Juicy Fruit is one of America’s favorite brands of gum because of its unique, long lasting sweet flavor. Unfortunately, other companies are trying to steal that one-of-a-kind flavor to use in their own products.
Wrigley has recently sued Dreamcore Enterprise, a company selling liquids for electronic cigarettes, over the use of the ‘Juicy Fruit’ trademark on its e-liquid for e-cigarettes. The complaint was filed at the U.S. District Court for the Northern District of Illinois last week after the defendants failed to reply to two cease-and-desist letters from Wrigley. Wrigley is suing Dreamcore for federal trademark infringement, federal trademark dilution, federal unfair competition, violation of Illinois deceptive trade practices act, and common law trademark infringement.
Jessica Stone Levy, partner at the law firm Sherman & Howard, recently sat down with Inside Counsel to discuss the case. She has over 25 years of experience in intellectual property. As counsel, she focuses on representing clients ranging from startups to Fortune 100 companies in connection with U.S. and international trademark clearance, prosecution, portfolio management and counseling.
“I am not at all surprised that Wrigley has brought this action,” she said. “The Juicy Fruit mark is undoubtedly a core asset of Wrigley’s trademark portfolio, and Wrigley has to do whatever is necessary to prevent not only confusion as to its association or connection with e-cigarettes, but also to prevent harm to the public insofar as the use of its Juicy Fruit trademark on e-cigarettes communicates to the public that e-cigarettes are as harmless as chewing gum.”
According to Levy, this is Trademark Enforcement 101. “Wrigley’s wants to ensure that the public is not confused into believing that it has somehow authorized, sponsored, licensed, or otherwise given its blessing to this use of the mark,” she explained. “Moreover, it’s concerned that the use of its family-friendly and familiar mark in connection with products that may be harmful will entice not only adults but also children to the infringing product, which would therefore tarnish the goodwill and reputation of its Juicy Fruit trademark.”
Today, the Juicy Fruit mark is undoubtedly a core asset of Wrigley’s trademark portfolio. Juicy Fruit is one of the crown jewels of Wrigley’s trademark portfolio. In fact, the mark was registered in 1915, and has been in use since 1894, so it is famous and it’s no surprise that Wrigley’s does not want it associated with e-cigarettes.
How can Wrigley prevent its connection with e-cigarettes, and prevent harm to the public?
“By getting an injunction against Dreamcore that forbids Dreamcore from using Juicy Fruit on or in connection with e-liquid for e-cigarettes or any other e-cigarette related product, and presumably destroying existing product as well,” said Levy. “While Wrigley has asked for monetary damages, I suspect the most important thing is that Dreamcore’s product be removed from the market immediately.”