Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 1 of 16
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF CONNECTICUT
`
`JUUL LABS, INC.,
`
`Plaintiff,
`
`v.
`FARMINGTON XPRESS MART LLC,
`
`
`Defendant.
`
`
`
`
`
`Civil Action No.
`
`PLAINTIFF'S COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE
`DESIGNATION OF ORIGIN, AND UNFAIR COMPETITION
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff JUUL LABS, INC. ("JLI"), by and through its undersigned attorneys, files this
`
`Complaint against defendant FARMINGTON XPRESS MART LLC, a Connecticut limited liability
`
`company ("Defendant"), and hereby alleges as follows:
`
`PARTIES
`
`1.
`2.
`
`JLI is a corporation organized and existing under the laws of the State of Delaware.
`
`Defendant Farmington Xpress Mart LLC is a limited liability company organized
`
`and existing under the laws of the State of Connecticut and having a principal place of business at
`
`860 Farmington Avenue, Farmington, CT 06032. Defendant Farmington Xpress Mart LLC owns
`
`and operates the Shell Food Mart at that same location.
`
`NATURE OF THE ACTION
`
`3.
`
`JLI is the designer, manufacturer, and distributor of JUUL-branded electronic
`
`nicotine delivery systems ("ENDS") and other related products (collectively, "JUUL Products").
`4.
`
`The JUUL Products have become targets for individuals and entities who wish to
`
` 1
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 2 of 16
`
`take a "free ride" on the commercial success of the JUUL brand that JLI has spent considerable effort
`
`and resources to build.
`5.
`
`Specifically, 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.
`6.
`
`Through this action, JLI combats the sale and distribution of these unlawful
`
`counterfeit products.
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has subject matter jurisdiction over this case pursuant to 15 U.S.C.
`
`§1121 and 28 U.S.C. §§1331, 1338(a), and 1338(b) because (i) claims herein arise out of federal
`
`trademark laws as codified in 15 U.S.C. §1114 and 15 U.S.C. §1125(a) (i.e., trademark infringement,
`
`false designation of origin, and unfair competition); and (ii) the unfair business practices claim
`
`herein is brought with and is related to the substantial claims based on trademark laws. This Court
`
`also has supplemental jurisdiction over any claims that may arise under common law or state law
`
`pursuant to 28 U.S.C. §1367(a) because the claims would be so related to JLI's federal law claims
`
`because they would form part of the same case or controversy and would derive from a common
`
`nucleus of operative facts.
`8.
`
`This Court has general personal jurisdiction over Defendant due to its residence
`
`and business activities in this judicial district. This Court has specific personal jurisdiction over
`
`Defendant due to the nature and quality of its actions toward the state in which this Court is located.
`
`The claims asserted herein arise out of and relate to such actions and this Court's exercise of specific
`
`personal jurisdiction over Defendant comports with traditional notions of fair play and substantial
`
`justice.
`9.
`
`Venue in this judicial district is proper for these claims pursuant to 28 U.S.C.
`
`§1391(b). As described herein, Defendant resides in this judicial district, a substantial part of the
`
`events or omissions giving rise to these claims occurred in this judicial district, and Defendant has
`
`extensive contacts with this judicial district relating to JLI's claims. Defendant conducts regular and
`
` 2
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 3 of 16
`
`systematic business transactions in this judicial district, including direct sales to consumers in this
`
`judicial district, which violate the intellectual property rights of JLI.
`
`FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
`
`JUUL Trademarks and Products
`10.
`
`JLI is the exclusive owner of federally-registered, registration-pending, and
`
`common law trademarks. For example, JLI owns the following United States Trademark
`
`Registrations:
`
`Depiction of Trademark
`
`(1) First Use
`Registration No.
`(2) In Commerce
`and Date
`(1) 06-01-2015
`4,818,664
`(2) 06-01-2015
`(09-22-2015)
`(1) 06-01-2015
`4,898,257
`(2) 06-01-2015
`(02-09-2016)
`(1) 06-30-2015
`5,918,490
`(2) 06-30-2015
`(11-26-2019)
`True and correct copies of the Registration Certificates for the above-listed
`
`JUUL®
`
`®
`JUULpods®
`
`11.
`
`trademarks are attached hereto as Exhibit A. Hereinafter, JLI may sometimes utilize the phrase "the
`
`JUUL Marks" to refer to, collectively, JLI's federally-registered, registration-pending, and common
`
`law trademarks.
