UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

WEST PALM BEACH DIVISION

VPR BRANDS, LP, ) 

 ) 

Plaintiff, ) 

 ) 

v. ) Case No. 9:22-cv-81576 

 ) 

SHENZHEN WEIBOLI TECHNOLOGY ) 

CO., LTD., et al., ) 

 ) 

Defendants. ) 

 ) 

DEFENDANTS’ EXPEDITED MOTION TO DISSOLVE OR VACATE PRELIMINARY 

INJUNCTION OR, IN THE ALTERNATIVE, TO INCREASE SECURITY

Defendants Shenzhen Weiboli Technology Co., Ltd. (“Weiboli”), YLSN Distribution 

LLC, Ecto World LLC (“Ecto World”), D&A Distribution LLC, Unishow (U.S.A.), Inc., SV3 

LLC, and Kingdom Vapor Inc. (the “Distributor Defendants”), as well as Defendants Imiracle

(HK) Limited1 and Heaven Gifts International Limited (collectively, “Defendants”), pursuant to 

Federal Rule of Civil Procedure 60, respectfully move this Court to dissolve or vacate the 

preliminary injunction order entered on February 23, 2023 (ECF No. 83) (the “Order”). 

Dissolution or vacatur of the Order is justified by new developments that have occurred since the 

entry of the Order on February 23, 2023—namely, an assignment in March 2023 of trademark 

rights in the ELF mark by Sigelei Electronic Tech Co., Ltd. (“GD Sigelei”), a non-party with 

priority of use of the ELF mark over Plaintiff VPR Brands, LP (“VPR”) to Defendant Imiracle 

(HK) Limited. The assignment of the ELF mark from GD Sigelei has created substantially changed 

circumstances since those existing when the Court entered the preliminary injunction order and 

1 Imiracle (HK) Limited is improperly named in the relevant complaint as Imiracle HK Limited. 

The company’s registration documents include the parentheses around “HK.” 

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will prevent VPR from succeeding on the merits of its trademark infringement, false designation 

of origin, and unfair competition claims against any of the Defendants. 

Alternatively, if the Court declines to dissolve or vacate the preliminary injunction Order, 

Defendants respectfully request that the Court increase the amount of the security required to 

$200,000,000. Pursuant to Local Rule 7.1(d)(2), and as described in detail herein, Defendants 

submit that there is just cause for expedited resolution of the motion because of the substantial

ongoing and irreparable harm suffered by Defendants as a result of the injunction. Although no 

ruling is required by a date certain, Defendants respectfully request a decision within fourteen (14) 

days of the full briefing of Defendants’ Motion. 

BACKGROUND

I. Procedural History

VPR filed its original complaint against Defendants Weiboli, YLSN Distribution LLC, 

Ecto World, D&A Distribution LLC, Unishow (U.S.A.), Inc., SV3 LLC, and Kingdom Vapor Inc.

on October 13, 2022, and its first amended complaint (“FAC”) on December 16, 2022. ECF No. 

61. On October 14, 2022, VPR filed a motion for preliminary injunction. ECF No. 5. The Court 

held a two-day evidentiary hearing on VPR’s motion for preliminary injunction, and, following 

post-hearing briefing, on February 23, 2023, the Court granted VPR’s motion. ECF No. 83. 

 While the motion for preliminary injunction was pending, on December 27, 2022, VPR 

filed a similar complaint for trademark infringement, false designation of origin, unfair 

competition, and patent infringement against Imiracle (HK) Limited and Heaven Gifts 

International Limited. That complaint was assigned case number 9:22-cv-81977 and assigned to 

Judge Middlebrooks. On March 1, 2023, VPR moved for a preliminary injunction in that case. See 

ECF No. 20 in Case No. 9:22-cv-81977. Defendants Imiracle (HK) Limited and Heaven Gifts 

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International Limited filed their opposition on March 16, 2023, and VPR filed its reply on March 

23, 2023. See ECF Nos. 28 and 29 in Case No. 9:22-cv-81977.

