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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`WM. WRIGLEY JR. COMPANY, a Delaware
`corporation,
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`Plaintiff,
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`v.
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`Case No. 21-CV-02357
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`TERPHOGZ, LLC, a California limited
`liability company, and JOHN DOES 1-5,
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`Defendants.
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`Judge
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`COMPLAINT
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`Plaintiff Wm. Wrigley Jr. Company (“Wrigley”) alleges the following for its Complaint
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`against Defendant Terphogz, LLC (“Terphogz”) and Defendants John Does 1-5 (“Doe
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`Defendants”) (collectively, “Defendants”).
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`PRELIMINARY STATEMENT
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`1.
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`Founded in 1891 in Chicago, Illinois, Wrigley is a leading candy manufacturer and
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`owns the iconic SKITTLES brand for the fruit-flavored candy. Wrigley has invested nearly 50
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`years and hundreds of millions of dollars carefully cultivating the goodwill symbolized by the
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`SKITTLES mark. More than a generation ago, Wrigley launched an advertising campaign for
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`SKITTLES featuring the slogan TASTE THE RAINBOW. That campaign has become one of the
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`longest-running, most successful campaigns in the history of advertising. Today, SKITTLES
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`candy, each piece bearing the familiar S logo, is the best-selling, non-chocolate candy in the
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`country, and the tagline TASTE THE RAINBOW is synonymous with SKITTLES. Packaging and
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`advertising featuring Wrigley’s SKITTLES mark, TASTE THE RAINBOW slogan, and S logo
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`are shown below (collectively, this mark, slogan, and logo are referred to as the “SKITTLES
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`Marks”):
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`Terphogz is in the business of selling cannabis, drug paraphernalia, and
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`2.
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`promotional merchandise. Rather than create its own brand architecture, Terphogz simply helped
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`itself to Wrigley’s famous SKITTLES Marks, picking “ZKITTLEZ” as the name of its drugs,
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`knocking off Wrigley’s federally registered TASTE THE RAINBOW slogan, and even copying
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`Wrigley’s S logo. See Exhibit A. Some of Terphogz’s goods are depicted below:
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`3.
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`Terphogz’s freewheeling use of Wrigley’s SKITTLES Marks has been enormously
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`successful. Because ZKITTLEZ goods command a 20% premium in the market, Terphogz has
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`reaped enormous profits. But those ill-gotten gains have come both at the expense of the public
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`which believes that Wrigley approves the ZKITTLEZ goods being peddled by Terphogz and at
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`the expense of Wrigley which has lost control over the reputation of its SKITTLES Marks.
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`4.
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`Unscrupulous companies like Terphogz who push drugs and drug paraphernalia
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`using trademarks belonging to confectionery companies pose a danger to children. Illinois recently
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`was forced to enact legislation prohibiting cannabis companies from disseminating advertising or
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`packaging for cannabis or cannabis-related products that imitates candy labeling or packaging. See
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`410 Ill. Comp. Stat. 705/55-20 – 55-21.
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`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 6 of 22 PageID #:6
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`5.
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`Wrigley commenced this action to protect the public from Terphogz’s deceptive
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`and dangerous business practices and to safeguard the goodwill and reputation of Wrigley’s
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`renowned SKITTLES Marks.
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`NATURE OF THE ACTION
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`6.
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`This is an action for trademark infringement, false designation of origin, unfair
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`competition, trademark dilution, cybersquatting, and related claims under the federal Lanham Act,
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`15 U.S.C. §§ 1114 and 1125, Illinois Uniform Deceptive Trade Practices Act, 815 Ill Comp. Stat.
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`510/1 et seq., Illinois common law, and the Illinois Anti-Dilution Act, 765 Ill. Comp. Stat. 1036/65.
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`PARTIES
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`7.
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`Wrigley is a Delaware corporation with its principal place of business at 1132 West
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`Blackhawk Street, Chicago, Illinois 60642.
