Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.730 Filed 09/29/21 Page 1 of 69
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`BREEZE SMOKE LLC,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`Civil Action No. 3:21-cv-11835-RHC-CI
`
`Hon. Robert H. Cleland
`Magistrate Judge Curtis Ivy, Jr
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`
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`JURY TRIAL DEMANDED
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`Plaintiff/Counter-Defendant,
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`vs.
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`TRUCENTA HOLDINGS LLC,
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`Defendant/Counter-Plaintiff.
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`DEFENDANT/COUNTER-PLAINTIFF TRUCENTA HOLDINGS LLC'S
`FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Pursuant to Fed. R. Civ. P. 15, Defendant/Counter-Plaintiff Trucenta
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`Holdings LLC ("Trucenta"), by and through the undersigned counsel, files this First
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`Amended Answer, Affirmative Defenses and Counterclaims in this Action.
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`1
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`BREEZE SMOKE LLC,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Civil Action No. 3:21-cv-11835-RHC-CI
`
`Hon. Robert H. Cleland
`Magistrate Judge Curtis Ivy, Jr
`
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff/Counter-Defendant,
`
`vs.
`
`TRUCENTA HOLDINGS LLC,
`
`
`Defendant/Counter-Plaintiff.
`
`
`
`
`
`
`
`DEFENDANT/COUNTER-PLAINTIFF TRUCENTA HOLDINGS LLC'S
`FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
`
`Pursuant to Fed. R. Civ. P. 15, Defendant/Counter-Plaintiff Trucenta
`
`Holdings LLC ("Trucenta"), by and through the undersigned counsel, files this First
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`Amended Answer, Affirmative Defenses and Counterclaims in this Action.
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`1
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.731 Filed 09/29/21 Page 2 of 69
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`NATURE OF THE CASE
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`1.
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`This is an action for trademark infringement and unfair competition
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`under the Lanham Act, 15 U.S.C. §1051, et seq., as well as related state and common
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`law claims, in which Breeze Smoke is seeking immediate injunctive relief and
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`monetary damages for Defendant’s unlawful infringement of Breeze Smoke’s
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`valuable trademarks. Specifically, Defendant is a Michigan-based cannabis
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`company that is in the business of offering and selling cannabis-related goods and
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`services and smokers’ articles—including vaping devices, e-cigarette liquids,
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`ashtrays, lighters, tobacco grinders, cigarette rolling papers, and the like to
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`consumers in Michigan and elsewhere. Defendant is infringing Breeze Smoke’s
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`rights in its well-known BREEZE trademarks by using them to mislead consumers
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`into believing there exists some affiliation, sponsorship, or connection between
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`Breeze Smoke and Defendant when there is none, and by deliberately trading off of
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`the extensive goodwill that Breeze Smoke has developed and is continuing to
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`develop in its BREEZE trademarks.
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`ANSWER:
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`Defendant admits that the Complaint purports to be an action for trademark
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`infringement and unfair competition under the Lanham Act, 15 U.S.C. §1051, et
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`seq.; otherwise, Defendant denies the allegations of Paragraph 1.
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`2
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.732 Filed 09/29/21 Page 3 of 69
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`PARTIES, JURISDICTION AND VENUE
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`2.
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`Breeze Smoke is a limited liability company organized and existing
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`under the laws of the State of Michigan, with its principal place of business at 4654
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`Lilly Ct., West Bloomfield, Michigan 48323.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 2 and therefore denies the same.
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`3.
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`Upon information and belief, Defendant is a Michigan limited liability
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`company with its principal place of business at 1675 E. Maple, Troy, Michigan
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`48083.
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`ANSWER:
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`Defendant admits the allegation of Paragraph 3.
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`4.
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`Upon information and belief, Defendant is in the business of marketing,
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`offering, and selling various cannabis-related goods and services and smokers’
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`articles, including vaping devices, e-cigarette liquids, ashtrays, lighters, tobacco
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`grinders, cigarette rolling papers, and the like.
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`ANSWER:
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`Defendant admits that it sells cannabis-related goods and that it sells smokers
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`articles, but Defendant denies the characterization by Plaintiff of Defendant’s
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`business and any implication that the listing is a complete listing of goods and
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.733 Filed 09/29/21 Page 4 of 69
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`services offered by Defendant.
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`5.
