United States District Court, E.D. Virginia, Richmond Division
A. Gibney, Jr., United States District Judge.
Tobacco, L.P., Republic Technologies (NA), LLC, and Republic
Tobacco, L.P. brought this action against Aziz Thobani and
USA Imports VA, Inc., alleging violations of the Lanham Act
and Virginia common law. The plaintiffs served the defendants
with the complaint and summons on April 17, 2019. The
defendants failed to file responsive pleadings, and the
plaintiffs moved for entry of default. Pursuant to Federal
Rule of Civil Procedure 55(a), the Clerk entered default on
June 17, 2019. The plaintiffs now move for default judgment
under Rule 55(b). The Court held a hearing on the motion on
October 10, 2019.
plaintiffs manufacture and distribute TOP- and JOB-brand
cigarette rolling papers, two of the best-known and
longest-selling cigarette rolling papers in the United
States. The plaintiffs maintain federal trademark
registrations for the TOP and JOB marks. The plaintiffs have
spent significant time and resources marketing their
products, and they have developed considerable and valuable
goodwill associated with the marks.
2018, the plaintiffs learned that the defendants were selling
cigarette rolling papers with TOP- and JOB-brand marks at a
discounted price "because they were
'bad.'" (Dk. No. 20-2, ¶ 4.) A laboratory
analysis showed that the cigarette rolling papers were
defendant defaults, the defendant admits the well-pleaded
factual allegations in the complaint. Ryan v. Homecomings
Fin. Network, 253 F.3d 778, 780 (4th Cir. 2001). Thus,
in reviewing a motion for default judgment under Federal Rule
of Civil Procedure 55(b), courts accept as true
plaintiffs' well-pleaded allegations regarding liability.
Id. Courts must then determine whether the
allegations support the relief sought. Id.
Trafficking in Counterfeit Goods
establish a trademark counterfeiting claim under 15 U.S.C.
§ 1114(1)(a), the plaintiffs must show that "(1)
the defendant[s] intentionally used a counterfeit mark in
commerce; (2) the defendants] knew that the mark was
counterfeit; (3) the use occurred in connection with the
sale, offering for sale, or distribution of goods; and (4)
the use of the counterfeit mark was likely to confuse
consumers." Assoc. Gen. Contractors of Am. v.
Stokes, No. 1:11-cv-795 (GBL/TRJ), 2013 WL 1155512, at
*3 (E.D. Va. Mar. 19, 2013). "Infringement is willful if
a defendant has knowledge that its conduct represented
infringement or recklessly disregarded the possibility."
Mya Saray, LLC v. Al-Amir, 831 F.Supp.2d 922, 941
(E.D. Va. 2011).
plaintiffs' complaint sufficiently alleges the elements
of trademark counterfeiting. The plaintiffs' laboratory
testing showed that the defendants sold counterfeit TOP- and
JOB-brand products, satisfying the first and third elements.
Thobani's statement that the counterfeit rolling papers
"were 'bad'" and his willingness to sell
the rolling papers at a discounted price indicate that he
knew that he was selling counterfeit papers, satisfying the
second element. (Dk. No. 20-2, ¶ 4); cf. United
States v. Zayyad, 741 F.3d 452, 463 (4th Cir. 2014)
(noting that selling drugs below wholesale suggests
deliberate indifference that goods were counterfeit). The
plaintiffs enjoy "a presumption of a likelihood of
confusion when the infringing mark is nearly an exact
imitation," so their allegations satisfy the fourth
element. JUUL Labs, Inc. v. Unincorporated Ass 'n
Identified in Schedule A, No.18-cv-01063 (LO/IDD), 2019
WL 1511883, at *3 (E.D. Va. Mar. 20, 2019), report &
recommendation adopted, 2019 WL 1510321 (E.D. Va. Apr.
prove trademark infringement under 15 U.S.C. § 1114, the
plaintiffs must show that (1) they "own a valid and
protectable mark;" (2) the defendants used a
"re-production, counterfeit, copy, or colorable
imitation" of that mark in commerce, without the
plaintiffs' consent; and (3) the defendants' use
"is likely to cause confusion." Louis Vuitton
Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252,
259 (4th Cir. 2007). Virginia common law trademark
infringement claims require the plaintiffs to prove the same
elements as a § 1114 claim. See Swatch AG v. Beehive
Wholesale, LLC, 739 F.3d 150, 162 (4th Cir. 2014).
plaintiffs own valid trademarks for both TOP- and JOB-brand
marks, and the defendants used counterfeit copies of those
marks in commerce without the plaintiffs' consent,
satisfying the first and second elements. Because the
defendants sold cigarette rolling papers with marks nearly
identical to the TOP and JOB marks, the plaintiffs receive a
presumption of confusion. This satisfies the third element.
Accordingly, the plaintiffs have established the elements of
trademark infringement under 15 U.S.C. § 1114. Moreover,
because the plaintiffs have established ...