ESTTA Tracking number:
`
`ESTTA1325651
`
`Filing date:
`
`11/30/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91287368
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
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`Filer's email
`
`Signature
`
`Date
`
`Attachments
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`Defendant
`VPR Brands LP
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`JOEL B. ROTHMAN
`SRIPLAW, PA
`21301 POWERLINE ROAD, SUITE 100
`BOCA RATON, FL 33433
`UNITED STATES
`Primary email: Joel.Rothman@sriplaw.com
`561-404-4350
`
`Motion to Suspend for Civil Action
`
`Joel B. Rothman
`
`Trademarks@SRIPLAW.com, Joel.Rothman@SRIPLAW.com,
`Alissa.Shapiro@SRIPLAW.com
`
`/JOEL B. ROTHMAN/
`
`11/30/2023
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`2023.11.30 Motion to Suspend Opposition Proceeding.pdf(149533 bytes )
`Exhibit 1_DE 0083. ORDER GRANTING PLAINTIFFS MOTION FOR PRELIM-
`INARY I NJUNCTION [ECF No. 5] AND DENYING DEFENDANTS MOT
`(2023.02.23).pdf(451168 bytes )
`Exhibit 2_DE 0001. Complaint Against iMiracle HK Limited and Heaven G
`ifts.pdf(1809671 bytes )
`Exhibit 3_DE 0149. Partial ANSWER and Affirmative Defenses to Complai nt
`with Jury Demand and COUNTERCLAIM against VPR (2023.04.26).pdf(506768
`bytes )
`Exhibit 4_DE 0019. ANSWER to Third Party Complaint Third Party CROSSC
`LAIM against VPR Brands LP by IMIRACLE (HK). LT (2023.06.07).pdf(576108
`bytes )
`Exhibit 5_DE 0029. ANSWER and Affirmative Defenses to Complaint with Jury
`Demand COUNTERCLAIM against VPR Brands LP(2023.06.02).pdf(2112305
`bytes )
`Exhibit 6_DE 0080. MOTION TO DISMISS [61] Amended ComplaintAmended
`No tice of Removal FOR FAILURE TO STATE A CLAIM
`(2023.02.21).pdf(410716 bytes )
`
`

`

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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`OPPOSITION PROCEEDING NO.: 91287368
`APPLICATION NO.: 97834858
`MARK: XLF
`
`
`
`IMIRACLE (HK) LIMITED,
`
`
`Opposer,
`
`
`v.
`
`VPR BRANDS, LP,
`
`
`Applicant.
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`
`
`
`
`
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`MOTION TO SUSPEND OPPOSITION PROCEEDING
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`Applicant VPR BRANDS, LP (“VPR”), by and through its undersigned counsel, and for
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`its Motion to Suspend the Opposition Proceeding started by IMIRACLE (HK) LIMITED
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`(“iMiracle HK”) in regards to the XLF trademark application at Serial No.: 97834858 (the “XLF
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`Mark”), that iMiracle HK considers is highly similar with its ELFBAR marks and the ELF mark
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`whose ownership and exclusive rights iMiracle HK attempts to claim for itself, in obvious
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`infringement of VPR’s trademark rights on the ELF mark at Registration No.: 5486616 (the
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`“ELF Mark”), states as follows:
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`1.
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`This proceeding is related to several other ongoing proceedings that the Board
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`previously suspended. Those are Cancellation No. 92082460, Imiracle (HK) Limited v. VPR
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`Brands LP; Cancellation No. 92081685, Ecto World LLLC d/b/a Demand Vape v. VPR Brands
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`LP. Both Cancellation No. 92081685 and Cancellation No. 92082460 were suspended pending
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`the trademark and patent infringement action filed by Applicant in the Southern District of
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`Florida captioned VPR Brands, LP v. Shenzhen Weiboli Technology Co. Ltd. (ELF BAR), Ylsn
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`Distribution LLC, Safa Goods LLC, UNISHOW (U.S.A.), INC., SV3 LLC, Kingdom Vapor Inc.,
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`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
`
`SRIPLAW
`
`

`

`
`
`Ecto World LLC, iMiracle (HK) Limited, Heaven Gifts International Limited and Shenzhen
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`iMiracle Technology Co. Ltd., Case No. 22-cv-81576- CANNON/Reinhart (the Weiboli Case),
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`which was consolidated with related case VPR Brands, LP v. iMiracle HK Limited and Heaven
`
`Gifts International Limited, in the Southern District of Florida, Case No.: 9:22-cv-81977-
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`CANNON/Reinhart (filed on December 27, 2022) and VPR Brands, LP v. Shenzhen iMiracle
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`Technology Co., Ltd., YLSN Distribution LLC, Ecto World LLC, Safa Goods, LLC, D&A
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`Distribution LLC, Unishow (U.S.A.), Inc., SV3 LLC, and Kingdom Vapor Inc., Case No. 9:22-cv-
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`81943 (filed on December 16, 2022) [See Case No. 22-cv-81576, ECF No. 166].