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`Personal jurisdiction over Defendant is appropriate because Defendant
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`is located within this state and is subject to the general personal jurisdiction of this
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`Court. Personal jurisdiction over Defendant is also appropriate because Defendant
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`owns and operates its BREEZE cannabis store that is at issue in this litigation within
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`this District and because it offers and sells infringing BREEZE products and services
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`within this District to customers within this District.
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`ANSWER:
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`Paragraph 5 states legal conclusions to which no response is required. To the
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`extent a response is required, Defendant does not contest personal jurisdiction.
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`Defendant denies the characterization by Plaintiff of Defendant’s business and
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`stores.
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`6.
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`The Court has subject matter jurisdiction over this civil action pursuant
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`to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and 1338 in that this case arises under
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`the Lanham Act (15 U.S.C. § 1051, et seq.), as well as 28 U.S.C. § 1367, and
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`pursuant to the statutes and common law of the State of Michigan.
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`ANSWER:
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`Paragraph 6 states legal conclusions to which no response is required. To the
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`extent a response is required, Defendant reserves its right to later challenge or assert
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`subject matter jurisdiction with respect to any of Plaintiff’s claims.
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.734 Filed 09/29/21 Page 5 of 69
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`7.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)–(d).
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`ANSWER:
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`Paragraph 7 states legal conclusions to which no response is required. To the
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`extent a response is required, Defendant does not contest venue.
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`BACKGROUND
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`Breeze Smoke’s BREEZE Marks
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`8.
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`Breeze Smoke is engaged in the business of manufacturing and selling
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`a variety of tobacco and vaping products and smokers’ articles, including disposable
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`electronic vaping devices, under its BREEZE trademarks.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 5 and therefore denies the same.
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`9.
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`Since at least as early as May 2019, Breeze Smoke has continuously
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`used its BREEZE trademarks in connection with vaping products and related
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`products in Michigan and throughout the United States. A representative image of
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`products Breeze Smoke began selling under its BREEZE trademarks in or before
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`May 2019 follows:
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`5
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.735 Filed 09/29/21 Page 6 of 69
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 9 and therefore denies the same.
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`10.
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`In addition to its widespread and continuous use of the BREEZE
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`trademarks, Breeze Smoke owns United States Trademark Application No.
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`90/012,117 for the mark BREEZE SMOKE for “Disposable Electronic Cigarettes.”
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`A copy of the Trademark Electronic Search System (“TESS”) page from the United
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`States Patent and Trademark Office (“USPTO”) website showing the details of the
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`BREEZE SMOKE application is attached hereto as Exhibit A and incorporated
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`herein by reference.
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` ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 10 and therefore denies the same.
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`11. The BREEZE SMOKE application was filed on June 20, 2020 based
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.736 Filed 09/29/21 Page 7 of 69
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`on actual use of the mark in United States commerce and asserts use in United States
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`commerce since at least as early as March 1, 2020.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 11 and therefore denies the same.
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`12.
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`Breeze Smoke also owns United States Trademark Application No.
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`90/246,820 for the mark BREEZE PLUS for “Disposable Electronic Cigarettes.” A
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`copy of the TESS page from the USPTO website showing the details of the BREEZE
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`PLUS application is attached hereto as Exhibit B and incorporated herein by
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`reference.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 12 and therefore denies the same.
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`13.
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`The BREEZE PLUS application was filed on October 10, 2020 based
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`on actual use of the mark in United States commerce and asserts use in United States
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`commerce since at least as early as March 1, 2020.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 13 and therefore denies the same.
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`14.
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`Breeze Smoke also owns United States Trademark Application No.
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`7
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.737 Filed 09/29/21 Page 8 of 69
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`90/555,765 for the mark BREEZE PRO for “Disposable Electronic Cigarettes.” A
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`copy of the TESS page from the USPTO website showing the details of the BREEZE
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`PRO application is attached hereto as Exhibit C and incorporated herein by
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`reference.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 14 and therefore denies the same.
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`15.
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`The BREEZE PRO application was filed on March 2, 2021 based on
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`intent to use the mark in United States commerce.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 15 and therefore denies the same.
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`16.
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`Breeze Smoke also owns United States Trademark Application No.