On March 31, 2023, Imiracle (HK) Limited and Heaven’s Gift International Limited filed 

a notice advising that, due to Imiracle (HK) Limited’s receipt of an assignment of trademark rights 

in the mark ELF that have priority over those of VPR, they intended to file their own motion for

preliminary injunction against VPR in case number 9:22-cv-81977. See ECF No. 33 in Case No. 

9:22-cv-81977. While VPR’s motion for preliminary injunction in case number 9:22-cv-81977 

was pending, on April 17, 2023, VPR filed a motion to reassign case number 9:22-cv-81977 to 

this Court and to join and consolidate that case with this action. See ECF No. 44 in case no. 9:22-

cv-81977. On April 20, 2023, Judge Middlebrooks and this Court ordered case number 9:22-cv81977 to be transferred to this Court. ECF No. 45 in Case No. 9:22-cv-81977. That same day, 

Imiracle (HK) Limited and Heaven’s Gift International Limited indicated that they consented to 

consolidation of case number 9:22-cv-81977 with this action. See ECF No. 47 in Case No. 9:22-

cv-81977-AMC. The existing Defendants in this action also confirmed consent to consolidation at 

the hearing on April 21, 2023.

Additionally, on March 16, 2023, Defendant Ecto World moved to vacate the preliminary 

injunction Order based on information that a third party, GD Sigelei Electronic Tech Co., Ltd. 

(“GD Sigelei”) had used the ELF mark in commerce more than a year before VPR’s alleged first 

use. See ECF No. 107. After full briefing on Ecto World’s motion, the Court denied the motion on 

April 19, 2023, on the ground that the motion was premised on facts that were known to Ecto 

World at the time of the hearing on VPR’s motion, but not presented in opposition to the motion, 

and so no “changed circumstances” existed that justified granting Ecto World’s motion to vacate. 

See ECF No. 127 at 3-5. Unlike Ecto World’s earlier motion, the current motion to vacate is 

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premised entirely on changed circumstances that have resulted from new factual developments 

occurring in March 2023, well after entry of the Court’s entry of its preliminary injunction Order 

on February 23, 2023.

II. Factual Background

A. VPR’s Use of the ELF Mark and the ‘616 Registration

VPR is a Fort Lauderdale, Florida-based business “engaged in product development for the 

vaping market, including e-liquids, vaporizers, and electronic cigarettes (also known as ecigarettes) which are devices that deliver nicotine or cannabis[.]” FAC, ECF No. 61, at ¶¶ 10-11. 

The First Amended Complaint claims that “[b]eginning on November 24, 2017, VPR began 

marketing a line of electronic cigarettes and electronic cigarette accessories under the ELF brand 

name and logo.” Id. at ¶ 15. The First Amended Complaint likewise asserts that on November 24, 

2017, VPR “first used the ELF mark in commerce in connection with VPR’s sale of electronic 

cigarettes and accessories.” Id. at ¶ 15. 

Based on an application that VPR filed on November 27, 2017, under Section 1(a) of the 

Lanham Act that alleged a date of first use of November 21, 2017, and a date of first use in 

commerce of November 24, 2017, on June 5, 2018, VPR secured U.S. Trademark Registration No. 

5486616 (the “‘616” Registration”) in international class 34 for use of the mark ELF in connection 

with “Electronic cigarette lighters, Electronic cigarettes; Smokeless cigarette vaporizer pipe.” Id. 

at ¶ 16 & Exhibit 1 thereto, ECF 61-1. 

B. GD Sigelei’s Continuous Use of the ELF mark in United States Commerce 

Since 2016

GD Sigelei Electronic Tech Co. Ltd. is a Chinese company that introduced a line of 

electronic cigarette components under a sub-brand called “ELF” in April 2016. See Declaration of 

Junbiao Ou (“Ou Decl.”), ECF Nos. 107, 113-1, 113-2, at ¶¶ 14, 16 and Exhibit A thereto, ECF 

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107-1. As explained in detail below, since that time, GD Sigelei has continuously used the ELF 

mark on electronic cigarette products in United States commerce, including through (i) its direct 

marketing and sales of electronic cigarette components and parts branded with the ELF mark to 

U.S. distributors and retailers; (ii) marketing and sales of those same products by U.S. distributors 

of vaping products, including Distributor Defendants Ecto World and D&A Distribution, LLC; 

(iii) marketing and sales of electronic cigarette components branded with the ELF mark by IPV 

Technology Co., Ltd., which products were manufactured and sold under a written Authorization 

and license granted by GD Sigelei; and (iv) marketing and sales of the ELF-branded products by 

IPV Technology Co., Ltd.’s U.S. customers.