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`2.
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`Opposer iMiracle HK is a Chinese seller or distributor of vaporizers and e-
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`cigarettes, affiliate of the Chinese manufacturer of the same products, SHENZHEN IMIRACLE
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`TECHNOLOGY CO. LTD (“Shenzhen iMiracle”). iMiracle HK and Shenzhen iMiracle are both
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`affiliates of the Chinese company SHENZHEN WEIBOLI TECHNOLOGY CO. LTD.
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`(“Weiboli”), which is a manufacturer of vaporizers and e-cigarettes as well.
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`3.
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`Opposer distributes a wide variety of brands of electronic cigarette and accessory
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`products in the United States.
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`4.
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`On February 23, 2023, Judge Cannon in the Weiboli Case pending in the Southern
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`District of Florida entered an Order Granting Plaintiff’s Motion for Preliminary Injunction and
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`Denying Defendants’ Motion to Reopen the Evidentiary Hearing (ECF 83). A copy of the
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`Court’s order is attached hereto as Exhibit 1.
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`5.
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`The defendants in the consolidated Weiboli Case made the same arguments it
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`makes in the instant Notice of Opposition in its opposition to the motion for preliminary
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`injunction in the case pending in the Southern District of Florida. (See Exhibit 1 at pp. 6-12).
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`2
`SRIPLAW
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`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`
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`6.
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`There are currently at least four other cases pending in the Southern District of
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`Florida where the named defendants make products that infringe upon Applicant VPR Brands,
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`LP’s ELF Mark. The actions are:
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`a. VPR Brands, LP v. Shenzhen Sigelei Technology Co. Ltd. dba ELF Tank, GD
`Sigelei Electronic Tech Co. Ltd. dba ELF TANK, ProVape Enterprise, Inc.,
`Waterfall Holding LLC dba Vape Wholesale USA, Limitless Accessories, Inc.
`dba Valgous dba alternativepods.com, LA Vapor Inc., World Wholesale Inc., G
`& A Wholesale Distributors Inc. dba nyvapeplus.com, and Kloud King
`Distributors Inc. dba kksmoke.com, in the Southern District of Florida, Case
`No. 9:23-cv-80291 (filed on February 24, 2023).
`
`b. VPR Brands, LP v. iMiracle HK Limited and Heaven Gifts International
`Limited, in the Southern District of Florida, Case No.: 9:22-cv-81977 (filed on
`December 27, 2022).
`
`c. VPR Brands, LP v. Shenzhen iMiracle Technology Co., Ltd., YLSN
`Distribution LLC, Ecto World LLC, Safa Goods, LLC, D&A Distribution LLC,
`Unishow (U.S.A.), Inc., SV3 LLC, and Kingdom Vapor Inc., in the Southern
`District of Florida, Case No. 9:22-cv-81943 (filed on December 16, 2022)
`
`d. VPR Brands, LP Vape Loft Abercorn, LLC et. al., in the Southern District of
`Georgia, Case No.: 4:23-cv-00115 (filed on May, 2023).
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`7.
`
`In the cases listed above, iMiracle and its co-defendants have raised the same
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`issues that Opposer raises in its Notice of Opposition.
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`8.
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`In the cases listed above where defendants have filed responses to the complaint,
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`Opposer’s interests are aligned with the defendants’ interests because Opposer also distributes
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`the products sold by defendants in those cases.
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`9.
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`Consideration of the Notice of Opposition would potentially cause conflicting
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`results between the actions pending in district court and this proceeding.