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`8.
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`Terphogz is a California limited liability company with its principal place of
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`business at 45011 Ukiah Street, Mendocino, California 95460.
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`9.
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`The Doe Defendants are businesses located in Illinois who, on information and
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`belief, purchase Terphogz’s ZKITTLEZ goods and advertise and resell them to end users in
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`Illinois. The identities of the Doe Defendants are presently unknown. Wrigley will amend its
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`Complaint to allege the true names and capacities of Doe Defendants once that information has
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`been ascertained.
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`JURISDICTION AND VENUE
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`10.
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`The Court has subject matter jurisdiction over Wrigley’s claims for trademark
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`infringement, false designation of origin, unfair competition, trademark dilution, cybersquatting,
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`and related claims because they arise under federal law. 15 U.S.C. § 1121; 28 U.S.C. §§ 1331,
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`1338. The Court has supplemental jurisdiction over Wrigley’s state claims because they are so
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`related to the federal claims that they are part of the same case or controversy and derive from a
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`common nucleus of operative facts. 28 U.S.C. § 1367(a).
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`11.
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`The Court has personal jurisdiction over Terphogz pursuant to the Illinois long-arm
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`statute, 735 Ill. Comp. Stat. 5/2-209 et seq., and the Due Process Clause of the Fourteenth
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`Amendment of the United States Constitution. Terphogz transacts business in Illinois and has
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`sufficient minimum contacts with Illinois. Terphogz purposefully avails itself of the benefits of
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`conducting business in Illinois and can reasonably anticipate being sued here.
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`12.
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` Terphogz operates an interactive website at zkittlez.com where it advertises,
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`distributes, and sells cannabis, cannabis- and cannabidiol (“CBD”)-related goods, drug
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`paraphernalia, clothing, and merchandise to Illinois residents under the marks ZKITTLEZ,
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`TAZTETHEZTRAINBRO, ZKITTLEZ HEMP, ZKITTLEZ HEMP & Cloud Design, and a Z logo
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`(collectively, these marks and logos are referred to as the “ZKITTLEZ Marks”). See pages from
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`Terphogz’s website attached as Exhibit B. Terphogz’s zkittlez.com website enables a purchaser
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`to calculate shipping charges using his or her zip code, including Illinois zip codes. Purchasers in
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`Illinois buy ZKITTLEZ goods from Terphogz at zkittlez.com, and Terphogz ships those goods to
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`them in Illinois. Terphogz also operates a Facebook account under the name “Zkittlez-Hemp-
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`108831180811606” and Instagram accounts under the names “_zkittlez_” and “_zkittlez hemp_”
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`and “terphogz,” which advertise ZKITTLEZ goods to Illinois residents.
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`13.
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`Terphogz advertises and sells goods which bear and/or are distributed in packages
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`bearing the ZKITTLEZ Marks to distributors and retailers who Terphogz knows in turn advertise
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`and resell those goods to end users in Illinois.
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`14.
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`Terphogz’s use of the ZKITTLEZ Marks is likely to cause confusion among
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`consumers, end users, and others nationwide and in Illinois. Terphogz knows that Wrigley is
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`headquartered in Illinois and that the harm caused by Terphogz’s and its distributors’ and retailers’
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`use of the ZKITTLEZ Marks—both inside and outside Illinois—is felt by Wrigley in Illinois.
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`15.
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`This Court has personal jurisdiction over the Doe Defendants because, on
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`information and belief, they are located and doing business in Illinois. On information and belief,
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`the Doe Defendants purchase cannabis, cannabis- and CBD-related goods, drug paraphernalia,
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`clothing, and merchandise from Terphogz which products and/or product packaging bear the
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`ZKITTLEZ Marks and advertise and resell those goods to end users in Illinois with Terphogz’s
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`actual knowledge.
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`16.