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`90/650,997 for the mark BREEZE PALM for “cigarette wraps; cigarette rolling
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`papers; wraps in the nature of tobacco wraps; tobacco wraps; pre-rolled smoking
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`cones; rolling paper cones.” A copy of the TESS page from the USPTO website
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`showing the details of the BREEZE PALM application is attached hereto as Exhibit
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`D and incorporated herein by reference.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.738 Filed 09/29/21 Page 9 of 69
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`allegations of Paragraph 16 and therefore denies the same.
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`17.
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`The BREEZE PALM application was filed on April 16, 2021 based on
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`intent to use the mark in United States commerce.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 17 and therefore denies the same.
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`18.
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`Breeze Smoke also owns common law trademark rights in the
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`standalone mark BREEZE, which it has continuously used since at least May 2019.
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`Examples of Breeze Smoke’s use of the standalone BREEZE mark in connection
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`with its vaping products are shown below:
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`9
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.739 Filed 09/29/21 Page 10 of 69
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`ANSWER:
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`Defendant denies the allegations of Paragraph 18.
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`19.
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`Collectively, the BREEZE SMOKE application, the BREEZE PLUS
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`application, the BREEZE PRO application, the BREEZE PALM application, Breeze
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`Smoke’s common law rights in those marks, and Breeze Smoke’s common law
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`rights in the standalone mark BREEZE, shall be referred to herein as the “BREEZE
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`Marks.”
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`ANSWER:
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`Paragraph 19 does not assert any allegations of fact, but simply defines what
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`the Complaint means by the term “BREEZE Marks.” Defendant, however, denies
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`that Breeze Smoke has any common law rights in any BREEZE-related mark to the
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`10
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.740 Filed 09/29/21 Page 11 of 69
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`extent that this is being asserted by Plaintiff either alone as a standalone mark or in
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`combination with another term or markings.
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`20.
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`Breeze Smoke’s BREEZE products sold under its BREEZE Marks are
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`promoted, offered and sold through online retail platforms, including at Breeze
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`Smoke’s website www.breezesmoke.com, as well as at a substantial number of
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`bricks-and-mortar locations throughout Michigan and the United States.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 20 and therefore denies the same.
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`21.
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`Breeze Smoke has spent significant time, effort, and resources
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`establishing its BREEZE Marks in the minds of its customers and the public via
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`advertisements and promotions,
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`including
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`through online advertising and
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`promotion, as representative of Breeze Smoke’s high quality vaping products,
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`smokers’ articles, and related goods.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 21 and therefore denies the same.
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`22.
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`Breeze Smoke has generated substantial revenue from the sale of
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`products and services under its BREEZE Marks.
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`11
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.741 Filed 09/29/21 Page 12 of 69
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 22 and therefore denies the same.
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`23. As a result of Breeze Smoke’s continuous use, extensive sales,
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`advertising, and promotion of its products using its BREEZE Marks, the BREEZE
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`Marks enjoy widespread recognition and an excellent reputation, and are recognized
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`by the public as emanating exclusively from Breeze Smoke and representative of
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`Breeze Smoke’s high quality products and services.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 23 and therefore denies the same.
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`24. As a result of Breeze Smoke’s efforts and commercial success in
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`advertising, marketing and promoting products and services under the BREEZE
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`Marks, Breeze Smoke has generated substantial and valuable goodwill in the
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`BREEZE Marks, and the BREEZE Marks have become intangible assets of
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`substantial commercial value to Breeze Smoke.
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 24 and therefore denies the same.
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`25.
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`In or around February 2020, Breeze Smoke became aware that
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`12
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.742 Filed 09/29/21 Page 13 of 69
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`Defendant was and is marketing, offering and selling cannabis-related products and
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`services, including vaping devices, e-cigarette liquids, ashtrays, lighters, tobacco
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`grinders, cigarette rolling papers, and the like, under the trademark “BREEZE.”
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegations of Paragraph 25 and therefore denies the same.
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`26.
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`Upon information and belief, Trucenta markets, offers and sells its
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`infringing BREEZE-branded cannabis-related products and services through its
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`website at breeze.us and at a bricks-and-mortar location operating under the name
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`and mark BREEZE at 24517 John R Rd., Hazel Park, MI 48030.
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`ANSWER:
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`Defendant admits that it has a location operating under the name and mark
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`BREEZE at 24517 John R Rd., Hazel Park, MI 48030; otherwise, Defendant denies
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`the allegations of Paragraph 26.
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`27.