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`MEMORANDUM OF LAW
`
`The U.S. Trademark Law Rules of Practice provide that “[w]henever it shall come to the
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`attention of the Trademark Trial and Appeal Board that a civil action. . . may have a bearing on a
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`3
`SRIPLAW
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`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`
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`pending case, proceedings before the Board may be suspended until termination of the civil
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`action . . . A civil action or proceeding is not considered to have been terminated until an order or
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`ruling that ends litigation has been rendered and noticed and the time for any appeal or other
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`further review has expired with no further review sought.” 37 C.F.R. § 2.117(a); TBMP Rule
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`510.02(a) (“Whenever it comes to the attention of the Board that a party or parties to a case
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`pending before it are involved in a civil action that may have a bearing on the Board case,
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`proceedings before the Board may be suspended until final determination of the civil action.”)
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`Regardless of whether the civil action involves other matters or issues, the Board’s policy
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`is to suspend upon request pending the outcome of the other proceeding seeks suspension
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`because of a civil action pending between the parties in a federal district court. TBMP Rule
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`510.02(a). Even though a civil action may involve broader issues beyond right to registration,
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`judicial economy is usually served by suspension. TBMP Rule 510.02(a), Note 2.
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`Unless there are unusual circumstances, the Board will suspend proceedings. Id.
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`Suspension of a Board proceeding pending the final determination of another proceeding is
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`within the discretion of the Board. Id. When a motion to suspend pending the outcome of a civil
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`action is filed, the Board normally requires that a copy of the operative pleadings from the civil
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`action be submitted, so that the Board can ascertain whether the final determination of the civil
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`action may have a bearing on the issues before the Board. Id. Note 15.
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`Attached hereto as Exhibits are the following:
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`Exhibit 2 Complaint with Exhibits filed against iMiracle in Case No.: 9:22-
`cv-81977 prior to consolidation (ECF No. 1).
`
`Exhibit 3
`
`iMiracle’s Partial Answer, Affirmative Defenses and
`Counterclaims in Case No. 9:22-cv-81576 (ECF No. 149), after
`the case was consolidated, raising the same issues raised in the
`Notice of Opposition here.
`
`4
`SRIPLAW
`
`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`
`
`
`
`Exhibit 4
`
`iMiracle’s Answer to Vape Loft’s Third-Party Complaint and
`Third-Party Crossclaims Against VPR Brands LP in Case No
`4:23-cv-00115 (ECF No. 19).
`
`Exhibit 5 GD Sigelei’s Answer and Counterclaim in Case No. 9:23-cv-
`90291 (ECF No. 29).
`
`Exhibit 6 Defendants’ Consolidated Motion to Dismiss or, Alternatively,
`For Summary Judgment in Case No. 9:22-cv-81576 (ECF No. 80)
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`Issue has been joined in the complaint. Here, the answer and counterclaims filed by
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`iMiracle in district court raises the same issues as the instant notice, namely likelihood of
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`confusion, lack of priority, and lack of bona fide use due to unlawful use doctrine. (See Exhibit
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`2-4). iMiracle’s co-defendants also filed a consolidated motion to dismiss or, alternatively for
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`summary judgment raising the identical issue that VPR’s complaint must be dismissed alleging
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`VPR’s use of the ELF Mark has been unlawful. (See Exhibit 6). Furthermore, iMiracle’s alleged
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`predecessor-in-interest, GD Sigelei Electronic Technology Inc., filed counterclaims against VPR
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`seeking cancellation of the ELF Mark on the exact issue based on a lack of priority in the ELF
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`Mark. (See Exhibit 5).
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`Suspension serves the purpose of the rule, namely, to prevent inconsistent decisions
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`between the TTAB and the district courts. Opposer iMiracle is attempting to obtain a favorable
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`decision here on the same issues raised with the district court. Consideration of this Notice of
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`Opposition would potentially cause conflicting results which should be avoided.
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`Therefore, the opposition proceeding should be suspended.
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`Dated: November 30, 2023
`
`Respectfully submitted,
`
`/s/ Joel B. Rothman
`JOEL B. ROTHMAN
`Florida Bar Number: 98220
`joel.rothman@sriplaw.com
`trademarks@sriplaw.com
`
`
`
`5
`SRIPLAW
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`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`
`
`
`
`
`SRIPLAW, P.A.
`21301 Powerline Road
`Suite 100
`Boca Raton, FL 33433
`561.404.4350 – Telephone
`561.404.4353 – Facsimile
`
`Counsel for Applicant, VPR Brands, LP
`
`
`
`6
`SRIPLAW
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`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion to Suspend
`Opposition Proceeding has been served on Opposer’s counsel, Judd Lauter with Cooley LLP, by
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`forwarding said copy on November 30, 2023, via email to: trademarks@cooley.com,
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`jlauter@cooley.com, and bhughes@cooley.com.
