Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 1 of 16
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`UNITED STATES DISTRICT COURT
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`EASTERN DISTRICT OF LOUISIANA
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`CIVIL ACTION
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`NO.
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`JUDGE
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`MAG. JUDGE
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`JUUL LABS, INC.,
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`Plaintiff,
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`v.
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`SMOKE SUM LLC,
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`Defendant.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT,
`FALSE DESIGNATION OF ORIGIN, AND UNFAIR COMPETITION
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`Plaintiff JUUL Labs, Inc. ("JLI"), by and through its undersigned attorneys, files this
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`Complaint against defendant Smoke Sum LLC, a Louisiana limited liability company
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`("Defendant"), and hereby alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`JLI is the designer, manufacturer, and distributor of JUUL-branded electronic
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`nicotine delivery systems ("ENDS") and other related products (collectively, "the JUUL
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`Products").
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`2.
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`The JUUL Products have become targets for individuals and entities who wish to
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`take a "free ride" on the commercial success of the JUUL brand that JLI has spent considerable
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`effort and resources to build.
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`3.
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`Specifically, wrongdoers have counterfeited JUUL Products by
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`illegally
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`manufacturing, selling, and distributing fake, copied, and non-genuine versions of JUUL
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`Products and related packaging.
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`4.
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`Through this action, JLI combats the sale and distribution of these unlawful
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`counterfeit products.
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`5.
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`JLI is a corporation organized and existing under the laws of the State of
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`PARTIES
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`Delaware.
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`6.
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`Defendant Smoke Sum LLC is a limited liability company organized and existing
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`under the laws of the State of Louisiana and having its principal place of business at 926 Canal
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`Street, New Orleans, LA 70112. Defendant Smoke Sum LLC owns and operates the Smoke
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`Sum retail business at that same location.
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`JURISDICTION AND VENUE
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`7.
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`This Court has subject matter jurisdiction over this case pursuant to 15 U.S.C.
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`§1121 and 28 U.S.C. §§1331, 1338(a), and 1338(b) because (i) claims herein arise out of federal
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`trademark laws as codified in 15 U.S.C. §1114 and 15 U.S.C. §1125(a) (i.e., trademark
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`infringement, false designation of origin, and unfair competition); and (ii) the unfair business
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`practices claim herein is brought with and is related to the substantial claims based on trademark
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`laws. This Court also has supplemental jurisdiction over JLI's claims arising under state law
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`pursuant to 28 U.S.C. §1367(a) because the claims are so related to JLI's federal law claims that
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`they form part of the same case or controversy and derive from a common nucleus of operative
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`facts.
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`8.
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`This Court has general personal jurisdiction over Defendant due to its residence
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`and business activities in this judicial district. This Court has specific personal jurisdiction over
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`Defendant due to the nature and quality of its actions toward the state in which this Court is
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`located. The claims asserted herein arise out of and relate to such actions and this Court's
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`exercise of specific personal jurisdiction over Defendant comports with traditional notions of fair
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`play and substantial justice.
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`9.
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`Venue in this judicial district is proper for these claims pursuant to 28 U.S.C.
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`§1391(b). As described herein, Defendant resides in this judicial district, a substantial part of the
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`events or omissions giving rise to these claims occurred in this judicial district, and Defendant
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`has extensive contacts with this judicial district relating to JLI's claims. Defendant conducts
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 3 of 16
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`regular and systematic business transactions in this judicial district, including direct sales to
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`consumers in this judicial district, which violate the intellectual property rights of JLI.
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`FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
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`JUUL Trademarks and Products
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`10.
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`JLI is the exclusive owner of federally-registered, registration-pending, and
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`common law trademarks. For example, JLI owns the following United States Trademark
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`Registrations:
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`Depiction of Trademark
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`JUUL®
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`®
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`JUULpods®
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`Registration No.
`and Date
`4,818,664
`(09-22-2015)
`4,898,257
`(02-09-2016)
`5,918,490
`(11-26-2019)
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`(1) First Use
`(2) In Commerce
`(1) 06-01-2015
`(2) 06-01-2015
`(1) 06-01-2015
`(2) 06-01-2015
`(1) 06-30-2015
`(2) 06-30-2015
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`11.