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`Examples of Trucenta’s infringing use of the BREEZE mark in
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`connection with the marketing, offer and sale of cannabis-related products and
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`services are set forth in the image below:
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.743 Filed 09/29/21 Page 14 of 69
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`ANSWER:
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`Defendant denies the allegations of Paragraph 27.
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`28.
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`Additional examples displaying Defendant’s infringing uses are
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`attached hereto as Exhibit E and incorporated herein by reference.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 28.
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`29.
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`In or around November 2020, Breeze Smoke also became aware that
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`Defendant filed a number of United States Trademark Applications (and to date has
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`received two United States Trademark Registrations) for marks comprised of or
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`incorporating the term “BREEZE” covering smokers’ articles and goods ancillary
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`or related to a cannabis business. A chart summarizing these applications and
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`registrations is set forth below:
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` Mark
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`1 BREEZE
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`
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`Goods
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`App./Reg
`No.
`90/292,582 Class 3: Electronic
`14
`
`Filing
`Date
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`Reg./First
`Use Dates
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`
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.744 Filed 09/29/21 Page 15 of 69
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`cigarette liquid
`comprised of essential
`oils; to the extent any of
`the foregoing involves
`use of cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis
`
`Class 5: Plant extracts
`for pharmaceutical
`purposes, namely, for
`the treatment of nausea,
`anxiety, pain, glaucoma,
`seizures, multiple
`sclerosis and Crohn's
`Disease; to the extent
`any of the foregoing
`involves cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis
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`Class 34: Electronic
`cigarette liquids
`comprised of flavoring
`in liquid form, other
`than essential oils, used
`to refill electronic
`cigarette cartridges; to
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`15
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.745 Filed 09/29/21 Page 16 of 69
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`the extent any of the
`foregoing involves use
`of cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis; smoking
`pipes; smoking pipe
`cleaners; electronic
`smoking pipes; oral
`vaporizers for smokers
`
`
`90/292,579 Class 3: Electronic
`cigarette liquid
`comprised of essential
`oils; to the extent any of
`the foregoing involves
`use of cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis
`
`Class 5: Plant extracts
`for pharmaceutical
`purposes, namely, for
`the treatment of nausea,
`anxiety, pain, glaucoma,
`seizures, multiple
`sclerosis and Crohn's
`Disease; to the extent
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`16
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`2
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`11/2/2020 N/A (Filed
`Under
`Section 1B)
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.746 Filed 09/29/21 Page 17 of 69
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`any of the foregoing
`involves cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis
`
`Class 34: Electronic
`cigarette liquids
`comprised of flavoring
`in liquid form, other
`than essential oils, used
`to refill electronic
`cigarette cartridges; to
`the extent any of the
`foregoing involves use
`of cannabis, such
`cannabis shall have a
`delta-9 THC
`concentration of not
`more than 0.3% on a dry
`weight basis; smoking
`pipes; smoking pipe
`cleaners; electronic
`smoking pipes; oral
`vaporizers for smokers
`90/292,573 Class 7: Vacuum
`packaging machines
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`Class 30: Candy; Candy
`bars
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`Class 32: Bottled water
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`17
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`3 BREEZE
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`11/2/2020 N/A (Filed
`Under
`Section 1B)
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.747 Filed 09/29/21 Page 18 of 69
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`4
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`5
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`11/2/2020 N/A (Filed
`Under
`Section 1B)
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`11/2/2020 N/A (Filed
`Under
`Section 1B)
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`
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`90/292,568 Class 7: Vacuum
`packaging machines
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`Class 30: Candy; Candy
`bars
`
`Class 32: Bottled water
`90/292,558 Class 14: Ornamental
`lapel pins
`Class 16: Decals;
`Posters; Stickers; Plastic
`food storage bags for
`household use
`Class 18: Handbags;
`Wallets; Backpacks;
`Book bags; Sports bags;
`All-purpose reusable
`carrying bags
`Class 21: Containers for
`household use;
`Insulating sleeve holders
`for beverage cans;
`Plastic storage
`containers for domestic
`use; Plastic storage
`containers for household
`use; Portable coolers,
`non- electric
`Class 34: Ashtrays for
`smokers; Cigarette
`rolling papers; Smokers'
`rolling trays; Cigarette
`lighters; Tobacco
`grinders
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`18
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.748 Filed 09/29/21 Page 19 of 69
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`
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`
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`10/15/202
`0
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`N/A (Filed