`12.
`
`JLI designs, manufactures, distributes, markets, and sells JUUL Products, including
`
`the JUUL system comprised of: (i) a device containing a rechargeable battery, control circuitry and a
`
`receptacle for a cartridge or pod, (ii) a disposable cartridge or pod ("JUULpod") that can be inserted
`
`into the device, has a heating chamber and is prefilled with a proprietary nicotine e-liquid
`
`formulation, and (iii) a charger for charging the device, and related accessories.
`13.
`
`The JUUL Marks appear clearly on JUUL Products, as well as the packaging
`
`shown in attached Exhibit B, and in marketing materials related to such products.
`14.
`
`The JUUL Marks, as well as the goodwill arising from such trademarks, have never
`
`been abandoned.
`15.
`
`JLI continues to preserve and maintain its rights with respect to the JUUL Marks,
`
`including those registered with the United States Patent and Trademark Office.
`
` 3
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 4 of 16
`
`16.
`
`Due in large part to the substantial commercial success of the JUUL Products, the
`
`JUUL brand is well-known to consumers and has garnered extensive coverage by the media.
`17.
`
`Through the extensive use of the JUUL Marks, JLI has spent substantial time,
`
`money, and effort in developing consumer recognition and awareness of its brand. JLI markets
`
`JUUL Products nationwide to current adult smokers, including through its website, and sells its
`
`products through its nationwide authorized network. JLI also markets and sells its products
`
`internationally. JLI has built up and developed significant customer goodwill in its entire product
`
`line and JUUL Products are immediately identified by the JUUL Marks.
`
`Sales of Grey Market Goods
`18.
`
`Beginning on a date that is currently unknown to JLI, Defendant, 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 ("Grey Market Goods"). Because the Grey Market Goods are
`
`labeled and packaged to comply with the regulations of the authorized foreign marketplaces, the
`
`labeling and packaging of the Grey Market Goods are not in compliance with the regulations of the
`
`U.S. Food and Drug Administration.
`19.
`
`For example, on November 3, 2019, a representative of JLI made an in-person
`
`purchase of a Grey Market Good for sale at the Shell Food Mart owned and operated by Defendant
`
`located at 860 Farmington Avenue, Farmington, CT 06032 (the "Shell Food Mart Business"). A true
`
`and correct image of the product purchased on November 3, 2019 is attached hereto as Exhibit C.
`
`JLI subsequently inspected the product purchased on November 3, 2019 and confirmed that the
`
`purchased product is in fact a diverted grey market good.
`
`Cease-and-Desist Correspondence to Defendant
`20.
`
`On November 13, 2019, JLI's counsel mailed a cease-and-desist correspondence to
`
`Defendant. A true and correct copy of this correspondence is attached hereto as Exhibit D. The
`
`cease-and-desist correspondence provided specific notice of the following, among other items: (i)
`
`JLI's confirmation that goods sold by Defendant are in fact non-genuine grey market goods; (ii) JLI's
`
` 4
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 5 of 16
`
`demand that Defendant cease the sale, manufacture, marketing, and importation of Grey Market
`
`Goods and all other unauthorized use of JLI's intellectual property; (iii) JLI's ownership of the JUUL
`
`Marks; (iv) the statutory prohibition of the sale of Grey Market Goods and all other unauthorized use
`
`of JLI's intellectual property, and JLI's right to seek monetary judgments against infringers; and (v)
`
`Defendant's willful infringement under federal law would be established by any further sales of Grey
`
`Market Goods or any other unauthorized use of JLI's intellectual property.
`21.
`
`The November 13, 2019 cease-and-desist correspondence requested that Defendant
`
`contact JLI's counsel to discuss pre-litigation resolution of the legal issues arising from the sale of
`
`the Grey Market Goods and all other unauthorized use of JLI's intellectual property. Defendant
`
`contacted JLI's counsel, but such communication did not result in resolution of JLI's claims.
`
`Continued Sales (Counterfeit Goods)
`22.
`
`Beginning on a date that is currently unknown to JLI, Defendant, without the
`
`consent of JLI, has offered to sell and sold, and/or facilitated the offer and sale of, goods that were
`
`neither made by JLI nor by a manufacturer authorized by JLI, all by using reproductions,
`
`counterfeits, copies and/or colorable imitations of JUUL Products and the JUUL Marks ("Counterfeit
`
`Goods").