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`True and correct copies of the Registration Certificates for the above-listed
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`trademarks are attached hereto as Exhibit A. Hereinafter, JLI may sometimes utilize the phrase
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`"the JUUL Marks" to refer to, collectively, JLI's federally-registered, registration-pending, and
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`common law trademarks.
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`12.
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`JLI designs, manufactures, distributes, markets, and sells JUUL Products,
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`including the JUUL system comprised of: (i) a device containing a rechargeable battery, control
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`circuitry and a receptacle for a cartridge or pod, (ii) a disposable cartridge or pod ("JUULpod")
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`that can be inserted into the device, has a heating chamber and is prefilled with a proprietary
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`nicotine e-liquid formulation, and (iii) a charger for charging the device, and related accessories.
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`13.
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`The JUUL Marks appear clearly on JUUL Products, as well as the packaging and
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`marketing materials related to such products.
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`14.
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`The JUUL Marks, as well as the goodwill arising from such trademarks, have
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`never been abandoned.
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`15.
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`JLI continues to preserve and maintain its rights with respect to the JUUL Marks,
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`including those registered with the United States Patent and Trademark Office.
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 4 of 16
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`16.
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`Due in large part to the substantial commercial success of the JUUL Products, the
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`JUUL brand is well-known to consumers and has garnered extensive coverage by the media.
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`17.
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`Through the extensive use of the JUUL Marks, JLI has spent substantial time,
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`money, and effort in developing consumer recognition and awareness of its brand. JLI markets
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`JUUL Products nationwide to current adult smokers, including through its website, and sells its
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`products through its nationwide authorized network. JLI also markets and sells its products
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`internationally. JLI has built up and developed significant customer goodwill in its entire
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`product line and the JUUL Products are immediately identified by the JUUL Marks.
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`Sales of Counterfeit Goods
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`18.
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`Beginning on a date that is currently unknown to JLI, Defendant, without the
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`consent of JLI, has offered to sell and sold, and/or facilitated the offer and sale of, goods that
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`were neither made by JLI nor by a manufacturer authorized by JLI, all by using reproductions,
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`counterfeits, copies and/or colorable imitations of JUUL Products and the JUUL Marks
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`("Counterfeit Goods").
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`19.
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`JLI has not authorized any third party, including Defendant, to make or sell
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`ENDS or other types of products in connections with the JUUL Marks. The Counterfeit Goods
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`sold by Defendant are therefore not manufactured in accordance with JLI's own stringent quality
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`controls but are instead manufactured outside of JLI's knowledge and control, using unknown
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`substances and materials,
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`in unknown
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`locations and with unknown manufacturing
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`requirements/controls.
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`20.
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`The Counterfeit Goods sold by Defendant bear counterfeit and confusingly
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`similar imitations of the JUUL Marks in a manner likely to be confused with genuine JUUL
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`Products.
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`21.
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`For example, on July 19, 2019, a representative of JLI made an in-person
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`purchase of Counterfeit Goods for sale at the Smoke Sum retail business owned and operated by
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`Defendant located at 926 Canal Street, New Orleans, LA 70112 (the "Smoke Sum Business").
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`True and correct images of the products purchased on July 19, 2019 are attached hereto as
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`Exhibit B. JLI subsequently inspected the products purchased on July 19, 2019 and confirmed
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`that the purchased products are in fact counterfeit.
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`Cease-and-Desist Correspondence to Defendant
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`22.
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`On August 22, 2019, JLI's counsel mailed a cease-and-desist correspondence to
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`Defendant. A true and correct copy of this correspondence is attached hereto as Exhibit C. This
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`cease-and-desist correspondence provided specific notice of the following, among other items:
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`(i) JLI's confirmation that goods sold by Defendant are in fact counterfeit goods; (ii) JLI's
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`demand that Defendant cease the sale, manufacture, marketing, and importation of Counterfeit
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`Goods and all other unauthorized use of JLI's intellectual property; (iii) JLI's ownership of the
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`JUUL Marks; (iv) the statutory prohibition of the sale of Counterfeit Goods and all other
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`unauthorized use of JLI's intellectual property, and JLI's right to seek monetary judgments
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`against infringers; and (v) Defendant's willful infringement under federal law would be
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`established by any further sales of Counterfeit Goods or any other unauthorized use of JLI's
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`intellectual property.