1. GD Sigelei Itself Has Marketed and Sold ELF-Branded Electronic 

Cigarette Components and Parts from April 2016 Until 2019, and

Disposable Electronic Cigarettes From 2022 Until Present

GD Sigelei itself marketed and sold electronic cigarette components and parts under the 

ELF mark from April 2016 until 2019, and then again from 2022 until the present. In 2016, GD 

Sigelei released a new line of electronic cigarette products called ELF, and first announced an ELF 

electronic cigarette atomizer component in an email announcement to U.S. customers dated April 

11, 2016. See Ou Decl., ¶¶ 14-16 and Exhibit A thereto. GD Sigelei also began using the mark 

ELF as a brand for replacement coils and tank components for use in electronic cigarettes in 2016. 

Id. at ¶¶ 19-20. Starting in 2022, GD Sigelei has also used the mark ELF on disposable electronic 

cigarette products called ELF TANK that it has sold to U.S. distributors. Id. at ¶¶ 22-23.

GD Sigelei’s sales records reflect sales of the ELF coils and tank components and parts 

(including electronic cigarette kits containing the ELF tank and explicitly marketed as such) to 

U.S. customers in 2016, 2017, and 2018, as well as sales of the ELF TANK disposable electronic 

cigarette product to U.S. customers in 2022 and 2023. Id. at ¶ 25.

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2. U.S. Distributors and Retailers Have Sold Continuously GD Sigelei’s 

ELF-Branded Products since 2016

In addition to GD Sigelei’s sales of electronic cigarette products bearing the ELF mark to 

U.S. customers in 2016-2018 and 2022-2023, U.S. distributors and retailers have also sold and 

offered for sale continuously GD Sigelei’s ELF-branded products since 2016. Among the 

distributors that have offered for sale and sold GD Sigelei’s ELF coil and tank electronic cigarette 

components are Defendants Ecto World and D&A Distribution, LLC. See Declaration of Matthew 

Glauser, ECF No. 107-2, at ¶¶ 19-23, 29; Declaration of Robert Ali (“Ali Decl.”), Exhibit 1 hereto,

at ¶¶ 6-8.2

Ecto World had sales of GD Sigelei’s ELF coils to customers in 2016 and 2017, and of 

electronic cigarette kits explicitly marketed as containing GD Sigelei’s ELF tank component in 

2016. Declaration of Matthew Glauser, ECF No. 107-2, at ¶ 29. Ecto World has also continuously 

held inventory of and offered for sale via its website GD Sigelei’s ELF products since 2016. Id. at

¶ 22. For its part, D&A Distribution, LLC had sales of GD Sigelei’s ELF coils in every year from 

2016 to 2020, and of GD Sigelei’s ELF tank and electronic cigarette kits explicitly marketed as 

containing GD Sigelei’s ELF tank component in every year from 2016 to 2020. Ali Decl., Exh. 1, 

at ¶ 8.

3. IPV Technology Co., Ltd. Has Marketed and Sold ELF-Branded 

Electronic Cigarette Components Under an Authorization and License 

from GD Sigelei Continuously Since 2019 

On April 1, 2019, GD Sigelei also signed a written “Brand Processing Authorization” 

agreement pursuant to which it authorized and licensed another Chinese manufacturer, IPV Vaping 

Technology Co., Ltd. (“IPV”) to use GD Sigelei’s ELF trademark on IPV’s vaping products and 

2 Counsel has redacted the bank account numbers listed in the purchase orders that are Exhibit A 

to Mr. Ali’s declaration.

