Juul Labs Inc. (JLI) filed a complaint in the Northern District of Georgia last week against Shah & Family Inc., which operates a Chevron Food Mart and a retail business in Georgia. The company alleged that Shah and Family counterfeited Juul products, specifically JLI’s electronic nicotine delivery systems (ENDS).
The complaint accused the defendants of “illegally manufacturing, selling, and distributing fake, copied, and non-genuine versions of JUUL Products and related packaging.” Shah & Family was accused of breaching federal trademark laws and using unfair business practices under those trademark laws.
JLI claimed that its products “have become targets” for various businesses that benefit off of its success by copying its products and branding, which JLI claimed it spent effort and resources to build. The plaintiff has filed multiple other complaints alleging that other companies have taken advantage of its ENDS products and sought to profit off of the marketing efforts and inventions of JLI.
The complaint cited three separate trademarks registered by JLI as exemples, citing that the defendant has sold products from another source, which used JLI’s trademarks. The plaintiff explained that the JUUL System includes a device with a rechargeable battery, a pod or cartridge and a receptacle for it, a heating chamber, and control circuitry.
The plaintiff further alleged that it has had “substantial commercial success” and has created a well-known product through extensive effort and use of its marks. It claimed that the counterfeit goods sold by the defendant are similar and could be confused with Juul products hurting the goodwill it has developed with consumers. Reportedly, JLI has not authorized any third party to produce its ENDS system.
“Defendant’s counterfeit sales outlined above are likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the products are authorized by JLI. Purchasers and prospective purchasers using or simply viewing Defendant’s Counterfeit Goods and who perceive a defect, lack of quality, or any other irregularity are likely to mistakenly attribute the issue to JLI, to the detriment of JLI’s business and the JUUL brand,” the complaint alleged.
Juul related that it had a representative purchase one of the products from the Chevron Food Mart, and confirmed that the product was counterfeited in January, leading it to send a cease-and-desist letter. The defendant, however, did not contact Juul’s counsel as requested.
Through this legal action, Jull is seeking an award of Shah & Family’s profits and damages for trademark infringement and unfair competition, along with other damages and attorney’s fees. It also asked the court for an injunction stopping the defendant from continuing to sell the infringing products and an accounting off the defendants’ “ill-gotten gains obtained from the illegal transactions.”
JLI is represented by Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.