`23.
`
`JLI has not authorized any third party, including Defendant, to make or sell ENDS
`
`or other types of products in connections with the JUUL Marks. The Counterfeit Goods sold by
`
`Defendant are therefore not manufactured in accordance with JLI's own stringent quality controls but
`
`are instead manufactured outside of JLI's knowledge and control, using unknown substances and
`
`materials, in unknown locations and with unknown manufacturing requirements/controls.
`24.
`
`The Counterfeit Goods sold by Defendant bear counterfeit and confusingly similar
`
`imitations of the JUUL Marks in a manner likely to be confused with genuine JUUL Products.
`25.
`
`For example, on November 25, 2019, a representative of JLI made an in-person
`
`purchase of a Counterfeit Good for sale at the Shell Food Mart Business. A true and correct image
`
`of the counterfeit product purchased on November 25, 2019 is attached hereto as Exhibit E. JLI
`
`subsequently inspected the product purchased on November 25, 2019 and confirmed that the
`
` 5
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 6 of 16
`
`purchased product is in fact counterfeit.
`26.
`
`Further, on March 6, 2020, a representative of JLI made an in-person purchase of a
`
`Counterfeit Good for sale at the Shell Food Mart Business. A true and correct image of the
`
`counterfeit product purchased on March 6, 2020 is attached hereto as Exhibit F. JLI subsequently
`
`inspected the product purchased on March 6, 2020 and confirmed that the purchased product is in
`
`fact counterfeit.
`27.
`
`Defendant is not authorized, and never has been authorized by JLI, to produce,
`
`manufacture, distribute, market, offer for sale, and/or sell merchandise bearing the JUUL Marks, or
`
`any variations thereof. JLI has no control over the nature, quality, or pricing of Defendant's products
`
`or marketing, or any other aspect of the business conduct of Defendant.
`28.
`
`Defendant uses words, symbols, images, designs, and names confusingly similar or
`
`identical to the JUUL Marks to confuse consumers and aid in the promotion and sales of the
`
`Counterfeit Goods.
`29.
`
`Defendant's counterfeit sales, as 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, goodwill, and the JUUL brand.
`30.
`
`Defendant's use of Counterfeit Goods creates a likelihood of confusion as to source,
`
`affiliation, or sponsorship of the JUUL Marks.
`31.
`
`The likelihood of confusion, mistake, and deception brought about by Defendant's
`
`misappropriation of the JUUL Marks is causing irreparable harm to the goodwill symbolized by the
`
`JUUL Marks, and the reputation for quality that said marks embody, for which there is no adequate
`
`legal remedy.
`32.
`
`Defendant's unauthorized use of the JUUL Marks began after JLI legally
`
`established the existence and significant value of such trademarks, including after JLI's adoption and
`
`use of the JUUL Marks and after JLI obtained two of the trademark registrations described above.
`
` 6
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 7 of 16
`
`33.
`
`Defendant's infusion of the Counterfeit Goods into the marketplace reflects
`
`adversely on JLI, results in economic loss to JLI including loss of sales of genuine JUUL Products,
`
`damages the goodwill of the JUUL brand, and thwarts JLI's honest efforts and considerable
`
`expenditures to promote its genuine JUUL Products using the JUUL Marks.
`
`COUNT 1
`
`Trademark Infringement – Counterfeit Goods (15 U.S.C. §1114)
`
`34.
`
`JLI re-alleges and incorporates by this reference each and every allegation in
`
`paragraphs 1 through 33 as though set forth fully herein.
`35.
`
`The JUUL Marks, as well as the goodwill arising from such trademarks, have never
`
`been abandoned. The JUUL Marks appear clearly on JUUL Products, as well as the packaging and
`
`marketing related to such products. JLI continues to preserve and maintain its rights with respect to
`
`the JUUL Marks.
`36.
`
`Defendant's actions to sell and distribute the Counterfeit Goods which use spurious
`
`designations that are identical to, or substantially indistinguishable from, the JUUL Marks as
`
`described herein are intended to cause, have caused, and are likely to continue to cause confusion or
`
`mistake, or to deceive consumers, the public, and the trade into believing that the Counterfeit Goods
`
`are genuine or authorized JUUL Products.