`
`
`
`
`
`/s/ Joel B. Rothman
`JOEL B. ROTHMAN
`Florida Bar Number: 98220
`joel.rothman@sriplaw.com
`trademarks@sriplaw.com
`
`SRIPLAW, P.A.
`21301 Powerline Road
`Suite 100
`Boca Raton, FL 33433
`561.404.4350 – Telephone
`561.404.4353 – Facsimile
`
`Counsel for Applicant, VPR Brands LP
`
`
`
`
`
`
`
`7
`SRIPLAW
`
`CALIFORNIA ◆ GEORGIA ◆ FLORIDA ◆ TENNESSEE ◆ NEW YORK
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`

`

`Exhibit 1
`Exhibit 1
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`

`

`Case 9:22-cv-81576-AMC Document 83 Entered on FLSD Docket 02/23/2023 Page 1 of 32
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`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`CASE NO. 22-81576-CIV-CANNON
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`VPR BRANDS, LP,
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`
`
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`Plaintiff,
`v.
`
`SHENZHEN WEIBOLI TECHNOLOGY
`CO. LTD. et al.,
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`Defendants.
`
`_______________________________/
`
`ORDER GRANTING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION
`[ECF No. 5] AND DENYING DEFENDANTS’ MOTION TO REOPEN [ECF No. 76]
`
`THIS CAUSE comes before the Court upon Plaintiff’s Motion for Preliminary Injunction
`
`
`
`(the “Motion”) [ECF No. 5], filed on October 14, 2022. The Motion asks the Court to enter a
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`preliminary injunction enjoining Defendants from using Plaintiff’s ELF trademark or any
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`substantially similar imitation design; selling any products using the ELF trademark; and
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`advertising or marketing any products using the ELF trademark [ECF No. 5 p. 18]. The Court
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`held a hearing on the Motion on November 18, 2022, and December 1, 2022 [ECF Nos. 39, 46,
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`52, 60]. At the hearings, the Court admitted evidence and heard witness testimony [ECF Nos. 46,
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`54, 55, 56, 57, 58, 60]. The Court has reviewed the Motion, Defendants’ Response in Opposition
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`[ECF No. 32], Plaintiff’s Reply [ECF No. 34], Plaintiff’s Proposed Findings of Fact and
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`Conclusions of Law [ECF No. 66], Defendants’ Proposed Findings of Fact and Conclusions of
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`Law [ECF No. 65], and the full record. For the reasons set forth below, the Motion [ECF No. 5]
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`is GRANTED, and Defendants’ Motion to Reopen the Evidentiary Hearing [ECF No. 76] is
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`DENIED.
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`
`
`
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`

`

`Case 9:22-cv-81576-AMC Document 83 Entered on FLSD Docket 02/23/2023 Page 2 of 32
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`
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` CASE NO. 22-81576-CIV-CANNON
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Plaintiff VPR Brands, LP (“Plaintiff”) manufactures electronic cigarettes (“e-cigarettes”)
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`and related products [ECF No. 1 ¶¶ 10–11]. Plaintiff has marketed a line of e-cigarettes and
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`accessories under the mark ELF since November 24, 2017 [ECF No. 1 ¶¶ 13–14]. Plaintiff
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`obtained a trademark in the ELF mark from the United States Patent and Trademark Office
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`(“USPTO”) on June 5, 2018 [ECF No. 1 ¶ 15; ECF No. 1-1]. The trademark allows Plaintiff to
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`use the mark “in connection with ‘Electronic cigarette lighters; Electronic cigarettes; [and]
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`Smokeless cigarette vaporizer pipe’” [ECF No. 1 ¶ 15; ECF No. 1-1]. Plaintiff currently markets
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`two products under the ELF mark: (1) the ELF Original Auto Draw Conceal Kit, “a reusable
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`(non-disposable) bar-shaped e-cigarette”; and (2) a high-capacity e-cigarette battery for use with
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`the “industry standard refillable 510 mouthpieces” [ECF No. 1 ¶¶ 19, 22]. The ELF Original Auto
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`Draw Conceal Kit is “a square box vaporizer with a mouthpiece attached to the top,” which allows
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`the consumer to inhale products such as essential oils, nicotine, and other products [ECF No. 46
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`pp. 18:4–8, 19:7–9; see also ECF No. 38-2 (photo of ELF Original Auto Draw Conceal Kit)]. The
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`vaporizer is sold empty, without liquid [ECF No. 46 p. 20: 19–20], and it is reusable, allowing the
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`consumer to “use [the] product for the lifespan of the rechargeable battery” [ECF No. 46
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`p. 25:16–22].
