Where there’s smoke there’s fire, but where there’s Doublemint and Juicy Fruit, there’s supposed to be only chewing gum, according to a trademark infringement lawsuit from one of Chicago’s iconic candy makers against the makers of e-cigarette “vaping” products.
Wm. Wrigley Jr. Company filed a federal lawsuit July 13 in Chicago accusing an e-cigarette marker of using the gum company’s trademarked names for flavors of the liquid used in its vaping products. The complaint targets Robert Wilson and two companies he owns, Chi-Town Vapers LLC and Chi-Town Labs Inc., both based at the same Bensenville address.
In its complaint, Wrigley notes the Doublemint brand has been sold for more than a century, using images showing the evolution of the word mark in white lettering inside a double arrow design to demonstrate the success of the trademark, dating as far back as 1914. Images of the distinctive yellow packaging for Juicy Fruit date to 1905.
Wrigley said that despite owning those trademarks for more than 100 years, Wilson’s company has used product brand names to market e-cigarette liquid for sale online and at the Bensenville location. In addition to the gum flavor, Wrigley said Wilson’s company uses other well-known product names, including Skittles, Kahlua, Hawaiian Punch, Mountain Dew, Red Bull and Nutella.
The gum company said Wilson’s businesses engaged “in an intentional effort to trade off of the valuable goodwill that Wrigley has built up in its marks,” further adding that “unauthorized and infringing use of Wrigley’s trademarks is likely to cause confusion, harm the public, and damage Wrigley’s valuable rights.”
The complaint includes screenshots from the chi-townvapors.com that include the trademarked product names and, in the case of Nutella, a picture of the trademarked product itself. Wrigley said images of its products, such as Juicy Fruit, Doublemint and Skittles, were removed from the website after Wrigley attorneys contacted Wilson in July 2014.
However, by November 2015, the product was back on the website, this time marketed as Dbl Mint E-liquid, with white lettering inside a black double arrow on a green background in a rectangular shape like a pack of gum. In red, referencing the Wrigley’s red lettering on Doublemint packages since 1926, are the words Chi-Town Vapers. The company added Joosy Froot Gum E-Liquid in January 2017, using a yellow box and double arrow design.
As part of the complaint, Wrigley noted “growing concern, shared by the FDA, the Senate and others, that the marketing of e-cigarette materials in chocolate, fruit and/or candy flavors harmfully targets children under 18 years of age.”
Formal counts include federal trademark infringement and dilution, unfair competition and deceptive trade practices. Wrigley wants the court to issue preliminary and permanent injunctions stopping the use of anything confusingly similar to the Doublemint and Juicy Fruit trademarks, to force a recall from all distribution channels of any offending product and for those products and all related packaging and advertising material to be delivered to Wrigley for destruction.
Wrigley also seeks monetary, statutory, exemplary and trebled damages, disgorgement of profits and legal fees.
Representing Wrigley in the matter is Loeb & Loeb LLP, of Chicago.