On Monday, JUUL Labs Inc. (JLI) brought a lawsuit against Crystals Up In Smoke Inc. in the Southern District Court of Ohio. The plaintiff claimed that the company and the retail location that they own and operate have been infringing its patented marks willfully and knowingly.
Reportedly, JLI was made aware of this alleged infringement after a representative made an in-person purchase of a counterfeit item for sale at the Crystal’s Up In Smoke retail business in July 2020. The product purchased in the store was more or less identical to the product manufactured and sold by JLI, the complaint said.
After discovering this, the plaintiff sent correspondence to the defendant notifying them of their infringement and counterfeit and asking them to cease and desist. The correspondence requested that the defendant make contact and discuss pre-litigation resolution of the legal issues arising from the sale, however, no contact was ever made with the plaintiff’s counsel.
In response to this lack of communication, JLI had a representative make an in-person purchase of the goods for sale at the retail location in late December. They found that this product, like the first one, was counterfeit that was not manufactured or approved by JLI. At this point the plaintiff strongly believed that the defendant was willfully and knowingly reproducing their copyrighted marks in order to make a product that took advantage of the brand image they said they had worked hard to build and maintain.
The plaintiff stated that the defendant has not, at any point in time, been authorized by JLI to produce, manufacture, distribute, market, offer for sale, or sell merchandise bearing the JUUL Marks, or any variations thereof. JLI claimed that it fears the defendants’ counterfeit sales are likely to deceive, confuse, and mislead purchasers into believing that the products are authorized by JLI. Any defects in this product may be mistakenly attributed to JLI which would do irreparable harm to their brand image and their goodwill with purchasers, the filing explained. The plaintiff also claimed that this infringement has caused lost sales and reduced profits for JLI.
Based on these events, the plaintiff brought allegations of trademark infringement, false designation of origin, unfair competition, and deceptive acts and trade practices against the defendant. The plaintiff requested compensation for defendants profits and any other damages that these violations may have incurred upon JLI. They also asked the court to award $2,000,000 for each of the counterfeited trademarks willfully utilized by the defendant and for an injunction that prohibits the defendant from engaging or continuing to engage in the infringing, unlawful, unfair, or fraudulent business acts or practices described.
The plaintiff is represented by Dickinson Wright.