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`Venue is proper in this judicial district because this Court has personal jurisdiction
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`over Terphogz and the Doe Defendants. 28 U.S.C. § 1391(b)(1). Terphogz and the Doe Defendants
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`reside in this judicial district for purposes of 28 U.S.C. § 1391(c)(2), (d) because they are subject
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`to personal jurisdiction in this district. Venue is also proper in this district because Wrigley resides
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`and transacts business in this district and a substantial part of the events or omissions that give rise
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`to Wrigley’s claims occurred in this district. 28 U.S.C. § 1391(b)(2). Terphogz and, on information
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`and belief, the Doe Defendants, transact business in this district, are committing tortious acts in
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`this district, and are subject to the personal jurisdiction of this Court.
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`17.
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`Assignment of this action to the Eastern Division is proper because a substantial
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`part of the events giving rise to the claims alleged herein occurred in this Division.
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`FACTS GIVING RISE TO WRIGLEY’S CLAIMS
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`I.
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`Wrigley and Its SKITTLES Marks
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`18. Wrigley, a leading candy manufacturer based in Chicago, Illinois, owns the famous
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`SKITTLES brand for candy.
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`19.
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`For generations, Wrigley and its predecessors have used the SKITTLES mark to
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`sell candy throughout the United States. Each piece of SKITTLES candy features an S logo.
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`20. Wrigley long ago launched an advertising campaign for SKITTLES candy which
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`revolved around the slogan TASTE THE RAINBOW. That campaign continues to this day and is
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`now among the longest running, most successful campaigns of all time. Wrigley uses
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`“#tastetherainbow,” “#onerainbow,” and other rainbow-formative hashtags, tags, and symbols to
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`advertise SKITTLES candy on social media, including Twitter, Facebook, and Instagram.
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`21. Wrigley advertises SKITTLES candy during the Super Bowl and other highly
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`watched events. Hundreds of millions of people have seen advertisements for SKITTLES candy.
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`22.
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`For a quarter of a century, Wrigley has operated a website at skittles.com, where it
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`promotes SKITTLES candy and merchandise to millions that visit the site. Wrigley’s Facebook
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`page for SKITTLES has many millions of followers. Wrigley also advertises SKITTLES candy
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`on Twitter, YouTube, and Instagram.
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`23.
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`Tens of thousands of retail stores nationwide sell SKITTLES candy, and Wrigley
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`has distributed clothing and other merchandise, including lip balm, under the SKITTLES marks.
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`24. Wrigley has earned billions of dollars from sales of SKITTLES candy in the United
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`States. It has been the best-selling, non-chocolate candy in the United States for years and every
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`day more than 200 million pieces of SKITTLES candy are manufactured.
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`25. Wrigley’s SKITTLES mark is famous and was so long before the unlawful conduct
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`that forms the basis for this action.
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`26. Wrigley owns common law trademarks for SKITTLES, TASTE THE RAINBOW,
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`and the S logo for candy, clothing, and promotional merchandise. Wrigley also owns the following
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`federal trademark registrations for the SKITTLEZ Marks:
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`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 10 of 22 PageID #:10
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`Trademark
`SKITTLES
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`Reg. No.
`1,221,105
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`Goods
`Reg. Date
`December 21, 1982 Candy
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`2,535,714
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`February 5, 2002
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`Confectionery,
`namely candy
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`2,727,071
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`June 17, 2003
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`Confectionery,
`namely, candy
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`SKITTLES
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`4,175,199
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`July 17, 2012
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`Lip balm
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`4,377,303
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`July 30, 2013
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`Candy
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`4,393,854
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`August 27, 2013
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`Candy
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`5,073,429
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`November 1, 2016 Candy
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`TASTE THE RAINBOW
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`27. Wrigley’s trademark registrations for SKITTLES and the S logo are conclusive
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`evidence of the validity of those marks, Wrigley’s ownership of the marks, and Wrigley’s
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`exclusive right to use the marks in commerce in connection with the goods listed in the
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`registrations. 15 U.S.C. § 1115(b). Wrigley’s trademark registration for TASTE THE RAINBOW
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`is prima facie evidence of the validity of that mark, Wrigley’s ownership of the mark, and
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`Wrigley’s exclusive right to use the mark in commerce in connection with the goods listed in the
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`registration. 15 U.S.C. § 1057(b).