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`23.
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`The August 22, 2019 cease-and-desist correspondence requested that Defendant
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`contact JLI's counsel to discuss pre-litigation resolution of the legal issues arising from the sale
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`of the Counterfeit Goods and all other unauthorized use of JLI's intellectual property. Defendant
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`contacted JLI's counsel, but such communication did not result in resolution of JLI's claims.
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`Continued Sales of Counterfeit Goods
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`24.
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`On November 5, 2019, a representative of JLI made an in-person purchase of a
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`Counterfeit Good for sale at the Smoke Sum Business. A true and correct image of the
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`counterfeit product purchased on November 5, 2019 is attached hereto as Exhibit D. JLI
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`subsequently inspected the product purchased on November 5, 2019 and confirmed that the
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`purchased product is in fact counterfeit.
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`25.
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`Defendant is not authorized and never has been authorized by JLI to produce,
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`manufacture, distribute, market, offer for sale, and/or sell merchandise bearing the JUUL Marks,
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`or any variations thereof. JLI has no control over the nature, quality, or pricing of Defendant's
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`products or marketing, or any other aspect of the business conduct of Defendant.
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`26.
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`Defendant uses words, symbols, images, designs, and names confusingly similar
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`or identical to the JUUL Marks to confuse consumers and aid in the promotion and sales of the
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`Counterfeit Goods.
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`27.
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`Defendant's counterfeit sales outlined above are likely to deceive, confuse, and
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`mislead purchasers and prospective purchasers into believing that the products are authorized by
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`JLI. Purchasers and prospective purchasers using or simply viewing Defendant's Counterfeit
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`Goods and who perceive a defect, lack of quality, or any other irregularity are likely to
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`mistakenly attribute the issue to JLI, to the detriment of JLI's business and the JUUL brand.
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`28.
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`The likelihood of confusion, mistake, and deception brought about by Defendant's
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`misappropriation of the JUUL Marks is causing irreparable harm to the goodwill symbolized by
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`the JUUL Marks and the reputation for quality that said marks embody.
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`29.
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`Defendant's unauthorized use of the JUUL Marks began after JLI legally
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`established the existence and significant value of such trademarks, including after JLI's adoption
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`and use of the JUUL Marks and after JLI obtained two of the trademark registrations described
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`above.
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`30.
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`Defendant's infusion of the Counterfeit Goods into the marketplace reflects
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`adversely on JLI, results in economic loss to JLI including loss of sales of genuine JUUL
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`Products, damages the goodwill of the JUUL brand, and thwarts JLI's honest efforts and
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`considerable expenditures to promote its genuine JUUL Products using the JUUL Marks.
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`COUNT I
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`TRADEMARK INFRINGEMENT – COUNTERFEIT GOODS (15 U.S.C. §1114)
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`31.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1 through 30 as though set forth fully herein.
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`32.
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`The JUUL Marks, as well as the goodwill arising from such trademarks, have
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`never been abandoned. The JUUL Marks appear clearly on JUUL Products, as well as the
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`packaging and marketing related to such products. JLI continues to preserve and maintain its
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`rights with respect to the JUUL Marks.
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`33.
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`Defendant's actions to sell and distribute the Counterfeit Goods which use
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`spurious designations that are identical to, or substantially indistinguishable from, the JUUL
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`Marks as described herein are intended to cause, have caused, and are likely to continue to cause
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`confusion or mistake, or to deceive consumers, the public, and the trade into believing that the
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`Counterfeit Goods are genuine or authorized JUUL Products.
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`34.
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`The foregoing acts of Defendant constitute direct, contributory, and/or vicarious
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`trademark infringement in violation of 15 U.S.C. §1114.
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`35.
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`JLI has been damaged as a result of Defendant's infringement of the JUUL Marks.
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`JLI alleges, on information and belief, that Defendant's sale and distribution of the Counterfeit
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`Goods have resulted in lost sales to JLI, have reduced the business and profits of JLI, and have
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`injured the general reputation of JLI, all to JLI's damage in an amount not yet ascertainable, but
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`will be determined during this action or considered in relation to a request for statutory damages.