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to manufacture and sell ELF-branded vaping products, including to IPV’s customers based in the 

United States. See Supplemental Declaration of Junbiao Ou, Exhibit 2 hereto, at ¶¶ 3-4 and Exhibit 

A thereto. 

Pursuant to its license under the Brand Processing Authorization agreement, IPV used the 

ELF trademark on its vaping products, including a replacement tank/atomizer called “ELF ADA” 

that was sold as a sub-brand under the IPV brand. Id. ¶ 5; Ou Declaration, ECF Nos. 107, 113-1, 

113-2, at ¶ 21. 

4. U.S. Distributors and Retailers Have Sold IPV’s ELF-Branded 

Electronic Cigarette Components Continuously Since 2019

IPV’s ELF ADA-branded products have been sold to and by U.S. customers, including 

Ecto World. Ecto World has had sales of IPV ELF ADA coils in every year since 2019. Glauser 

Decl., ECF No. 107-2, at ¶ 29.

C. GD Sigelei’s Assignment of the ELF mark to Imiracle (HK) Limited

Defendant Imiracle (HK) Limited (“Imiracle”) is an affiliate of Defendant Weiboli that, 

until this Court’s entry of its preliminary injunction order, had sold ELFBAR-branded electronic 

cigarette products in the United States since approximately April 2022. See Declaration of Xie 

Jihui, Exhibit 3 hereto, at ¶¶ 5-6. Prior to that time, ELFBAR-branded electronic cigarettes were 

sold exclusively to U.S. customers by Defendant Heaven Gifts International Limited (“Heaven 

Gifts”). Id. at ¶ 6. Heaven Gifts is an affiliate of Imiracle and a subsidiary of a fourth affiliated 

entity, Shenzhen Imiracle Technology Co. Ltd. (“Shenzhen Imiracle”). Id., ¶ 5. Imiracle and 

Heaven Gifts sold ELFBAR-branded electronic cigarettes to authorized master distributors across 

the United States, including the Distributor Defendants. Id., ¶ 12.

On February 24, 2023, VPR filed a lawsuit against GD Sigelei alleging trademark 

infringement for its use of the ELF mark. VPR Brands LP v. Shenzhen Sigelei Technology Co., 

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Ltd., et al., Civil Action No. 9:23-cv-80291-AMC (S.D. Fla.). In March 2023, after Imiracle (HK) 

Limited became aware of VPR’s lawsuit against GD Sigelei and that GD Sigelei had, in fact, been 

using the ELF mark in United States commerce more than a year before VPR first did so, Imiracle

and GD Sigelei entered into a Trademark Assignment Agreement and First Amendment thereto 

(collectively, the “Assignment Agreement”). See Declaration of Shangwei Zhang (“Zhang Decl.”), 

Exhibit 4 hereto, at ¶¶ 5-6 and Exhibits A and B thereto.3

Under the Assignment Agreement, GD Sigelei assigned to Imiracle its full right, title, and 

interest in the ELF mark, along with the goodwill of the business in connection with which the 

ELF mark is used and which is symbolized by the ELF mark. Assignment Agreement, Exh. A to 

Zhang Decl., at §1(a). The Assignment Agreement gives Imiracle the right to stand fully and 

entirely in the place of GD Sigelei in all matters related to the ELF mark. Id. As part of the 

Assignment Agreement, Imiracle also licensed use of the mark ELF TANK back to GD Sigelei for 

use in conjunction with Sigelei’s sales of electronic cigarettes in the United States. See First 

Amendment to Assignment Agreement, Exh. B to Zhang Decl., § 4.

Imiracle has since also entered into a Trademark License Agreement with Shenzhen 

Weiboli allowing it to use the ELF mark in the sale and distribution of electronic cigarettes in the 

future. See Supplemental Declaration of Shangwei Zhang, Exhibit 5 hereto, and Exhibit A thereto. 