`Under
`Section 1B)
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`6/19/2019 Reg. Date:
`3/16/2021
`Claimed
`First Use
`Date:
`4/6/2020
`
`90/292,552 Class 14: Ornamental
`lapel pins
`Class 16: Decals;
`Posters; Stickers; Plastic
`food storage bags for
`household use
`Class 18: Handbags;
`Wallets; Backpacks;
`Book bags; Sports bags;
`All-purpose reusable
`carrying bags
`Class 21: Containers for
`household use;
`Insulating sleeve holders
`for beverage cans;
`Plastic storage
`containers for domestic
`use; Plastic storage
`containers for household
`use; Portable coolers,
`non- electric
`Class 34: Cigarette
`rolling papers; Smokers'
`rolling trays
`90/256,675 Class 34: Ashtrays for
`smokers; Lighters for
`smokers; Tobacco
`grinders
`Class 25: Beanies; hats;
`hooded sweatshirts;
`long- sleeved shirts;
`shirts; sweaters; tank
`tops; graphic T-shirts;
`short- sleeved or long-
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`6296005
`
`19
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`6 BREEZE
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`7 BREEZE
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`BREEZE
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`8
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.749 Filed 09/29/21 Page 20 of 69
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`sleeved T-shirts; sweat
`shirts; T-shirts; tee
`shirts; woolly hats
`Class 25: Beanies; hats;
`hooded sweatshirts;
`long- sleeved shirts;
`shirts; sweaters; tank
`tops; graphic T-shirts;
`short- sleeved or long-
`sleeved T-shirts; sweat
`shirts; T-shirts; tee
`shirts; woolly hats
`
`6/19/2019 Reg. Date:
`3/16/2021
`Claimed
`First Use
`Date:
`4/6/2020
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`9
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`6296004
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`ANSWER:
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`Defendant lacks knowledge of information sufficient to admit or deny the
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`allegation of Paragraph 29 as to when Plaintiff became aware of any filings and
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`therefore denies the same; otherwise Defendant admits that it filed the applications
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`for registrations listed in Paragraph 29 but denies any characterization by Plaintiff
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`of Defendant’s business, goods, and/or services.
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`30.
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`Records from the Trademark Electronic Search System (“TESS”) of the
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`United States Patent and Trademark Office reflecting the current status of these
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`applications and registrations are attached hereto as Exhibit F and incorporated
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`herein by reference.
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`20
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.750 Filed 09/29/21 Page 21 of 69
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`ANSWER:
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`Defendant admits that Paragraph 30 refers to Exhibit F, which purports to
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`show records from the Trademark Electronic Searcy System; otherwise, Defendant
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`lacks knowledge of information sufficient to admit or deny the allegations of
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`Paragraph 30 and therefore denies the same.
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`31. Defendant is competing with Breeze Smoke in that it sells its cannabis-
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`related products and services and smokers’ articles to the same or similar customers
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`or the same or similar classes of customers as Breeze Smoke.
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`ANSWER:
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`Defendant denies any implication that its goods and services are limited to
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`only cannabis-related products; otherwise, Defendant
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`lacks knowledge of
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`information sufficient to admit or deny the allegations of Paragraph 31 and therefore
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`denies the same.
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`32.
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`Breeze Smoke has not licensed or otherwise authorized Defendant to
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`use its highly valuable and well-established BREEZE Marks in any manner
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`whatsoever.
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`ANSWER:
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`Defendant admits that it is not licensed or authorized by Plaintiff to use any
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`mark; denied as to any implication that Defendant needs such authorization and
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`denies that Plaintiff has BREEZE marks, that any such marks are well-established,
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`21
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.751 Filed 09/29/21 Page 22 of 69
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`and that any such marks are highly valuable.
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`33. Upon information and belief, Defendant knew of Breeze Smoke’s prior
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`use of the BREEZE Marks, was and is well aware of the goodwill and market value
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`of Breeze Smoke’s BREEZE Marks, and intentionally chose to use the BREEZE
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`Marks to suggest a false affiliation between Breeze Smoke and its goods and services
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`on the one hand and Defendant and its goods and services on the other, or to confuse
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`customers about the source of the parties’ respective goods.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 33.
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`34.
