According to LAW360, the maker of Elfbar vape products was ordered by a Florida federal judge on Feb. 23 to stop marketing Elfbar e-cigarettes anywhere in the U.S. The judge found that VPR Brands LP, which makes and sells “Elf” brand vapes, is likely to succeed on its claims that the Elfbar vapes infringe its trademark.
In the order, U.S. District Judge Aileen Cannon found that VPR has shown there is a likelihood of confusion, and the company stands to suffer harm if Shenzhen Weiboli Technology Co. Ltd. is allowed to keep selling the Elfbar vapes, given the similarities between the products and how they are marketed.
In Judge Cannon’s order Thursday, she wrote that VPR’s registration of the trademark grants it priority, and in addition, the company has shown there is a likelihood of confusion because “Elf” is not something linked to vaping products specifically, while the “bar” suffix is commonly used for vapes that have a bar shape — so consumers familiar with vaping could see Elfbar and believe it is from the Elf brand.
However, in November, VPR asked for an injunction blocking Shenzhen Weiboli from continuing to use the Elfbar mark, arguing the alleged infringement is costing VPR about $100 million because of the effect on future sales.
Shenzhen Weiboli had argued VPR’s trademark is not enforceable under the unlawful use doctrine, saying VPR’s products are a “new tobacco product” but don’t have U.S. Food and Drug Administration (FDA) approval. Judge Cannon, however, wrote that the Eleventh Circuit tends to hold that doctrine as an administrative tool for the U.S. Trademark Trial and Appeal Board (TTAB) in trademark disputes.
According to the order, neither the FDA nor the TTAB has any open cases about the Elf mark, and the court would not effectively strip VPR of its valid trademark without any finding from those agencies that it is invalid.
Judge Cannon also ordered VPR to pay a $500,000 bond as a condition for the injunction, saying she wouldn’t impose the “extraordinary” $200 million that Shenzhen Weiboli had argued was necessary to make up for its potential losses.
Finally, the judge denied Shenzhen Weiboli’s bid to reopen the evidentiary hearing about the injunction, saying the court has already held two hearings over nine hours and received a lot of evidence, plus post-hearing briefs.
“VPR is pleased that the court found Elf is a strong trademark and granted the injunction,” Joel Rothman, representing VPR, said Thursday. “The injunction will allow VPR to move quickly against infringers and counterfeiters in the marketplace.”