`37.
`
`Defendant's actions to sell and distribute the Counterfeit Goods which use spurious
`
`designations that are identical to, or substantially indistinguishable from, the JUUL Marks as
`
`described herein creates a likelihood of confusion as to source, affiliation, or sponsorship of the
`
`JUUL Marks.
`38.
`
`The foregoing acts of Defendant constitute direct, contributory, and/or vicarious
`
`trademark infringement in violation of 15 U.S.C. §1114.
`39.
`
`JLI has been damaged as a result of Defendant's infringement of the JUUL Marks.
`
`JLI alleges, on information and belief, that Defendant's sale and distribution of the Counterfeit
`
`Goods have resulted in lost sales to JLI, have reduced the business and profits of JLI, and have
`
`injured the general reputation of JLI, all to JLI's damage in an amount not yet ascertainable, but that
`
` 7
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 8 of 16
`
`will be determined during this action or considered in relation to a request for statutory damages.
`40.
`
`JLI alleges, on information and belief, that Defendant has derived, received, and
`
`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
`
`advantages in an amount not yet ascertainable, but that will be determined during this action or
`
`considered in relation to a request for statutory damages.
`41.
`
`On information and belief, Defendant acted intentionally and/or willfully in
`
`infringing upon the JUUL Marks through sale and distribution of the Counterfeit Goods, knowing
`
`that the JUUL Marks belonged to JLI, that the Counterfeit Goods were in fact infringing, and that
`
`Defendant was not authorized to infringe upon the JUUL Marks through sale and distribution of the
`
`Counterfeit Goods.
`42.
`
`Defendant's spurious designation of its products also constitutes the use by
`
`Defendant of at least one 'counterfeit mark" as defined in 15 U.S.C. §1116(d)(1)(B). Therefore, JLI
`
`is entitled to recovery of treble damages and to an award of reasonable attorneys' fees pursuant to 15
`
`U.S.C. §§1117(a) and 1117(b).
`43.
`
`Because Defendant's actions also constitute the use by Defendant of at least one
`
`"counterfeit mark" as defined in 15 U.S.C. §1116(d)(1)(B), JLI reserves the right to elect, at any time
`
`before final judgment is entered in this case, an award of statutory damages pursuant to 15 U.S.C.
`
`§1117(c)(1) or (2). JLI alleges, on information and belief, that Defendant has knowingly and
`
`willfully engaged in the acts complained of with oppression, fraud, malice, and in conscious
`
`disregard of the rights of JLI. JLI is, therefore, entitled to the maximum statutory damages
`
`allowable.
`44.
`
`The acts of direct, contributory, and/or vicarious
`
`trademark
`
`infringement
`
`committed by Defendant has caused, and will continue to cause, JLI irreparable harm unless they are
`
`enjoined by this Court. On information and belief, Defendant's actions were committed in bad faith
`
`and with the intent to cause confusion and mistake, and to deceive the consuming public as to the
`
`source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`45.
`
`Defendant's acts have proximately caused injury to JLI, and as a result of
`
` 8
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 9 of 16
`
`Defendant's conduct, Defendant has caused a likelihood of confusion that will cause irreparable
`
`injury to JLI for which there is no adequate remedy at law, and unless restrained and enjoined by this
`
`Court, will continue to cause irreparable harm, damage, and injury to JLI.
`
`COUNT 2
`
`False Designation of Origin – Counterfeit Goods (15 U.S.C. §1125(a))
`
`46.
`
`JLI re-alleges and incorporates by this reference each and every allegation in
`
`paragraphs 1 through 45 as though set forth fully herein.
`47.
`
`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
`
`distinctive words, symbols, slogans, color schemes, images, and designs through which Defendant
`
`presents its Counterfeit Goods to the market constitutes a wrongful and false representation to the
`
`consuming public that the Counterfeit Goods sold by Defendant originated from JLI or somehow are
`
`authorized by or affiliated with JLI.
`48.
`
`Defendant's actions as described herein constitute violation of 15 U.S.C.
`
`§1125(a)(1)(A), as such actions are likely to cause confusion, or to cause mistake, or to deceive as to
`
`the affiliation, connection, or association of Defendant with JLI and/or as to the origin, sponsorship,
`
`and/or approval of the Counterfeit Goods by JLI. These acts amount to false designations of origin.