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`Through its unauthorized and infringing uses of the BREEZE Marks,
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`Defendant is deliberately and improperly capitalizing upon the goodwill that Breeze
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`Smoke has built up in its BREEZE Marks.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 34.
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`35. Defendant’s unauthorized, unlawful and intentional use of
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`the
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`BREEZE Marks has caused, and will continue to cause, a likelihood of confusion
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`among consumers and potential consumers as to the source or origin of Defendant’s
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`products and services and the sponsorship or endorsement of those goods and
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`services by Breeze Smoke.
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`22
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.752 Filed 09/29/21 Page 23 of 69
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`ANSWER:
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`Defendant denies the allegations of Paragraph 35.
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`36. As a direct and proximate result of Defendant’s unauthorized conduct,
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`Breeze Smoke has been and will continue to be damaged by confusion among
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`consumers and potential consumers as to Breeze Smoke’s association or connection
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`with, or endorsement or authorization of, Defendant and/or its products and services,
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`at least in part in ways that cannot be adequately measured or fully remedied by
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`monetary damages.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 36.
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`37. As a result of Defendant’s intentional misappropriation of the BREEZE
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`Marks, Defendant has caused, and will continue to cause, irreparable injury to
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`Breeze Smoke and has substantially damaged the value of Breeze Smoke’s BREEZE
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`Marks.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 37.
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`38. Defendant has unjustly enriched itself at Breeze Smoke’s expense by
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`promoting and selling products and services in connection with the BREEZE Marks
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`in a manner that appropriates and exploits Breeze Smoke’s hard-earned goodwill
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`and reputation. Among the benefits that Defendant has gained from its unlawful and
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`23
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.753 Filed 09/29/21 Page 24 of 69
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`willful conduct are increased revenues from the sale of its infringing products and
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`services.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 38.
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`39.
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`In March 2021, the USPTO examining attorney assigned to examine
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`Defendant’s U.S. Trademark Application Nos. 90/292,582; 90/292,579; 90/292,558;
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`90/292,552; and 90/256,675 for its “BREEZE”-formative marks issued suspension
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`letters and office actions refusing registration for those applications based, inter alia,
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`on Breeze Smoke’s prior-pending U.S. Application Nos. 90/012,117 for BREEZE
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`SMOKE and 90/246,820 for BREEZE PLUS. Relevant excerpts from the office
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`actions and suspension letters issued against Defendant’s applications are attached
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`hereto as Exhibit G and incorporated herein by reference.
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`ANSWER:
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`Defendant admits such actions by the examining attorney; Defendant denies
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`any characterization that excerpts are relevant; Defendant denies all remaining
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`allegations of Paragraph 39.
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`40.
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`In March 2021, Defendant filed a Notice of Opposition with the United
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`States Trademark Trial and Appeal Board against Breeze Smoke’s U.S. Application
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`No. 90/012,117 for BREEZE SMOKE. A copy of Defendant’s Notice of Opposition
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`against Breeze Smoke’s BREEZE SMOKE application is attached hereto as Exhibit
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`24
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.754 Filed 09/29/21 Page 25 of 69
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`H and incorporated herein by reference.
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`ANSWER:
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`Defendant admits the allegations of Paragraph 40.
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`41.
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`In the Notice of Opposition, Defendant affirmatively states that Breeze
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`Smoke’s BREEZE SMOKE mark is likely to be confused with Defendant’s
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`“BREEZE”-formative marks. Specifically, Defendant indicates that the parties’
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`marks are similar, the parties’ respective goods are confusingly similar, and the
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`customers and channels of trade for the parties’ respective products and services are
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`likely to be similar or overlapping. See Exhibit H, at ¶¶ 21-27.
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`ANSWER:
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`Defendant admits the allegations of Paragraph 41 that it filed a Notice of
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`Opposition. Defendant denies Plaintiff’s characterization relating to the use of
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`formative marks and also denies any implication that the Defendant’s goods are only
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`marijuana products.
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`42.
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`Since Breeze Smoke became aware of Defendant’s trademark filings in
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`November 2020, the parties have been in settlement discussions in an effort to
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`resolve this dispute; however, they have not been able to reach resolution.
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`ANSWER:
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`Defendant admits that some settlement discussions have taken place from
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`November 2020 and that no resolution was reached, but deny that settlement
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`25
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.755 Filed 09/29/21 Page 26 of 69
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`discussions began in November 2020, nor where they continuous until the date of
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`the Complaint.