Likewise, Imiracle has authorized the Distributor Defendants’ use of the ELF mark, implicitly, if 

not explicitly, in the sale and marketing of ELFBAR-branded electronic cigarettes since it began 

selling to them in or about April 2022. Until the Court’s entry of its preliminary injunction Order, 

the Distributor Defendants had served as, and, if the Order is dissolved or vacated, would continue 

3 Counsel has redacted the bank account numbers listed in the wire confirmations that are Exhibits 

C and D to Mr. Zhang’s declaration.

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to serve as, master distributors of Imiracle’s ELFBAR electronic cigarettes, having purchased 

ELFBAR-branded electronic cigarettes from Imiracle, and before that, Heaven Gifts, and selling 

them to retailers and consumers in the United States. 

STANDARD OF REVIEW

A district court has continuing jurisdiction over a preliminary injunction and is “authorized 

to make any changes in the injunction that are equitable in light of subsequent changes in the facts 

or the law, or for any other good reason.” Canal Auth. of Fla. v. Callaway, 489 F.2d 567, 578 (5th 

Cir. 1974); Atlanta J. & Const. v. City of Atlanta Dep't of Aviation, 6 F. Supp. 2d 1359, 1364 (N.D. 

Ga. 1998) (a district court “may relieve a party from obligations determined by the decree if it is 

no longer equitable.”). To dissolve or vacate a preliminary injunction, “a movant must show a 

change in circumstances between the entry of the injunction and the motion that would render the 

continuance of the injunction inequitable.” All Web Leads, Inc. v. D’Amico, No. 18-80571-CVMIDDLEBROOKS, 2018 U.S. Dist. LEXIS 224560, at *8 (S.D. Fla. Nov. 8, 2018) (citing CWI, 

Inc. v. LDRV Holdings Corp., 2013 U.S. Dist. LEXIS 197361, 2013 WL 12123229, at *2 (M.D. 

Fla. Oct. 16, 2013)); Hodge v. Dept. of Housing & Urban Dev., Housing Div., 862 F.2d 859, 861-

62 (11th Cir. 1989). “Where the grounds and reasons for which the injunction was granted no longer 

exist, by reason of changed conditions, it may be necessary to alter the decree or adapt it to such 

changed conditions, or to set it aside altogether, as where there is a change in the controlling facts 

on which the injunction rests.” Fleming v. Credit Serv., Inc., No. 401-M-Civ-DD, 1964 U.S. Dist. 

LEXIS 7643, at **23-24 (S.D. Fla. Dec. 9, 1964). 

ARGUMENT

A fundamental requirement for VPR to succeed on its claims of trademark infringement is 

that VPR must demonstrate that its mark has priority over Defendants. Frehling Enters., Inc. v. 

Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). At the time the Court entered its 

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preliminary injunction Order, the Court determined that VPR had priority over the Defendants 

based on VPR having begun using the ELF mark in marketing its electronic cigarettes on 

November 24, 2017, and Defendants not marketing their ELFBAR products until around July 

2021. ECF No. 83 at 12. 

 However, after entry of the preliminary injunction Order, Weiboli, Imiracle, and the other 

Defendants discovered that an unrelated third party, GD Sigelei, had actual first use in commerce 

of the ELF mark for electronic cigarettes, and GD Sigelei subsequently assigned to Imiracle GD 

Sigelei’s rights and interests in the ELF mark, including its priority. This recent change in 

circumstances fundamentally alters the parties’ order of priority in use of the ELF mark and renders

VPR unable to satisfy a necessary element of its trademark claims against Defendants. Because 

VPR’s likelihood of success on its trademark claims underpins the preliminary injunction, these 

new facts and changed circumstances warrant vacating, dissolving, or otherwise modifying the 

preliminary injunction.4

 

4 Even if Weiboli or Imiracle had been aware of GD Sigelei’s priority use of the ELF mark prior 

to the issuance of the preliminary injunction Order, until the assignment of the ELF mark from GD 

