Law Street Media

Juul Takes the Offensive in Two Trademark Cases

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On Wednesday, JUUL Labs, Inc. (JLI), filed trademark complaints in the District of Connecticut and District of Nevada against entities “who wish to take a ‘free ride’ on the commercial success of the JUUL brand that JLI has spent considerable effort and resources to build.”  Specifically, the complaints allege the defendants in each case wrongdoers have counterfeited JUUL Products by illegally manufacturing, selling, and distributing fake, copied, and non-genuine versions of JUUL Products and related packaging bearing JUUL trademarks.

The case in the District of Connecticut is against Farmington Xpress Mart LLC.  The defendant operates a Shell Food Mart.  JLI alleged that the defendant, beginning on a date that is currently unknown to JLI, and without the consent of JLI and within the United States, has offered to sell and sold JUUL Products which, as stated on the packaging of the products themselves, are only authorized for sale in particular countries outside the United States, referred to in the complaint as Grey Market Goods. Because the goods are labeled and packaged to comply with the regulations of the authorized foreign marketplaces, the labeling and packaging of the items are not in compliance with the regulations of the Food and Drug Administration, the complaint said.  As a result, JLI sent a cease-and-desist letter on November 13, 2019, in which JLI demanded the defendant cease the activities at issue.  Additionally, JLI requested the parties discuss a pre-litigation resolution.

JLI listed six counts total.  Four of the counts fall under federal trademark infringement laws, while the remaining two are a Connecticut trademark law and common law unfair competition claim. 

According to the complaint, a representative of JLI on March 6, made an in-person purchase of a counterfeit good for sale at the Shell Food Mart Business operated by the defendant.  JLI subsequently inspected the product purchased and confirmed that the purchased product is in fact counterfeit.  JLI stated in the complaint that it never gave permission or any authorization for the defendant to produce, manufacture, distribute, market, offer for sale, and and/or sell merchandise bearing the JUUL Marks or any variations of them. 

JLI is seeking an award for profits and damages for trademark infringement and unfair competition under federal law, as well as statutory damages of $2,000,000.00 for each of the counterfeited trademarks willfully utilized by the defendant.  Finally, JLI requested the court to grant an injunction prohibiting the defendant from continuing this allegedly fraudulent activity and proceed to destroy all current products at issue.

The claims in Nevada case closely parallel this Connecticut suit.  JLI is represented by McCormick, Paulding & Huber in the District of Connecticut case, and Clement and Ho, APLC, and Dickinson Wright in the District of Nevada case.

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