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`36.
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`JLI alleges, on information and belief, that Defendant has derived, received, and
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`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
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`advantages in an amount not yet ascertainable, but will be determined during this action or
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`considered in relation to a request for statutory damages.
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`37.
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`On information and belief, Defendant acted intentionally and/or willfully in
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`infringing upon the JUUL Marks through sale and distribution of the Counterfeit Goods,
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`knowing that the JUUL Marks belonged to JLI, that the Counterfeit Goods were in fact
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`infringing, and that Defendant was not authorized to infringe upon the JUUL Marks through sale
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`and distribution of the Counterfeit Goods.
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`38.
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`Defendant's spurious designation of its products also constitutes the use by
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`Defendant of at least one "counterfeit mark" as defined in 15 U.S.C. §1116(d)(1)(B). Therefore,
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`JLI is entitled to recovery of treble damages and to an award of reasonable attorneys' fees
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`pursuant to 15 U.S.C. §§1117(a) and 1117(b).
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`39.
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`Because Defendant's actions also constitute the use by Defendant of at least one
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`"counterfeit mark" as defined in 15 U.S.C. §1116(d)(1)(B), JLI reserves the right to elect, at any
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`time before final judgment is entered in this case, an award of statutory damages pursuant to 15
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`U.S.C. §1117(c)(1) or (2). JLI alleges, on information and belief, that Defendant has knowingly
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`and willfully engaged in the acts complained of with oppression, fraud, malice, and in conscious
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`disregard of the rights of JLI. JLI is, therefore, entitled to the maximum statutory damages
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`allowable.
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`40.
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`The acts of direct, contributory, and/or vicarious trademark infringement
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`committed by Defendant have caused, and will continue to cause, JLI irreparable harm unless
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`they are enjoined by this Court. On information and belief, Defendant's actions were committed
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`in bad faith and with the intent to cause confusion and mistake, and to deceive the consuming
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`public as to the source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit
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`Goods.
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`COUNT II
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`FALSE DESIGNATION OF ORIGIN – COUNTERFEIT GOODS (15 U.S.C. §1125(a))
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`41.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1 through 40 as though set forth fully herein.
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`42.
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`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
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`distinctive words, symbols, slogans, color schemes, images, and designs through which
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`Defendant presents its Counterfeit Goods to the market constitutes a wrongful and false
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`representation to the consuming public that the Counterfeit Goods sold by Defendant originated
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`from JLI or somehow are authorized by or affiliated with JLI.
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`43.
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`Defendant's actions as described herein constitute violation of 15 U.S.C.
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`§1125(a)(1)(A), as such actions are likely to cause confusion, or to cause mistake, or to deceive
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`as to the affiliation, connection, or association of Defendant with JLI and/or as to the origin,
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`sponsorship, and/or approval of the Counterfeit Goods by JLI. These acts amount to false
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`designations of origin.
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`44.
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`JLI has been damaged as a result of Defendant's actions described herein. JLI
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`alleges, on information and belief, that Defendant's sale of the Counterfeit Goods has resulted in
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`lost sales to JLI, has reduced the business and profits of JLI, and has greatly injured the general
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`reputation and goodwill of JLI, all to JLI's damage in an amount not yet ascertainable, but will be
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`determined during this action or to be considered in relation to a request for statutory damages.
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`45.
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`JLI alleges, on information and belief, that Defendant has derived, received, and
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`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
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`advantages in an amount not yet ascertainable, but will be determined during this action or to be
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`considered in relation to a request for statutory damages.
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`46.
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`On information and belief, Defendant acted intentionally and/or willfully in using
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`the JUUL Marks on the Counterfeit Goods, knowing that the JUUL Marks belonged to JLI, that
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`the Counterfeit Goods were in fact counterfeit, and that Defendant was not authorized to use the
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`JUUL Marks on the Counterfeit Goods.
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`47.
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`Defendant's acts of violating 15 U.S.C. §1125(a), directly and/or in contributory
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`or vicarious manner, have caused, and will continue to cause, JLI irreparable harm unless they
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`are enjoined by this Court. On information and belief, Defendant's actions were committed in
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`bad faith and with the intent to cause confusion and mistake, and to deceive the consuming
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`public as to the source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit
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`Goods.