Sigelei to Imiracle occurred in March 2023, the doctrine of jus tertii would have barred Weiboli 

and Imiracle from invoking Sigelei’s priority use to defend against VPR’s motion for preliminary 

injunction in any event. See, e.g., Nutra Health, Inc. v. HD Holdings Atlanta, Inc., No. 1:19-cv05199-RDC, 2021 U.S. Dist. LEXIS 210903, at *4 (N.D. Ga. June 29, 2021) (quoting 6 McCarthy 

on Trademarks and Unfair Competition § 31.160 (5th ed.) for the proposition that “Defendant is 

no less an infringer because it is brought to account by a plaintiff whose rights may or may not be 

superior to the whole world”); Fletcher's Original State Fair Corny Dogs, LLC v. Fletcher-Warner 

Holdings LLC, 434 F. Supp. 3d 473, 489 (E.D. Tex. 2020) (gathering authorities supporting 

proposition that a “jus tertii defense is disfavored in trademark enforcement litigation,” including 

Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 820 (9th Cir. 1996)); Innovation 

Ventures, LLC v. NVE, Inc., 2016 U.S. Dist. LEXIS 6943, at **20-21 & n.2 (E.D. Mich. Jan. 21, 

2016) (gathering authorities for proposition that a jus tertii defense based on a third party’s alleged

superior rights in the trademark at issue “is disfavored in trademark cases around the country”); 

cf. 1-800 Contacts Inc. v. Lens.Com, Inc., 722 F.3d 1229, 1255 (10th Cir. 2013) (quoting 6 

McCarthy on Trademarks § 31:48 at 31-131 to 132 for the proposition that the defense of jus tertii

is “uniformly rejected by the courts”). 

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I. VPR LACKS PRIORITY OVER DEFENDANTS

A. Imiracle Has Priority Over VPR

“Rights in a trademark are determined by the date of the mark’s first use in commerce. The 

party who first uses a mark in commerce is said to have priority over other users.” Hana Fin., Inc. 

v. Hana Bank, 573 U.S. 418, 419 (2015). A party claiming prior use in commerce must show 

evidence of (1) adoption and (2) “use in a way sufficiently public to identify or distinguish the 

marked goods in an appropriate segment of the public mind as those of the adopter of the mark.” 

Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1195 (11th Cir. 2001) (quotation 

omitted). Sales of the marked goods is typical evidence of use, but a party may also rely on 

advertisements, publications, and solicitations. FN Herstal SA v. Clyde Armory Inc., 838 F.3d 

1071, 1081 (11th Cir. 2016), cert. denied, 137 S. Ct. 1436, 197 L. Ed. 2d 649 (2017).

Moreover, priority is assignable; a party who purchases a trademark inherits the seller’s 

date of first use and, with it, the seller’s priority. See Carnival Brand Seafood Co. v. Carnival 

Brands, Inc., 187 F.3d 1307, 1310 (11th Cir. 1999) (observing that “an assignee of a trademark 

steps into the shoes of the assignor”); RXD Media, LLC v. IP Application Dev. LLC, 986 F.3d 361, 

371 (4th Cir. 2021) (“A party can become a senior user of a mark by acquiring from a previous 

owner an assignment of rights.”); see also McCarthy on Trademarks § 18:15 (“All courts follow 

the rule that . . . after a valid assignment, the assignee acquires all of the legal advantages of the 

mark that the assignor enjoyed, including priority of use.”). An assignee of a trademark steps into 

the shoes of the assignor, and a party may buy the trademark and associated goodwill of a party 

with an earlier priority date to pre-date the priority of a rival. Carnival, 187 F.3d at 1310 (citing 

McCarthy on Trademarks § 16:5, at 16-7 & n.3 (1998)); Russell Rd. Food & Bev., LLC v. Spencer, 

829 F.3d 1152, 1156 (9th Cir. 2016) (“It is beyond dispute that a trademark owner may assign his 

trademark.”). This includes when a party obtains priority over another party by acquiring, during 

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litigation, the rights of a prior third party. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 

F.3d at 1200-01. 

