Given that STONEY PATCH labels “do not have a website or provide any contact information online,” Mondelēz has spent months trying to determine who to sue in order to get the offending candies off the market, sending multiple demand letters to third-party sellers asking that they identify their source. (A lawsuit filed last year named Stoney Patch and 'Does 1-10' - as in John Does - as the defendants.)
It recently secured a court order compelling Facebook and Google to release information associated with Instagram and Gmail accounts of an unnamed company selling the THC-infused gummies, although it has not confirmed that this was how it identified the named defendants in the lawsuit.
“The Packaging Defendants [Green King LA Inc, Dr Vape Group LLC, and Vape Hub – all based in Boyd Street, Los Angeles] are selling empty packaging that adopts the confusingly similar brand name STONEY PATCH and that copies the look of the packaging that has long been associated with MCI’s SOUR PATCH candies,” argues Mondelēz Canada in a January 21 amended complaint.
“The packaging is sold to unregulated and anonymous third parties who use the bags to sell their own cannabis gummies.
“The Dispensary Defendant [4TwentyHub, a delivery-only dispensary based in Fontana, CA] is selling cannabis products in Infringing Packaging to consumers. It is not known if the Dispensary Defendant’s products are sold in Infringing Packaging purchased from the Packaging Defendants or from other third parties.”
None of the defendants identify the actual source or manufacturer of the gummies, it adds, noting that there may be “numerous unaffiliated manufacturers” who sell product in the packaging at issue.
Public health danger
While imitation may be the sincerest form of flattery, ripping off a beloved children’s candy brand in order to sell gummies that get you high is no laughing matter, says Mondeléz, which warns of a growing trend among makers of THC-infused edibles “to market their products by copying and misappropriating the colors, flavors, names and packaging of popular snacks and candies.
“That juveniles are attracted to the type of packaging being used by the Defendants already has been shown. For example, in September 2019, nine children between the ages of ten and eleven were hospitalized after eating THC-infused gummies in the STONEY PATCH packaging. Such an incident exemplifies the public health danger presented by Defendants’ ongoing, willful conduct and the harm that Defendants’ conduct is causing to the reputation of MCI.”
"In complete disregard of California’s law, of concerns for public safety, and of MCI’s rights, Defendants are intentionally facilitating the sale of THC gummy products using marks and packaging that copy MCI’s long-established SOUR PATCH brand of gummy candies," adds the company."
Letters to CA Dept of Health and Bureau of Cannabis Control unanswered
While California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act expressly prohibits the use of packaging and labeling designed to appeal to children or which could be easily confused with commercially sold candy or foods that do not contain cannabis, Mondelēz Canada claims that the California Department of Health has “taken no action against 4TwentyHub,” despite being made aware that it was selling STONEY PATCH products.
Mondelēz Canada claims it has also sent “multiple letters” to the Chief of the Bureau of Cannabis Control, cc-ing in the Attorney General of California, “asserting that the Bureau’s lack of enforcement against dispensaries selling illegal products is contributing to a growing public health concern,” but has received no response.
The company is seeking damages and injunctive relief for willful trademark infringement, trademark dilution, and unfair competition, and demanding the destruction of infringing goods.
Attorney: ‘The children's toy and arts and crafts industries are notorious for these types of IP issues’
Speaking to FoodNavigator-USA last year, Kevin Bell, a principal at law firm Porzio, Bromberg & Newman, said this a case of a “blatant misappropriation of intellectual property... STONEY PATCH went the whole nine yards to knock off Mondeléz's branded products. My guess is whoever did the artwork had a bag of Sour Patch Kids right in front of them.”
He added: "The children's toy and arts and crafts industries are notorious for these types of IP issues. It has been prevalent in the conventional food and beverage industry as well. We are now seeing an increase in sports nutrition markets as brand awareness and the use of branded ingredients becomes more critical to a company's continued success."
Mondelēz International: We have reported the misuse to various agencies in California
Mondelēz International told us: “The misappropriation of our SOUR PATCH name and our packaging to sell THC-containing products is particularly troubling as the use of our designs may make the products more attractive and appealing to children. While we have reported the misuse to various agencies in California we feel strongly about taking action to defend the SOUR PATCH brand and to prevent its use by third parties to sell unregulated products.”
It noted: “This is not a food safety issue and does not impact any SOUR PATCH products sold by Mondelēz International. Our products are safe to consume.”
FoodNavigator-USA has emailed 4TwentyHub and will update this article should it provide a comment. Vape Hub’s contact phone number is not taking messages, while an email contact form on its website does not work. We have been unable to find contact details for the other two defendants.
*The case is Mondeléz Canada Inc (MCI) v Stoney Patch, Green King LA Inc, Dr Vape Group LLC, Vape Hub LLC, 4TwentyHub, and Does 1-10, 2:19-cv-06245 filed in the US district court, central district of California, western division.