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`28. Wrigley’s federally registered and common law marks for SKITTLES, TASTE
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`THE RAINBOW, and the S logo are inherently distinctive because they do not describe an
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`attribute, quality, or characteristic of the candy or merchandise in connection with which they are
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`used.
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`29.
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` Wrigley’s SKITTLES Marks are widely recognized by the general consuming
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`public in the United States as identifying the source of Wrigley’s goods and were so long before
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`Terphogz and the Doe Defendants began their unlawful conduct.
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`II.
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`Terphogz and Its Infringement and Dilution of Wrigley’s SKITTLES Marks
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`30.
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`Long after Wrigley started to offer candy and merchandise under the SKITTLES
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`Marks, Terphogz began manufacturing, distributing, advertising, and selling cannabis, cannabis-
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`and CBD-related goods, drug paraphernalia, clothing, and merchandise under the ZKITTLEZ
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`Marks. Terphogz advertises, promotes, sells, and distributes goods under the ZKITTLEZ Marks
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`to end users, including end users in Illinois, as well as to distributors and retailers who Terphogz
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`knows in turn advertise, resell, and distribute those goods to end users in Illinois.
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`31.
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`Terphogz applied for nationwide protection in the U.S. Patent and Trademark
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`Office (“USPTO”) for the mark ZKITTLEZ HEMP & Cloud Design in three separate applications:
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`(1) Ser. No. 88/703,408 for smokable hemp flower and trays for rolling hemp cigarettes; (2) Ser.
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`No. 88/703,373 for CBD topical herbal extracts with a delta-9 tetrahydrocannabinol (THC)
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`concentration; and (3) Ser. No. 88/703,451 for clothing. Terphogz’s ZKITTLEZ HEMP & Cloud
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`Design is depicted below:
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`32.
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`Terphogz admitted to the USPTO that Wrigley’s SKITTLES mark “is well known
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`for the colorful candy that [Wrigley] produces” and “is most likely considered famous under
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`Trademark law for candy.”
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`33.
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`Terphogz’s ZKITTLEZ Marks are substantially identical in sight, sound, meaning,
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`and commercial impression to Wrigley’s SKITTLES Marks. Terphogz uses the same distinctive
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`red color featured on packages of SKITTLES candy and the same colors of SKITTLES candy in
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`connection with advertising, selling, and distributing its ZKITTLEZ goods.
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`34.
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`Terphogz advertises and sells cannabis, cannabis- and CBD-related goods, drug
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`paraphernalia, clothing, and merchandise under the ZKITTLEZ Marks directly to end users on its
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`Facebook page, Instagram accounts, and website zkittlez.com.
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`35.
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`Terphogz’s zkittlez.com domain name is confusingly similar to Wrigley’s famous
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`SKITTLES mark for candy.
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`36.
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`Terphogz registered and is using zkittlez.com with a bad faith intent to profit from
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`Wrigley’s famous SKITTLES mark for candy.
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`37.
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`Terphogz’s use of the ZKITTLEZ Marks is likely to cause confusion as to the
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`source and sponsorship of Terphogz’s goods and to impair the distinctiveness of Wrigley’s
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`SKITTLES Marks.
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`38.
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`Terphogz’s use of the ZKITTLEZ Marks has caused Wrigley to lose control over
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`the reputation associated with Wrigley’s SKITTLES Marks.
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`39.
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`Terphogz is using the ZKITTLEZ Marks to trade on the goodwill of Wrigley’s
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`SKITTLES Marks and to deceive consumers, end users, and others as to the source of Terphogz’s
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`goods.
