In a trademark complaint filed on Monday in the Eastern District of Louisiana, Juul Labs, Inc. claimed that its products are “targets” for others who want to “take a ‘free ride’ on the commercial success of the JUUL brand.”
The plaintiff alleged that Smoke Sum LLC used Juul trademarks to help sell its electronic nicotine delivery system (ENDS), which are similar to the ENDS developed by Juul. Juul said the defendants, and other “wrongdoers have counterfeited JUUL Products by illegally manufacturing, selling, and distributing fake, copied, and non-genuine versions of JUUL Products and related packaging.”
Smoke Sum is reportedly a Louisiana company. The plaintiff claimed that Smoke Sum infringed its Juul trademark and filed counts of trademark infringement, false designation of origin, and unfair competition against the defendant. Juul argued that it developed its trademarks, along with the goodwill associated with them, and its ENDS system. Juul explained that it put “substantial time, money, and effort” into developing its brand and consumer awareness. The defendant was accused of using these efforts by Juul to increase its revenue by selling counterfeit goods.
Juul purported that no third parties have been authorized by the plaintiff to sell ENDS products with the JUUL trademarks, but that the defendant’s products “bear counterfeit and confusingly similar imitations of the JUUL Marks” which are likely to cause confusion among consumers who may think the products are produced by JUUL.
The plaintiff reportedly asked Smoke Sum to stop its actions in a cease-and-desist letter sent in August of 2019. Smoke Sum reportedly did contact the counsel for Juul, but the parties did not reach a resolution. Juul asked the court for an award of damages and an award from the defendants profits, or statutory damages of $2 million for each counterfeited trademark. The plaintiff also asked for an injunction against Smoke Sum requiring it to stop its unlawful business practices and an order for seizure of any counterfeited goods in the defendant’s possession.
Juul is represented by Baker Donelson Bearman Caldwell & Berkowitz, PC.