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`43.
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`To date, Defendant has not ceased selling or offering to sell its
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`infringing cannabis-related products and services and smokers’ articles under the
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`BREEZE Marks.
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`ANSWER:
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`Defendant admits that it has not ceased selling any of its products under
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`Trucenta’s BREEZE marks, but denies any implication that Defendant had any
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`obligation to stop such sales and any implication or inference that all of its products
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`and services are cannabis related.
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`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
`(15 U.S.C. § 1125(a))
`Breeze Smoke realleges and incorporates by reference the allegations
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`44.
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`contained in the preceding paragraphs as if fully set forth herein.
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`ANSWER:
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`Defendant states that paragraph 44 contains no factual allegations for which a
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`response is necessary. Defendant incorporates by reference the Answers provided in
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`the preceding paragraphs as if fully set forth herein.
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`45.
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`Breeze Smoke owns valid and enforceable rights in the BREEZE Marks
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`in connection with the goods and services it offers and sells in connection therewith
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`26
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.756 Filed 09/29/21 Page 27 of 69
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`by virtue of its extensive use, promotion, and advertisement of the marks, and has
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`possessed such rights at all times material hereto.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 45.
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`46.
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`Breeze Smoke’s use of its BREEZE Marks in connection with tobacco
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`and other vaping products predates any use by Defendant.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 46.
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`47. Defendant has knowingly and intentionally used and continue to use in
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`commerce the BREEZE Marks in connection with the cannabis-related goods and
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`services that Defendant sells and offers to sell.
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`ANSWER:
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`Defendant admits that it has not ceased selling any of its products under
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`Trucenta’s BREEZE marks, but denies any implication that Defendant had any
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`obligation to stop such sales and any implication or inference that all its products
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`and services are cannabis related.
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`48. Defendant has been informed and is fully aware of Breeze Smoke’s
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`extensive prior use of the BREEZE Marks. Defendant knows it is misappropriating
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`the BREEZE Marks because it knows it is not authorized to sell its cannabis-related
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`products and services under the BREEZE Marks.
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`27
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.757 Filed 09/29/21 Page 28 of 69
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`ANSWER:
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`Defendant denies the allegations of Paragraph 48.
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`49.
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`Breeze Smoke has not authorized, licensed, or otherwise condoned or
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`consented to Defendant’s use of the BREEZE Marks.
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`ANSWER:
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`Defendant admits that it is not licensed or authorized by Plaintiff to use any
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`mark. Defendant denies any implication that Defendant needs such authorization
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`and denied that Plaintiff has BREEZE marks.
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`50. Defendant’s use of the BREEZE Marks is likely to confuse, mislead,
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`and/or deceive customers, purchasers, and members of the general public as to the
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`origin, source, sponsorship, or affiliation of Defendant and Breeze Smoke, and/or
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`Defendant’s goods and services on the one hand and Breeze Smoke’s goods and
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`services on the other, and is likely to cause such people to believe in error that
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`Defendant’s goods have been authorized, sponsored, approved, endorsed, or
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`licensed by Breeze Smoke or that Defendant is in some way affiliated with Breeze
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`Smoke.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 50.
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`51. Defendant’s use of the BREEZE Marks is likely to confuse, mislead,
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`and/or deceive customers, purchasers, and members of the general public as to the
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`28
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`Case 3:21-cv-11835-RHC-CI ECF No. 19, PageID.758 Filed 09/29/21 Page 29 of 69
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`origin, source, sponsorship, or affiliation of Defendant and Breeze Smoke, and/or
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`Defendant’s goods and services on the one hand and Breeze Smoke’s goods and
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`services on the other, and is likely to cause such people to believe in error that Breeze
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`Smoke’s goods have been authorized, sponsored, approved, endorsed, or licensed
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`by Defendant or that Breeze Smoke is in some way affiliated with Defendant.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 51.
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`52.
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`Such confusion, deception or mistake has occurred, and is likely to
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`continue to occur, as a direct result of Defendant’s use of the BREEZE Marks in
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`connection with the display, advertising, promotion, offer of sale and sale of its
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`infringing cannabis-related products and services.
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`ANSWER:
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`Defendant denies the allegations of Paragraph 52.
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`53. Defendant’s actions constitute trademark infringement in violation of
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`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`ANSWER:
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