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`COUNT III
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`UNFAIR COMPETITION – COUNTERFEIT GOODS (15 U.S.C. §1125(a))
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`48.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1 through 47 as though set forth fully herein.
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`49.
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`An express purpose of the Lanham Act is to protect commercial parties against
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`unfair competition.
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`50.
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`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
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`distinctive words, symbols, color schemes, and designs through which JLI presents its products
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`to the market constitutes wrongful and unfair business practices and marketplace bad faith,
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`resulting in inaccurate representations to the consuming public that the Counterfeit Goods sold
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`by Defendant originated from or somehow are authorized by or affiliated with JLI. Defendant so
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`acted for its own financial benefit in disregard to the harm being caused to JLI.
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`51.
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`Defendant's actions as described herein constitute violation of 15 U.S.C.
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`§1125(a)(1)(A), as such actions are likely to cause confusion, or to cause mistake, or to deceive
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`as to the affiliation, connection, or association of Defendant with JLI and/or as to the origin,
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`sponsorship, and/or approval of the Counterfeit Goods by JLI. These acts amount to false
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`representations to compete unfairly with JLI.
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`52.
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`JLI has been damaged as a result of Defendant's actions described herein. JLI
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`alleges, on information and belief, that Defendant's sale of the Counterfeit Goods has resulted in
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`lost sales to JLI, has reduced the business and profits of JLI, and has greatly injured the general
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`reputation and goodwill of JLI, all to JLI's damage in an amount not yet ascertainable, but will be
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`determined during this action or to be considered in relation to a request for statutory damages.
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`53.
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`JLI alleges, on information and belief, that Defendant has derived, received, and
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`will continue to derive and receive from the aforesaid acts of infringement, gains, profits, and
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`advantages in an amount not yet ascertainable, but will be determined during this action or to be
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`considered in relation to a request for statutory damages.
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`54.
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`On information and belief, Defendant acted intentionally and/or willfully in using
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`the JUUL Marks on the Counterfeit Goods, knowing that the JUUL Marks belonged to JLI, that
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`the Counterfeit Goods were in fact counterfeit, and that Defendant was not authorized to use the
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`JUUL Marks on the Counterfeit Goods.
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`55.
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`Defendant's acts of violating 15 U.S.C. §1125(a), directly and/or in contributory
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`or vicarious manner, have caused, and will continue to cause, JLI irreparable harm unless they
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`are enjoined by this Court. On information and belief, Defendant's actions were committed in
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`bad faith and with the intent to cause confusion and mistake, and to deceive the consuming
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`public as to the source, sponsorship, and/or affiliation of Defendant and/or the Counterfeit
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`Goods.
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`COUNT IV
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`COMMON LAW UNFAIR COMPETITION
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`56.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1 through 55 as though set forth fully herein.
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`57.
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`Defendant has, through the conduct described above, engaged in unfair trade
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`practices and unfair competition.
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`58.
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`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
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`distinctive words, symbols, color schemes, and designs through which JLI presents its products
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`to the market constitutes wrongful and unfair business practices and marketplace bad faith,
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`resulting in inaccurate representations to the consuming public that the Counterfeit Goods sold
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`by Defendant originated from or somehow are authorized by or affiliated with JLI. Defendant so
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`acted for Defendant's own financial benefit in disregard to the harm being caused to JLI.
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`59.
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`On information and belief, Defendant acted with full knowledge of JLI's use of
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`and statutory and common law rights to the JUUL Marks, and without regard to the likelihood of
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`confusion of the public created by Defendant's activities.
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`60.
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`Defendant's actions demonstrate an intentional, willful, and malicious intent to
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`trade on the goodwill associated with the JUUL Marks to the great and irreparable injury of JLI.
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`Defendant has willfully and deliberately sought to benefit from, and to trade upon, the good
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`works, good name, and good reputation of JLI, all to JLI's financial damage and detriment,
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`including by injuring and impairing the goodwill and reputation of JLI in excess of any
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`jurisdictional minimum of this Court.
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`61.