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`III. The Doe Defendants’ Advertising and Resale of Terphogz’s ZKITTLEZ Goods
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`40.
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`On information and belief, the Doe Defendants are retailers located in Illinois who
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`purchase goods from Terphogz which goods and/or their packaging bears the ZKITTLEZ Marks
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`and then advertise and resell those goods to end users, including end users in Illinois, with
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`Terphogz’s knowledge.
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`41.
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`The Doe Defendants’ use of the ZKITTLEZ Marks is likely to cause confusion as
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`to the source of the goods and to impair the distinctiveness of Wrigley’s SKITTLES Marks. The
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`Doe Defendants’ use of the ZKITTLEZ Marks has caused Wrigley to lose control over the
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`reputation associated with Wrigley’s SKITTLES Marks.
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`42.
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`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks is damaging the
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`goodwill symbolized by Wrigley’s SKITTLES Marks and irreparably harming Wrigley and
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`Wrigley has no adequate remedy at law.
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`COUNT 1
`Trademark Infringement, False Designation of Origin, and Unfair Competition
`Under Federal Law
`(15 U.S.C. § 1114(1))
`[Against All Defendants]
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`43. Wrigley re-alleges the allegations in Paragraphs 1 through 42, above.
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`44. Wrigley owns federal registrations for the SKITTLES Marks for candy and other
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`goods.
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`45.
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`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks in connection
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`with the manufacturing, advertising, promotion, marketing, distribution, and sale of cannabis,
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`cannabis- and CBD-related goods, drug paraphernalia, clothing, and merchandise is likely to cause
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`confusion that Wrigley licenses, sponsors, or approves those goods or is affiliated, connected, or
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`otherwise associated with those goods.
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`46.
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`Terphogz advertises, sells, and distributes cannabis, cannabis- and CBD-related
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`goods, drug paraphernalia, clothing, and merchandise which goods and/or packaging bear the
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`ZKITTLEZ Marks to distributors and retailers who Terphogz knows in turn advertise, resell, and
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`distribute those goods to end users, including end users in Illinois.
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`47.
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`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks constitutes
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`direct trademark infringement, false designation of origin, and unfair competition in violation of
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`Section 32 of the Lanham Act, 15 U.S.C. § 1114.
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`48.
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`Terphogz’s use of the ZKITTLEZ Marks also constitutes contributory trademark
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`infringement, contributory false designation of origin, and contributory unfair competition in
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`violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
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`49.
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`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
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`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
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`COUNT 2
`Trademark Infringement, False Designation of Origin, and Unfair Competition
`Under Federal Law
`(15 U.S.C. § 1125(a))
`[Against All Defendants]
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`50. Wrigley re-alleges Paragraphs 1 through 49, above.
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`51. Wrigley owns federally registered and common law SKITTLES Marks for candy
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`and other goods.
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`52.
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`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks in connection
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`with the advertising, promotion, marketing, distribution, and sale of cannabis, cannabis- and CBD-
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`related goods, drug paraphernalia, clothing, and merchandise is likely to cause confusion that
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`Wrigley licenses, sponsors, or approves those goods or is affiliated, connected, or otherwise
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`associated with those goods.
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`53.
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`Terphogz advertises, sells, and distributes cannabis, cannabis- and CBD-related
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`goods, drug paraphernalia, clothing, and merchandise under the ZKITTLEZ Marks to distributors
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`and retailers who Terphogz knows in turn advertise, resell, and distribute the goods to end users,
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`including end users in Illinois.
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`54.
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`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks constitutes
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`direct trademark infringement, false designation of origin, and unfair competition in violation of
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`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`55.
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`Terphogz’s use of the ZKITTLEZ Marks also constitutes contributory trademark
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`infringement, contributory false designation of origin, and contributory unfair competition in
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`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`56.
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`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
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`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
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`COUNT 3
`Trademark Dilution Under Federal Law
`(15 U.S.C. § 1125(c))
`[Against All Defendants]
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`57. Wrigley re-alleges the allegations in Paragraphs 1 through 56, above.