`49.
`
`JLI has been damaged as a result of Defendant's actions described herein. JLI
`
`alleges, on information and belief, that Defendant's sale of the Counterfeit Goods has resulted in lost
`
`sales to JLI, has reduced the business and profits of JLI, and has greatly injured the general
`
`reputation and goodwill of JLI, all to JLI's damage in an amount not yet ascertainable, but that will
`
`be determined during this action or to be considered in relation to a request for statutory damages.
`50.
`
`JLI alleges, on information and belief, that Defendant has derived, received, and
`
`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
`
`advantages in an amount not yet ascertainable, but that will be determined during this action or to be
`
`considered in relation to a request for statutory damages.
`51.
`
`On information and belief, Defendant acted intentionally and/or willfully in using
`
`the JUUL Marks on the Counterfeit Goods, knowing that the JUUL Marks belonged to JLI, that the
`
` 9
`
`
`
`
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 10 of 16
`
`Counterfeit Goods were in fact counterfeit, and that Defendant was not authorized to use the JUUL
`
`Marks on the Counterfeit Goods.
`52.
`
`Defendant's acts of violating 15 U.S.C. §1125(a), directly and/or in contributory or
`
`vicarious manner, have caused, and will continue to cause, JLI irreparable harm unless they are
`
`enjoined by this Court. On information and belief, Defendant's actions were committed in bad faith
`
`and with the intent to cause confusion and mistake, and to deceive the consuming public as to the
`
`source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`53.
`
`Defendant's acts have proximately caused injury to JLI, and as a result of
`
`Defendant's conduct, Defendant has caused a likelihood of confusion that will cause irreparable
`
`injury to JLI for which there is no adequate remedy at law, and unless restrained and enjoined by this
`
`Court, will continue to cause irreparable harm, damage, and injury to JLI.
`
`COUNT 3
`
`Unfair Competition – Counterfeit Goods (15 U.S.C. §1125(a))
`
`54.
`
`JLI re-alleges and incorporates by this reference each and every allegation in
`
`paragraphs 1 through 53 as though set forth fully herein.
`55.
`
`An express purpose of the Lanham Act is to protect commercial parties against
`
`unfair competition.
`56.
`
`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
`
`distinctive words, symbols, color schemes, and designs through which JLI presents its products to
`
`the market constitutes wrongful and unfair business practices and marketplace bad faith, resulting in
`
`inaccurate representations to the consuming public that the Counterfeit Goods sold by Defendant
`
`originated from or somehow are authorized by or affiliated with JLI. Defendant so acted for its own
`
`financial benefit in disregard to the harm being caused to JLI.
`57.
`
`Defendant's actions as described herein constitute violation of 15 U.S.C.
`
`§1125(a)(1)(A), as such actions are likely to cause confusion, or to cause mistake, or to deceive as to
`
`the affiliation, connection, or association of Defendant with JLI and/or as to the origin, sponsorship,
`
`and/or approval of the Counterfeit Goods by JLI. These acts amount to false representations to
`
`
`
`
`10
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 11 of 16
`
`compete unfairly with JLI.
`58.
`
`JLI has been damaged as a result of Defendant's actions described herein. JLI
`
`alleges, on information and belief, that Defendant's sale of the Counterfeit Goods has resulted in lost
`
`sales to JLI, has reduced the business and profits of JLI, and has greatly injured the general
`
`reputation and goodwill of JLI, all to JLI's damage in an amount not yet ascertainable, but that will
`
`be determined during this action or to be considered in relation to a request for statutory damages.
`59.
`
`JLI alleges, on information and belief, that Defendant has derived, received, and
`
`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
`
`advantages in an amount not yet ascertainable, but that will be determined during this action or to be
`
`considered in relation to a request for statutory damages.
`60.
`
`On information and belief, Defendant acted intentionally and/or willfully in using
`
`the JUUL Marks on the Counterfeit Goods, knowing that the JUUL Marks belonged to JLI, that the
`
`Counterfeit Goods were in fact counterfeit, and that Defendant was not authorized to use the JUUL
`
`Marks on the Counterfeit Goods.
`61.
`
`Defendant's acts of violating 15 U.S.C. §1125(a), directly and/or in contributory or
`
`vicarious manner, have caused, and will continue to cause, JLI irreparable harm unless they are
`
`enjoined by this Court. On information and belief, Defendant's actions were committed in bad faith
`
`and with the intent to cause confusion and mistake, and to deceive the consuming public as to the
`
`source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`62.