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`Defendant Shenzhen Weiboli Technology Co. Ltd. (“Weiboli”) is a Chinese manufacturer
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`of e-cigarettes that markets its e-cigarettes under the name ELFBAR [ECF No. 1 ¶¶ 39, 41]. The
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`ELFBAR product is an e-cigarette disposable vaporizer that is made out of plastic and comes
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`“pre-filed with nicotine e-liquid” [ECF No. 46 p. 34:14–19; see also ECF No. 56 (ELF product)].1
`
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`1 Plaintiff’s ELF Auto Draw Conceal Kit is classified as an “open system,” which allows a user to
`refill the tank and is re-usable, as opposed to a disposable e-cigarette product similar to
`Defendants’ ELFBAR product [ECF No. 60 pp. 63:23–25, 64:1–6].
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`
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`2
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`

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`Case 9:22-cv-81576-AMC Document 83 Entered on FLSD Docket 02/23/2023 Page 3 of 32
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`
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` CASE NO. 22-81576-CIV-CANNON
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`The other seven Defendants operate as Weiboli’s wholesale distributors of the ELFBAR products
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`within the United States [ECF No. 1 ¶¶ 42–55].
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`Plaintiff alleges that Weiboli’s distribution of the ELFBAR e-cigarette products infringes
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`on Plaintiff’s ELF trademark, because it is “confusingly similar to Plaintiff’s ELF Mark as applied
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`to e-cigarette products, and is likely to cause confusion among consumers, retailers and distributors
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`in the United States” [ECF No. 1 ¶ 65]. Plaintiff alleges that Weiboli was on notice of this
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`likelihood of confusion after the USPTO, on July 19, 2021, rejected Weiboli’s application to
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`register the ELFBAR mark because it could result in confusion with Plaintiff’s ELF mark
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`[ECF No. 1 ¶ 70; ECF No. 38-3 (USPTO official letter refusing registration application “because
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`of a likelihood of confusion with the mark in U.S. Registration No. 5486616,” and then addressing
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`similarity of the marks and relatedness of the goods and/or services)]. Weiboli nonetheless entered
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`the U.S. market after the USPTO rejection and began to distribute its ELFBAR e-cigarettes
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`[ECF No. 1 ¶ 72].2 Weiboli abandoned its application to register the ELFBAR mark with the
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`USPTO as of January 20, 2022 [ECF No. 1 ¶ 71].
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`On October 15, 2022, Plaintiff filed a four-count Complaint [ECF No. 1]. As relevant to
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`Plaintiff’s Motion for Preliminary Injunction [see ECF No. 5 p. 9], the Complaint asserts that
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`(1) Defendants are liable for trademark infringement under the Lanham Act because Defendants’
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`use of the ELFBAR mark is likely to cause confusion with Plaintiff’s ELF mark in the marketplace
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`[ECF No. 1 ¶¶ 100–07] (Count I – Trademark Infringement Under Section 32(a) of the Lanham
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`Act, 15 U.S.C. § 114(a)); and (2) Defendants are liable for false designation of origin, because
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`their use of the ELFBAR mark could cause confusion to consumers as to Plaintiff’s affiliation with
`
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`2 The Complaint does not specify the exact date (after July 19, 2021) when Weiboli entered the
`U.S. market, but a representative for one of the distributors (Demand Vape) testified at the hearing
`that it began distributing Weiboli’s ELFBAR products in October 2021 [ECF No. 60 p. 88:10–12].
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`
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`3
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`

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`Case 9:22-cv-81576-AMC Document 83 Entered on FLSD Docket 02/23/2023 Page 4 of 32
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`
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` CASE NO. 22-81576-CIV-CANNON
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`Defendants’ products [ECF No. 1 ¶¶ 108–16] (Count II – Trademark Infringement, False
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`Designation of Origin, and Unfair Competition Under Section 43(a) of the Lanham Act, 15 U.S.C.