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`58. Wrigley owns a federal registration for SKITTLES for candy, Reg. No. 1,221,105.
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`59. Wrigley’s SKITTLES mark is distinctive, famous, and widely recognized by the
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`general consuming public in the United States as a designation of the source of candy
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`manufactured by Wrigley and was so long before Terphogz and the Doe Defendants began to use
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`the mark ZKITTLEZ.
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`60.
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`Terphogz’s and the Doe Defendants’ ZKITTLEZ mark closely resembles
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`Wrigley’s SKITTLES mark for candy.
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`61.
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`Terphogz’s and the Doe Defendants’ use of the mark ZKITTLEZ in connection
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`with cannabis, cannabis- and CBD-related goods, drug paraphernalia, clothing, and merchandise
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`is likely to cause dilution by blurring by impairing the distinctive quality of Wrigley’s SKITTLES
`
`mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`62.
`
`Terphogz’s and the Doe Defendants’ use of the mark ZKITTLEZ in connection
`
`with cannabis, cannabis- and CBD-related goods, drug paraphernalia, clothing, and merchandise
`
`is likely to cause dilution by tarnishment by harming the reputation of Wrigley’s SKITTLES mark
`
`in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`63.
`
`Terphogz’s use of the ZKITTLEZ mark in connection with cannabis, cannabis- and
`
`CBD-related goods, drug paraphernalia, clothing, and merchandise also constitutes contributory
`
`dilution by blurring and contributory dilution by tarnishment because Terphogz advertises,
`
`distributes, and sells those goods to distributors and retailers who Terphogz knows in turn
`
`advertise, resell, and distribute the goods to end users, including end users in Illinois.
`
`64.
`
`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
`
`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
`
`COUNT 4
`Violation of the Federal Anti-Cybersquatting Consumer Protection Act
`(15 U.S.C. § 1125(d))
`[Against Terphogz]
`
`65. Wrigley re-alleges the allegations in Paragraphs 1 through 64, above.
`
`66. Wrigley owns the mark SKITTLES for candy and other goods.
`
`67. Wrigley’s SKITTLES mark is distinctive and famous and was so before Terphogz
`
`registered, trafficked in, and used the domain zkittlez.com.
`
`-16-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 17 of 22 PageID #:17
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`68.
`
`Terphogz’s domain zkittlez.com is identical and confusingly similar to Wrigley’s
`
`SKITTLES mark.
`
`69.
`
`Terphogz registered, trafficked in, and is using the domain zkittlez.com with a bad
`
`faith intent to profit from Wrigley’s SKITTLES trademark.
`
`70.
`
`Terphogz’s conduct constitutes cybersquatting
`
`in violation of
`
`the Anti-
`
`Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).
`
`71.
`
`Terphogz’s wrongful conduct has caused and is continuing to cause irreparable
`
`harm to Wrigley for which Wrigley has no adequate remedy at law.
`
`COUNT 5
`Illinois Uniform Deceptive Trade Practices Act
`(815 Ill. Comp. Stat. 510/1 et seq.)
`[Against All Defendants]
`
`72. Wrigley re-alleges the allegations in Paragraphs 1 through 71, above.
`
`73. Wrigley owns the SKITTLES Marks for candy and other goods.
`
`74.
`
`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks in connection
`
`with the advertising, promotion, marketing, distribution, and sale of cannabis, cannabis- and CBD-
`
`related goods, drug paraphernalia, clothing, and merchandise is likely to cause confusion that
`
`Wrigley licenses, sponsors, or approves those goods or is affiliated, connected, or otherwise
`
`associated with those goods.
`
`75.
`
`Terphogz advertises, distributes, and sells cannabis, cannabis- and CBD-related
`
`goods, drug paraphernalia, clothing, and merchandise under the ZKITTLEZ Marks to distributors
`
`and retailers, who Terphogz knows in turn advertise, resell, and distribute those goods to end users,
`
`including to end users in Illinois.
