough for Wrigley.

They also have a huge banner on their homepage stating, “Manufactured in a FDA regestired facility.”

Wrigley is now asking a federal court in Chicago to force the company to stop using their trademarks, and to award Wrigley all profits Chi-Town has made from them. Wrigley was founded in Chicago in 1891, and is an institution in that city. Chi-Town Vapers in in Bensenville, northwest of Chicago.

“Rather than develop their own brand names for their products, defendants have chosen to market their e-liquid for electronic cigarettes using the trademarks of various other well-known companies, including Wrigley’s brand names, without authorization or license,” says the lawsuit.

Wrigley says in the suit that Chi-Town Vapers also uses trademarked logos from Skittles, Hawaiian Punch, Mountain Dew, Red Bull and Nutella, according to the Post. We can add Good & Plenty candy to the list after a quick look at the site.

Is trademark infringement a problem for vaping?

Wrigleys-sues-vaping-company
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Wrigley may be too late though. In a Facebook discussion of the suit, Greg Conley of the American Vaping Association pointed out that the company had filed for Chapter 7 bankruptcy earlier this year.

The company also received a warning letter from the FDA for underage sales last month. They also have a huge banner on their homepage stating, “Manufactured in a FDA regestired facility.” Misspelling aside, you’re not allowed to make that claim, and you’re not allowed to use the FDA logo or an approximation of it, which they also do. This company is walking on thin ice.

Stealing intellectual property is not unique to vaping. It’s a complex issue — although this case may not be difficult to decide. There are no police agencies proactively searching for trademark infringement. It isn’t a crime in that sense. Rather, it is up to the owner of a trademark to defend it. If Wrigley chose not to go after Chi-Town and other infringers, it’s possible that in time courts would refuse to recognize their trademarks.

We’ve seen a lot of e-liquid labels that walk the line between legally permissible (for example, parody of a trademark is sometimes allowed by the courts) and strictly verboten. The Chi-Town labels appear to be of the latter type. But I’m not a lawyer; what do I know?

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Jim McDonald
I spend most of my time studying the regulatory, legislative and scientific challenges to vaping, advocating for our right to exist, and talking with others who do the same. Consider me a source for information, and feel free to agree or disagree with anything I say. I love good coffee and sweet Michigan cherries. My childhood hero was Gordie Howe.