N.D. Ga.

Vape Maker Sues Leading Competitor Over Confusingly Similar Arbitrary Mark

VPR Brands, LP v. Vape Loft Abercorn, LLC et al, Civil Action No. 4:23-cv-00115-RSB-CLR (S.D. Ga., May 1, 2023)

An e-cigarette maker filed suit in the Southern District of Georgia to stop the use of what it alleges is a confusingly similar mark. Plaintiff VPR Brands, LP, brought a trademark action under the Lanham Act and common law to enjoin six Defendants from their unauthorized use of a mark. According to the Complaint, Defendants’ “ELFBAR” products infringe VPR Brands’ “ELF” mark. VPR Brands alleges to have first used the mark “ELF” in relation to the sale of electronic cigarettes as early as November 2017. The following year, VPR obtained the U.S. Trademark Registration No. 5,486,616 for “ELF” in International Class 34, which covers e-cigarettes and vapes. According to the Complaint, “ELF is an arbitrary mark that had no significance in the electronic cigarettes business prior to VPR’s usage of the mark [and] deserves greater trademark protection.” Complaint, ¶¶ 15-16.

VPR asserts that Defendants’ addition of the word “bar” fails to distinguish the ELFBAR products from the ELF products. According to VPR, the word “bar” is commonly used to refer to bar shaped e-cigarettes, as evidenced by at least three other e-cigarette brands, namely Geek Bar, Air Bar, and Puff Bar. Id. at ¶ 52. What’s more, adding the word “bar,” which means a “substance formed into a regular narrow block,” is merely descriptive of the shape of the Defendants’ products, and yet again fails to distinguish the two products. Id. at ¶ 51. In addition, VPR relies on their federal registration and use in commerce to assert that Defendants’ use of ELF electronic cigarettes is both junior and unauthorized. Id. at ¶ 47.

 The Complaint brings one count for trademark infringement under 15 U.S.C. § 1114(a), one count for false designation of origin under 15 U.S.C. § 1125(a), and one count of common law unfair competition.

The case has been assigned to Judge Christopher Ray.

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