`
`-17-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 18 of 22 PageID #:18
`
`76.
`
`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks constitutes
`
`deceptive trade practices in violation of the Illinois Uniform Deceptive Trade Practices Act, 815
`
`Ill. Comp. Stat. 510/1 et seq.
`
`77.
`
`Terphogz’s use of the ZKITTLEZ Marks also constitutes contributory deceptive
`
`trade practices in violation of the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp.
`
`Stat. 510/1 et seq.
`
`78.
`
`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
`
`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
`
` COUNT 6
`Trademark Infringement, False Designation of Origin, and Unfair Competition Under
`Illinois Law
`[Against All Defendants]
`
`79. Wrigley re-alleges the allegations in Paragraphs 1 through 78, above.
`
`80. Wrigley owns the SKITTLES Marks for candy and other goods.
`
`81.
`
`Terphogz’s and the Doe Defendants’ use of the ZKITTLEZ Marks in connection
`
`with the advertising, promotion, marketing, distribution, and sale of cannabis, cannabis- and CBD-
`
`related goods, drug paraphernalia, clothing, and merchandise is likely to cause confusion that
`
`Wrigley licenses, sponsors, or approves those goods or is affiliated, connected, or otherwise
`
`associated with them.
`
`82.
`
`Terphogz advertises, sells, and distributes cannabis, cannabis- and CBD-related
`
`goods, drug paraphernalia, clothing, and merchandise under the ZKITTLEZ Marks to distributors
`
`and retailers who Terphogz knows in turn advertise, resell, and distribute those goods to end users,
`
`including end users in Illinois.
`
`-18-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 19 of 22 PageID #:19
`
`83.
`
`Terphogz and the Doe Defendants’ use of the ZKITTLEZ Marks constitutes direct
`
`trademark infringement, false designation of origin, and unfair competition in violation of Illinois
`
`common law.
`
`84.
`
`Terphogz’s use of the ZKITTLEZ Marks also constitutes contributory trademark
`
`infringement, contributory false designation of origin, and contributory unfair competition in
`
`violation of Illinois common law.
`
`85.
`
`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
`
`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
`
`COUNT 7
`Illinois Anti-Dilution Act
`(765 Ill. Comp. Stat. 1036/65)
`[Against All Defendants]
`
`86. Wrigley re-alleges the allegations in Paragraphs 1 through 85, above.
`
`87. Wrigley owns common law and federally registered marks for SKITTLES for
`
`candy, Reg. No. 1,221,105.
`
`88. Wrigley’s SKITTLES mark is distinctive, famous, and widely recognized by the
`
`general consuming public in the United States as a designation of source of candy manufactured
`
`by Wrigley and was so before Terphogz and the Doe Defendants commenced use of the mark
`
`ZKITTLEZ.
`
`89.
`
`Terphogz’s and the Doe Defendants’ ZKITTLEZ marks closely resemble
`
`Wrigley’s SKITTLES marks.
`
`90.
`
`Terphogz’s and the Doe Defendants’ use of ZKITTLEZ marks in connection with
`
`cannabis, cannabis- and CBD-related goods, drug paraphernalia, clothing, and merchandise is
`
`likely to cause dilution by blurring by impairing the distinctive quality of Wrigley’s SKITTLES
`
`marks in violation of the Illinois Anti-Dilution Act, 765 Ill. Comp. Stat. 1036/65.
`
`-19-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 20 of 22 PageID #:20
`
`91.
`
`Terphogz’s and the Doe Defendants’ use of ZKITTLEZ marks in connection with
`
`cannabis, cannabis- and CBD-related goods, drug paraphernalia, clothing, and merchandise is
`
`likely to cause dilution by tarnishment by harming the reputation of Wrigley’s famous SKITTLES
`
`marks in violation of the Illinois Anti-Dilution Act, 765 Ill. Comp. Stat. 1036/65.