`
`§ 1125(a)). 3
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`On October 14, 2022, Plaintiff filed the instant Motion, seeking a preliminary injunction
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`to enjoin Defendants from marketing their ELFBAR products or otherwise infringing on Plaintiff’s
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`trademark [ECF No. 5]. Following notice to Defendants, a hearing, and full briefing, the Motion
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`is ripe for adjudication [ECF Nos. 32, 34, 65, 66; see ECF Nos. 28, 75].4
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`LEGAL STANDARD
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`To obtain preliminary injunctive relief, a party must establish the following elements:
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`“(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if
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`the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict
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`on the non-movant; and (4) that entry of the relief would serve the public interest.” Schiavo ex.
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`rel Schindler v. Schiavo, 403 F.3d 1223, 1225–26 (11th Cir. 2005); see also Levi Strauss & Co. v.
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`Sunrise Int’l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995). None of the four requirements “has
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`a fixed quantitative value. Rather, a sliding scale is utilized, which takes into account the intensity
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`of each in a given calculus.” Texas v. Seatrain Int’l, S.A., 518 F.2d 175, 180 (5th Cir. 1975) (citing
`
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`3 Plaintiff also asserts claims for common law unfair competition against all Defendants (Count
`III), direct patent infringement against Weiboli (Count IV), and cybersquatting against Weiboli
`under the Lanham Act (Count V) [ECF No. 61]. On December 16, 2022, after the hearing on this
`Motion, Plaintiff filed a First Amended Complaint (the “FAC”) to add a claim for cybersquatting
`against Weiboli under the Lanham Act [ECF No. 61]. The FAC does not alter Plaintiff’s claims
`for trademark infringement and unfair competition under the Lanham Act. Accordingly, given
`the procedural history of this case as relates to this Motion, citations in this Order to Plaintiff’s
`complaint are to Plaintiff’s original complaint, whose allegations as relevant here are unchanged.
`
` 4
`
` Of the eight named defendants, seven were served with the Complaint and the Motion prior to
`the first hearing on the Motion [ECF No. 28]. The remaining defendant, Unishow (U.S.A.), Inc.,
`was served on January 30, 2023 [ECF No. 75], but appeared at the hearing and joined the
`opposition through counsel representing all Defendants in this action [ECF Nos. 16, 17, 26]. There
`is no suggestion of lack of notice as to Unishow.
`
`
`
`
`4
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`Case 9:22-cv-81576-AMC Document 83 Entered on FLSD Docket 02/23/2023 Page 5 of 32
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`
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` CASE NO. 22-81576-CIV-CANNON
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`Siff v. State Democratic Exec. Comm., 500 F.2d 1307 (5th Cir. 1974)).5
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`A “preliminary injunction is an extraordinary and drastic remedy not to be granted unless
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`the movant ‘clearly carries the burden of persuasion’ as to the four prerequisites[,]” and ‘“[t]he
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`burden of persuasion in all of the four requirements is at all times upon the plaintiff.”’ United
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`States v. Jefferson Cnty., 720 F.2d 1511, 1519 (11th Cir. 1983) (quoting Canal Auth. v. Callaway,
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`489 F.2d 567, 573 (5th Cir. 1974)). “[A] district court may rely on affidavits and hearsay materials
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`which would not be admissible evidence for a permanent injunction, if the evidence is ‘appropriate
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`given the character and objectives of the injunctive proceeding.”’ Levi Strauss & Co. v. Sunrise
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`Int’l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (quoting Asseo v. Pan Am. Grain Co., 805
`
`F.2d 23, 26 (1st Cir. 1986)).
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`To prevail on a trademark infringement claim, “a plaintiff must demonstrate (1) that its
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`mark has priority and (2) that the defendant’s mark is likely to cause consumer confusion.”
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`Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). Courts
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`consider seven factors in determining whether a likelihood of confusion exists: (1) type of mark;
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`(2) similarity of the mark; (3) similarity of the products the marks represent; (4) similarity of the
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`parties’ retail outlets (trade channels) and customers; (5) similarity of advertising media;
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`(6) defendant’s intent; and (7) actual confusion. Id.