`
`Defendant's acts have proximately caused injury to JLI, and as a result of
`
`Defendant's conduct, Defendant has caused a likelihood of confusion that will cause irreparable
`
`injury to JLI for which there is no adequate remedy at law and, unless restrained and enjoined by this
`
`Court, will continue to cause irreparable harm, damage, and injury to JLI.
`
`COUNT 4
`
`Trademark Infringement – Grey Market Goods (15 U.S.C. §1114)
`
`63.
`
`JLI re-alleges and incorporates by this reference each and every allegation in
`
`paragraphs 1 through 62 as though set forth fully herein.
`
`
`
`
`11
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 12 of 16
`
`64.
`
`Defendant's actions to sell and distribute the Grey Market Goods in the United
`
`States are intended to cause, have caused, and are likely to continue to cause public confusion or
`
`mistake, or to deceive consumers, the public, and the trade into believing that the Grey Market
`
`Goods are genuine or authorized JUUL Products.
`65.
`
`The Grey Market Goods are non-genuine JUUL Products in the United States and
`
`the "first sale" doctrine does not foreclose Defendant's liability under this cause of action because the
`
`Grey Market Goods materially differ from genuine JUUL Products authorized for sale in the United
`
`States. Specifically, among other things, the labeling and packaging of the Grey Market Goods (i)
`
`state the products are only authorized for sale in particular countries outside the United States, (ii)
`
`are designed to comply with the regulations of the authorized foreign marketplaces, and (iii) are not
`
`in compliance with the regulations of the U.S. Food and Drug Administration.
`66.
`
`The foregoing acts of Defendant constitute direct, contributory, and/or vicarious
`
`trademark infringement in violation of 15 U.S.C. §1114.
`67.
`
`JLI has been damaged as a result of Defendant's infringement of the JUUL Marks.
`
`JLI alleges, on information and belief, that Defendant's sale and distribution of the Grey Market
`
`Goods have resulted in economic loss to JLI and have injured the general reputation of JLI, all to
`
`JLI's damage in an amount not yet ascertainable, but that will be determined during this action.
`68.
`
`JLI alleges, on information and belief, that Defendant has derived, received, and
`
`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
`
`advantages in an amount not yet ascertainable, but that will be determined during this action.
`69.
`
`On information and belief, Defendant acted intentionally and/or willfully in
`
`infringing upon the JUUL Marks through sale and distribution of the Grey Market Goods, knowing
`
`that the JUUL Marks belonged to JLI, that the Grey Market Goods were in fact infringing, and that
`
`Defendant was not authorized to infringe upon the JUUL Marks through sale and distribution of the
`
`Grey Market Goods.
`70.
`
`The acts of direct, contributory, and/or vicarious
`
`trademark
`
`infringement
`
`committed by Defendant have caused, and will continue to cause, JLI irreparable harm unless they
`
`
`
`
`12
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 13 of 16
`
`are enjoined by this Court. On information and belief, Defendant's actions were committed in bad
`
`faith and with the intent to cause confusion and mistake, and to deceive the consuming public into
`
`believing that the Grey Market Goods are genuine or authorized JUUL Products.
`71.
`
`Defendant's acts have proximately caused injury to JLI, and as a result of
`
`Defendant's conduct, Defendant has caused a likelihood of confusion that will cause irreparable
`
`injury to JLI for which there is no adequate remedy at law and, unless restrained and enjoined by this
`
`Court, will continue to cause irreparable harm, damage, and injury to JLI.
`
`COUNT 5
`Statutory Unfair Trade Practices – Conn. Gen. Stat. §42-110a et seq
`
`72.
`
`JLI re-alleges and incorporates by this reference each and every allegation in
`
`paragraphs 1 through 71 as though set forth fully herein
`73.
`
`Defendant's actions of trademark infringement, false designations of origin,
`
`misrepresentation, and deception described herein constitute unfair competition and/or unfair trade
`
`practices in violation of Connecticut's Unfair Trade Practices Act, Conn. Gen. Stat. §§ 42-110a, et
`
`seq. Defendant's actions described herein also offend public policy.
`74.