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`The foregoing acts of Defendant are causing irreparable injury to JLI and to its
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`goodwill and reputation, and will continue to both damage JLI and deceive the public unless
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`enjoined by this Court. JLI has no adequate remedy at law and the public interest would be
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`served by enjoining Defendant's unlawful activities.
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`62.
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`On information and belief, Defendant has derived, received, and will continue to
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`derive and receive from the aforesaid acts of infringement, gains, profits, and advantages in an
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`amount to be determined during this action. Defendant's unlawful actions are causing and will
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`cause JLI monetary damage in an amount to be determined during this action.
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`COUNT V
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`TRADEMARK INFRINGEMENT UNDER
`LOUISIANA’S TRADEMARK STATUTE, LA. REV. STAT. § 51:222
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`63.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1-62 as though set forth fully herein.
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`64.
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`The acts of Defendant constitute trademark infringement under the law of the
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`State of Louisiana, La. Rev. Stat. § 51:222.
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`65.
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`66.
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`JLI’s JUUL Marks are valid common law trademarks.
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`Defendant’s unauthorized use of the JUUL Marks is likely to cause confusion,
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`mistake, or deceive the consuming public as to the source of Defendant’s goods.
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`67.
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`Upon information and belief, Defendant deliberately appropriated the JUUL
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`Marks with the intent to trade off the goodwill and reputation established by JLI.
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`68.
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`By reason of Defendant’s conduct, JLI has and will continue to suffer irreparable
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`harm, and unless JLI is enjoined from continuing its wrongful acts, the damage to JLI will
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`continue.
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`69.
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`In addition to an injunction, JLI is entitled to damages in an amount to be
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`determined at trial. JLI is unable to ascertain, at present, the full extent of the monetary damages
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`it has suffered.
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`COUNT VI
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`INJURY TO BUSINESS REPUTATION UNDER
`LOUISIANA’S TRADEMARK STATUTE, LA. REV. STAT. § 51:223.1
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`70.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1-69 as though set forth fully herein.
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 13 of 16
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`71.
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`As indicated above, due in large part to the substantial commercial success of the
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`JUUL Products, the JUUL brand is well-known to consumers and has garnered extensive
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`coverage by the media.
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`72.
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`Defendant’s willful use and infringement of the JUUL Marks has created an
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`association that impairs the actual or acquired distinctiveness of JLI’s JUUL Marks, which has
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`resulted in a likelihood of injury to JLI’s business reputation under La. Rev. Stat. § 51:223-1.
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`73.
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`JLI is entitled to all available remedies provided by La. Rev. St. § 51:223-1,
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`including but not limited to preliminary and permanent injunctive relief, and/or any other
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`equitable relief.
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`COUNT VII
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`LOUISIANA UNFAIR TRADE PRACTICES PURSUANT TO LA. REV. STAT.
`§ 51:1401, ET SEQ., SEEKING INJUNCTIVE AND MONETARY RELIEF
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`74.
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`JLI re-alleges and incorporates by this reference each and every allegation in
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`paragraphs 1 through 73 as though set forth fully herein.
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`75.
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`This is a claim for an injunction arising under La. Rev. Stat. § 51:1405 and 1407,
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`and for damages arising under La. Rev. Stat. § 51:1405 and 1409.
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`76.
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`Defendant has, through the conduct described above, engaged in conduct
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`constituting unfair and deceptive trade practices and unfair methods of competition in violation
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`of La. Rev. Stat. § 51:1405.
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`77.
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`Defendant's unauthorized use of the JUUL Marks, brand names, and the other
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`distinctive words, symbols, color schemes, and designs through which JLI presents its products
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`to the market has caused and/or is likely to cause confusion among consumers. Defendant's acts
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`result in inaccurate representations to the consuming public that the Counterfeit Goods sold by
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`Defendant originated from or somehow are authorized by or affiliated with JLI.
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`78.
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`JLI has suffered actual injury and has been damaged by virtue of Defendant's
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`unfair and deceptive trade practices. Defendant's unlawful actions are causing and will cause JLI
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`monetary damage in an amount to be determined during this action. Pursuant to La. Rev. Stat.
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 14 of 16
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`§ 51-1409, JLI is entitled to treble damages and attorneys' fees for Defendant's unfair and
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`deceptive acts.
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`79.