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`DISCUSSION
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`Upon review of the Motion and the full record, the Court hereby enjoins Defendants from
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`use of Plaintiff’s ELF trademark through the selling of Defendants’ ELFBAR products in the
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`United States. In doing so, the Court first determines that Defendants’ unlawful use argument
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`lacks merit as a tool in this proceeding to invalidate and/or to declare Plaintiff’s trademark
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`5 The Eleventh Circuit adopted as binding precedent all decisions of the former Fifth Circuit issued
`prior to October 1, 1981. Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981).
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`5
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`unenforceable. Turning to the applicable factors for injunctive relief, the Court concludes that
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`Plaintiff has carried its heavy burden to show that it is likely to succeed on the merits of its
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`trademark infringement claim because its ELF mark has priority and because Defendants’
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`ELFBAR mark is likely to cause consumer confusion. Without injunctive relief, Plaintiff has
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`sufficiently established that it is likely to suffer irreparable injury; that the threatened injury to
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`Plaintiff outweighs any harm the injunction will pose to Defendants; and that the preliminary
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`injunction will serve the public interest. The Court addresses each aspect of the analysis in turn.
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`I.
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`Unlawful Use Doctrine
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`At the outset, the Court rejects Defendants’ lead argument to declare as unenforceable
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`Plaintiff’s trademark under the “unlawful use doctrine,” which the Eleventh Circuit has not
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`adopted [ECF No. 32 pp. 2–4, 7–9; ECF No. 65 pp. 5–6, 13–15]. As described by the Eleventh
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`Circuit in FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071 (11th Cir. 2016), “[t]he ‘unlawful
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`use doctrine’ appears almost exclusively in the administrative setting, originating in United States
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`Trademark Trial and Appeal Board (“TTAB”) proceedings to oppose trademark applications or
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`cancel registrations.” Id. at 1086.6 Interpreting the definition of the phrase “use in commerce” in
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`15 U.S.C. § 1127, the TTAB has stated that “[a] mark ha[s] to comply with all applicable laws and
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`regulations before a party may claim trademark protection for that mark.” Id. at 1087 (internal
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`quotation marks omitted). 7 A party using the “unlawful use doctrine” to oppose a trademark
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`6 The TTAB’s administrative trademark judges are authorized to determine a party’s right to
`register a trademark with the federal government or to retain a registration under challenge. The
`TTAB does not determine questions of trademark infringement or unfair competition. See
`generally About TTAB, USPTO Website, https://www.uspto.gov/trademarks/trademark-trial-and-
`appeal-board/about-ttab.
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`7 Section 1127 defines “use in commerce” as “the bona fide use of a mark in the ordinary course
`of trade” which may lawfully be regulated by Congress, specifying further that a mark “shall be
`deemed to be in use in commerce on goods when,” as relevant here,” “the goods are sold or
`transported in commerce,” and separately defining “commerce” to mean “all commerce which
`may lawfully be regulated by Congress.” 15 U.S.C. § 1127.
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`6
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`application or cancel a trademark application before the TTAB must prove by clear and convincing
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`evidence that the mark being challenged is not entitled to trademark protection, because there has
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`been “a finding of non-compliance[] by a court or government agency having competent
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`jurisdiction under the statue involved, or where there has been a per se violation of a statute
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`regulating the sale of a party’s goods.” Id.; see 37 C.F.R. § 2.111(b) (permitting “any person” to
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`file a petition to TTAB for cancellation of trademark registration). A challenge under the
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`“unlawful use doctrine” goes to the merits of a party’s trademark rights.
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`As a defense to the Motion, Defendants argue that Plaintiff’s “asserted ELF trademark is
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`unenforceable due to illegality,” because Plaintiff has not obtained FDA pre-marketing
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`authorization to sell its ELF-branded products as required by 21 U.S.C. § 387j(a)(1)–(2).8 In a
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`nutshell, Defendants’ position is that Plaintiff’s ELF-branded products—i.e., the ELF-branded
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`vaporizer and e-cigarette battery—qualify as “new tobacco products” for which “premarket
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`review” is required, see 21 U.S.C. § 387j(a)(1)–(2), because they are “intended or reasonably
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`expected” to be used “for the human consumption of a tobacco product.”9 The FDCA prohibits
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`“the introduction or delivery for introduction into interstate commerce of any . . . tobacco product
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`8 Chapter 9 of the Federal Food, Drug, and Cosmetics Act (FDCA) gives the FDA authority to
`regulate tobacco products. 21 U.S.C. § 387a.