`
`JLI has been damaged by Defendant's acts of unfair competition or unfair trade
`
`practices. On information and belief, Defendant's sale and distribution of the Counterfeit Goods and
`
`Grey Market Goods have resulted in economic loss to JLI and have injured JLI's general reputation
`
`and goodwill in the industry, all in an amount to be determined during this Civil Action.
`75.
`
`Defendant's actions described herein have caused, and will continue to cause, JLI to
`
`suffer irreparable harm unless enjoined by this Court.
`
`COUNT 6
`
`Common Law Unfair Competition
`
`76.
`
`JLI re-alleges and incorporates by this reference each allegation in paragraphs 1
`
`through 75 as though set forth fully herein.
`77.
`
`JLI and Defendant are competitors in the marketing and sale of ENDS and related
`
`products.
`
`
`
`
`13
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 14 of 16
`
`78.
`
`Defendant's actions of trademark infringement, false designation of origin,
`
`misrepresentation, and deception in the sale of ENDS described herein constitute unfair competition
`
`in the marketing and sale of ENDS and related products under the common law.
`79.
`
`JLI has been damaged by Defendant's acts of unfair competition. JLI alleges, on
`
`information and belief, that Defendant's sale and distribution of the Counterfeit Goods and the Grey
`
`Market Goods have resulted in economic loss to JLI, have injured the general reputation and
`
`goodwill of JLI, and caused JLI to suffer damage in an amount to be determined during this Civil
`
`Action.
`80.
`
`Defendant's actions described herein have caused, and will continue to cause, JLI to
`
`suffer irreparable harm unless enjoined by this Court.
`
`REQUEST FOR RELIEF
`
`WHEREFORE, JLI hereby respectfully requests the following relief against Defendant
`
`FARMINGTON XPRESS MART LLC, a Connecticut limited liability company, as follows:
`1.
`
`An award of Defendant's profits and JLI's damages for trademark infringement of the
`
`JUUL Marks under 15 U.S.C. §§ 1114 and 1117, trebled, in an amount to be proven
`
`at trial;
`
`2.
`
`An award of Defendant's profits and JLI's damages for false designations of origin in
`
`the sale of Counterfeit and Grey Market Goods under 15 U.S.C. §1125(a), trebled, in
`
`an amount to be proven at trial;
`
`3.
`
`An award of Defendant's profits and JLI's damages for unfair competition in the sale
`
`of Counterfeit and Grey Market Goods under 15 U.S.C. §1125(a), trebled, in an
`
`amount to be proven at trial;
`
`4.
`
`In the alternative to Defendant's profits and JLI's damages for trademark infringement
`
`of JUUL Marks, an award of statutory damages pursuant to 15 U.S.C. §1117(c) of
`
`$2,000,000.00 for each of the counterfeited trademarks willfully utilized by
`
`Defendant;
`
`5.
`
`An injunction by this Court prohibiting Defendant, and Defendant's respective agents,
`
`
`
`
`14
`
`

`

`Case 3:20-cv-01920 Document 1 Filed 12/23/20 Page 15 of 16
`
`servants, employees, and representatives and all persons in active concert and
`
`participation with them, during the pendency of this action and permanently
`
`thereafter, from: engaging or continuing to engage in the infringing, unlawful, unfair,
`
`or fraudulent business acts or practices described herein, including the marketing,
`
`sale, distribution, and/or other dealing in any non-genuine JUUL Products, including
`
`fake counterfeit products or unauthorized grey-market products; using without
`
`permission any mark or other intellectual property right of JLI; acting to infringe the
`
`JUUL Marks; falsely designating the origin of any non-genuine JUUL Product;
`
`engaging in unfair competition with JLI; or acting in any other manner to derogate
`
`JLI's intellectual property rights;
`
`An Order requiring that Defendant provide complete accountings and for equitable
`
`relief;
`
`An Order that an asset freeze or constructive trust be imposed over all ill-gotten
`
`monies and profits in Defendant's possession;
`
`Pursuant to 15 U.S.C. §1116, including upon ex parte application, an Order for the
`
`seizure of goods and counterfeit marks and the means of making such marks, and
`
`records documenting the manufacture, sale, or receipt of things involved in trademark
`
`violations;
`
`6.
`
`7.
`
`8.
`
`9.
`
`Pursuant to 15 U.S.C. §1118, an Order requiring that Defenda