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`The foregoing acts of Defendant are causing irreparable injury to JLI and to its
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`goodwill and reputation, and will continue to both damage JLI and deceive the public unless
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`enjoined by this Court. JLI has no adequate remedy at law and the public interest would be
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`served by enjoining Defendant's unlawful activities.
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`80. On information and belief, Defendant has derived and received, and will
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`continue to derive and receive from the aforesaid unfair and deceptive trade practices,
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`gains, profits, and advantages in an amount to be determined during this action.
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`REQUEST FOR RELIEF
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`WHEREFORE, JLI hereby respectfully requests the following relief against Defendant
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`Smoke Sum LLC, a Louisiana limited liability company, as follows:
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`1.
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`An award of Defendant's profits and JLI's damages for trademark infringement
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`under 15 U.S.C. §§ 1114 and 1117, trebled, in an amount to be proven at trial;
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`2.
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`An award of Defendant's profits and JLI's damages for false designation of origin
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`under 15 U.S.C. §1125(a), trebled, in an amount to be proven at trial;
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`3.
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`An award of Defendant's profits and JLI's damages for unfair competition under
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`15 U.S.C. §1125(a), trebled, in an amount to be proven at trial;
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`4.
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`In the alternative to Defendant's profits and JLI's damages for trademark
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`infringement, an award of statutory damages pursuant to 15 U.S.C. §1117(c) of
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`$2,000,000.00 for each of the counterfeited trademarks willfully utilized by
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`Defendant;
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`5.
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`An injunction by this Court prohibiting Defendant, and its respective agents,
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`servants, employees, and representatives and all persons in active concert and
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`participation with them, during the pendency of this action and permanently
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`thereafter, from: engaging or continuing to engage in the infringing, unlawful,
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`unfair, or fraudulent business acts or practices described herein, including the
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 15 of 16
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`marketing, sale, distribution, and/or other dealing in any non-genuine JUUL
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`Products, including fake counterfeit products or unauthorized grey-market
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`products; using without permission any mark or other intellectual property right
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`of JLI; acting to infringe the JUUL Marks; falsely designating the origin of any
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`product to be from JLI; engaging in unfair competition with JLI; or acting in any
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`other manner to derogate JLI's intellectual property rights;
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`6.
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`An Order requiring that Defendant provide complete accountings and for
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`equitable relief, including that Defendant disgorge and return or pay JLI its ill-
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`gotten gains obtained from the illegal transactions entered into and/or pay
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`restitution;
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`7.
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`An Order that an asset freeze or constructive trust be imposed over all monies and
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`profits in Defendant's possession which rightfully belong to JLI;
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`8.
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`Pursuant to 15 U.S.C. §1116, including upon ex parte application, an Order for
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`the seizure of goods and counterfeit marks and the means of making such marks,
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`and records documenting the manufacture, sale, or receipt of things involved in
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`trademark violations;
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`9.
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`Pursuant to 15 U.S.C. §1118, an Order requiring that Defendant and all others
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`acting under Defendant's authority, at their cost, be required to deliver up to JLI
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`for destruction all products, accessories, labels, signs, prints, packages, wrappers,
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`marketing materials, and other material in their possession, custody, or control
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`bearing any of the JUUL Marks;
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`Treble damages;
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`JLI's reasonable attorneys' fees;
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`All costs of suit;
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`Prejudgment interest; and
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`Such other and further relief as the Court may deem just and equitable.
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`-15-
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`10.
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`11.
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`12.
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`13.
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`14.
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`Case 2:20-cv-03241-JTM-DMD Document 1 Filed 11/30/20 Page 16 of 16
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`Respectfully submitted,
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`BAKER DONELSON BEARMAN
`CALDWELL & BERKOWITZ, PC
`
`/s/ Benjamin W. Janke
`BY:
`BENJAMIN W. JANKE (31796)
`MEGHAN E. CARTER (35074)
`201 St. Charles Avenue, Suite 3600
`New Orleans, Louisiana 70170
`Telephone: (504) 566-5200
`Facsimile: (504) 636-4000
`bjanke@bakerdonelson.com
`mmentz@bakerdonelson.com
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`ATTORNEYS FOR JUUL LABS, Inc.
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