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` 9
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` A “new tobacco product,” includes, as relevant here, “(A) any tobacco product (including those
`products in test markets) that was not commercially marketed in the United States as of February
`15, 2007,” 21 U.S.C. § 387j(a)(1), and a “tobacco product,” in turn, is defined as
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`any product made or derived from tobacco, or containing nicotine from any source,
`that is intended for human consumption, including any component, part, or
`accessory of a tobacco product (except for raw materials other than tobacco used in
`manufacturing a component, part, or accessory of a tobacco product).
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`21 U.S.C. § 321(rr)(1). The FDA issued regulations, effective August 8, 2016, defining the terms
`“component or part” as “any software or assembly of materials intended or reasonably
`expected . . . [t]o be used with or for the human consumption of a tobacco product,” even if it does
`not itself contain tobacco or is derived from tobacco. 21 C.F.R. § 1100.3.
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`7
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`. . . that is adulterated,” 21 U.S.C. 331(a), and a “new tobacco product” without premarket
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`authorization is considered an “adulterated product,” 21 U.S.C. § 387(b). Hence, Defendants
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`contend, Plaintiff’s continued “marketing and sale of the [ELF] products is a per se violation of
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`21 U.S.C. § 331(a),” which means, in Defendants’ view, that this Court should declare Plaintiff’s
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`registered ELF mark unenforceable in this proceeding [ECF No. 32 pp. 7–9; ECF No. 65
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`pp. 13–15]. Defendants do not dispute that there has been no finding by a court or government
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`agency that Plaintiff is in violation of 21 U.S.C. § 331(a) or the pertinent regulations, and the
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`record reflects neither a FDA proceeding against Plaintiff for its ELF products nor a TTAB
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`declaration of unlawful use.10 11
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`Acknowledging Defendants’ argument and the absence of definitive guidance from the
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`Eleventh Circuit, see FN Herstal SA, 838 F.3d at 1087, the Court permitted Defendants to make a
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`record on this issue,12 but the Court ultimately declines to apply the “unlawful use doctrine” to bar
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`10 Defendants offered the testimony of Bryan Haynes, an expert in FDA marketing restrictions for
`tobacco products [ECF No. 60 pp. 13–54]. Mr. Haynes opined that Plaintiff’s ELF products would
`be classified as “tobacco product components,” because they are intended or reasonably expected
`to be used to consume a tobacco product and thus require pre-market authorization from the FDA
`[ECF No. 60 pp. 38:6–21, 39:12–23]. Mr. Haynes based his opinion in part on two FDA “Warning
`Letters” issued to other companies not implicated here, extrapolating from those letters that FDA
`would treat Plaintiff’s products similarly [ECF No. 58-5; ECF No. 58-6]. Mr. Haynes
`acknowledged that he had not seen an example of an FDA enforcement proceeding against a
`product “just like this”; that he was not aware of an FDA enforcement action or warning letter
`specific to Plaintiff’s ELF products [ECF No. 60 p. 47:8–14]; and that the application of the
`pre-marketing authorization requirement was “fact-specific and could depend on a variety of
`things” [ECF No. 60 p. 40:6–15]. As FDA’s website indicates, warning letters are “issued for
`violations of regulatory significance that may lead to enforcement action if not promptly and
`adequately
`corrected.”
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`https://www.fda.gov/animal-veterinary/compliance-
`enforcement/advisory-action-letters.
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`11 Defendants also do not have pre-market authorization to sell the ELFBAR e-cigarette products.
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`12 [see ECF No. 60 pp. 13–54; ECF No. 58 (plus exhibits); ECF No. 46 pp. 91–94]
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`8
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`Plaintiff’s Lanham Act infringement and unfair competition claims. The Court’s reasoning is set
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`forth below, guided by persuasive authorities.13
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`First, as stated, when given an opportunity to adopt the doctrine in the trademark
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`infringement context, the Eleventh Circuit did not do so, characterizing it as appearing “almost
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`exclusively in the administrative setting.” See FN Herstal SA, 838 F.3d at 1086. Admittedly, the
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`Eleventh Circuit ultimately declined to adopt the defense because the party asserting it had not
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`submitted sufficient evidence in the district court to raise an issue of fact about plaintiff’s allegedly
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`unlawful use. Id. at 1087 (“This Court has not adopted the unlawful use doctrine and need not do
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`so today because even if we were to adopt it, Clyde Armory has not submitted evidence sufficient
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`to raise an issue of fact