`
`92.
`
`Terphogz’s use of ZKITTLEZ marks in connection with cannabis, cannabis- and
`
`CBD-related goods, drug paraphernalia, clothing, and merchandise also constitutes contributory
`
`dilution by blurring and contributory dilution by tarnishment.
`
`93.
`
`Terphogz’s and the Doe Defendants’ wrongful conduct has caused and is
`
`continuing to cause irreparable harm to Wrigley for which Wrigley has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Wrigley respectfully asks the Court to:
`
`a.
`
`b.
`
`Enter judgment for Wrigley on each and every claim alleged in this Complaint;
`
`Enter a permanent injunction enjoining Terphogz and the Doe Defendants and each
`
`of their agents, servants, employees, attorneys, officers, and all others in privity and acting in
`
`concert with them from using or causing others to use the ZKITTLEZ Marks, including
`
`ZKITTLEZ, TAZTETHEZTRAINBRO, ZKITTLEZ HEMP, ZKITTLEZ HEMP & Cloud
`
`Design, and a Z logo alone or in combination with any other word(s), term(s), designation(s),
`
`mark(s), or design(s), see 15 U.S.C. § 1116 and 15 U.S.C. § 1125(c)(1);
`
`c.
`
`Order Terphogz and the Doe Defendants to deliver up for destruction all products,
`
`labels, signs, prints, packages, wrappers, receptacles, and advertisements in their possession
`
`bearing the ZKITTLEZ Marks, alone or in combination with any other word(s), term(s),
`
`designation(s), mark(s), or design(s), see 15 U.S.C. § 1118;
`
`-20-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 21 of 22 PageID #:21
`
`d.
`
`Order Terphogz to transfer the domain name zkittlez.com and all similar domain
`
`names to Wrigley and to permanently disable all social media accounts, including but not limited
`
`to Facebook, Twitter, and Instagram, operating under the names ZKITTLEZ, ZKITTLEZ HEMP,
`
`and all similar names, see 15 U.S.C. § 1125(d)(1)(C);
`
`e.
`
`Order Terphogz to abandon with prejudice U.S. Trademark Application Serial Nos.
`
`88/703,408, 88/703,373, and 88/703,451 for the mark ZKITTLEZ HEMP & Cloud Design;
`
`f.
`
`Require Terphogz and the Doe Defendants to each file with the Court and serve on
`
`Wrigley within thirty (30) days after entry of an injunction and destruction order a report in writing
`
`under oath describing how they have complied with such order;
`
`g.
`
`Award reasonable attorney’s fees and costs to Wrigley due to the exceptional nature
`
`of this case under 15 U.S.C. § 1117(a) and 815 Ill. Comp. Stat. 510/3; and
`
`h.
`
`Grant such other and further relief as the Court may deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Wrigley hereby demands a trial by jury on all claims so triable.
`
`
`
`-21-
`
`
`
`Case: 1:21-cv-02357 Document #: 1 Filed: 05/03/21 Page 22 of 22 PageID #:22
`
`
`Dated: May 3, 2021
`
`By: /s/ Joseph T. Kucala, Jr.
`Joseph T. Kucala, Jr. (Reg. No. 6275312)
`KUCALA LAW
`P.O. Box 547
`New Lenox, IL 60451
`Phone: (630) 453-8380
`courts@kucalalaw.com
`
`John J. Dabney (pro hac vice to be filed)
`Mary D. Hallerman (pro hac vice to be
`filed)
`SNELL & WILMER L.L.P.
`2001 K Street N.W.
`Suite 425 North
`Washington, D.C. 20006
`Phone: (202) 908-4261
`jdabney@swlaw.com;
` mhallerman@swlaw.com
`
`Attorneys for Plaintiff Wm. Wrigley Jr.
`Company
`
`
`
`
`-22-
`
`