Here, GD Sigelei began using the ELF mark in April 2016 when it first advertised sales of 

its ELF electronic cigarette components to distributors in the United States, more than one year 

before VPR’s alleged first use in November 2017. As described in detail above, GD Sigelei 

continued to sell electronic cigarette products under the ELF Trademark from 2016 to present,

including by its own direct sales, through authorized U.S. distributors and retailers, and pursuant 

to its authorization and licensing of the ELF mark to IPV and sales of IPV’s products by U.S. 

distributors. Such sales and actions on the part of GD Sigelei constitute continuing use in 

commerce, as required to maintain rights in the ELF mark and priority over VPR. See Casa Dimitri 

Corp. v. Invicta Watch Co. of Am., 270 F. Supp. 3d 1340, 1357 (S.D. Fla. 2017) (recognizing that 

a licensee’s use of a mark inures to the benefit of the licensor) (citing Cotton Ginny, Ltd. v. Cotton 

Gin, Inc., 691 F. Supp. 1347, 1354 (S.D. Fla. 1988); Clayton v. Howard Johnson Franchise Syst., 

Inc., 740 F. Supp. 1553, 1560 (M.D. Fla. 1988)). Similarly, the sales of GD Sigelei’s ELF products 

by Ecto World and D&A Distribution constituted use by GD Sigelei, as “what is relevant is who 

was the actor that placed the product with the mark into commerce . . . [and] [GD Sigelei] placed 

the mark on the product at the point of production, and was the first to distribute the product into 

the stream of commerce[.]” Laboratories Roldan C. pro A. v. Tex Int’l, 902 F. Supp. 1555, 1566, 

n. 12 (S.D. Fla. 1995); Select Exp. Corp. v. Richeson, No. 10-80526-CIV-Dimitrouleas, 2011 U.S. 

Dist. LEXIS 165333, at **19-20 (S.D. Fla. May 5, 2011).

Given its first and continuing use of the ELF mark in connection with electronic cigarette 

products—the same type of products offered by VPR—GD Sigelei had priority over VPR. See, 

e.g., Planetary Motion, Inc., 261 F.3d 1188. GD Sigelei’s priority and rights in the ELF mark apply

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not only to the exact products it sold, but also “may extend into uses in ‘related’ products or service 

markets . . . [t]hus, an owner of a common law trademark may use its mark on related products or 

services and may enjoin a junior user’s use of the mark on such related uses.” Tally-Ho, Inc. v. 

Coast Cmty. Coll. Dist., 889 F.2d 1018, 1137 (11th Cir. 1998). The ELF products sold by GD 

Sigelei were unquestionably electronic cigarette components, and therefore competitive with 

VPR’s use of ELF in connection with “electronic cigarettes and accessories.” See FAC at ¶¶ 15, 

27, 29-30; Tally-Ho, 889 F.2d at 1023.

Imiracle acquired GD Sigelei’s prior use, along with all other rights in the ELF mark, when 

Imiracle entered into the Assignment Agreement with GD Sigelei to acquire the rights to the ELF

mark. Thus, Imiracle has priority over VPR. 

B. All Defendants Can Rely on Imiracle’s Priority

Parties in privity with a senior user can rely on the senior user’s rights to defeat an 

infringement claim. Kingdomworks Studios, Ltd. Liab. Co. v. Kingdom Studios, Ltd. Liab. Co., No. 

19-14238-cv-Martinez/Maynard, 2021 U.S. Dist. LEXIS 225018 (S.D. Fla. Nov. 19, 2021) (finding 

claims against licensee for trademark infringement failed because those in privity with a senior user 

can rely on the senior user’s rights to defeat an infringement claim); Lapinee Trade, Inc. v. 

Paleewong Trading Co., 687 F. Supp. 1262, 1264 (N.D. Ill. 1988), aff’d 876 F.2d 106 (7th Cir. 

1989). (“[I]f a third party permits a defendant to use a trademark as part of a contractual arrangement, 

the defendant can avoid liability for trademark infringement by invoking the superior trademark 

rights of the third party.”). 

A formal written agreement is not necessary to establish privity. See, e.g., Diarama Trading, 

Inc. v. J Walter Thompson U.S.A., Inc., 2005 U.S. Dist. LEXIS 19496, **33-34 (S.D.N.Y. Sept. 6, 

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2005) (citing Lapinee Trade, 687 F. Supp. at 1264; Maher v. United States, 314 F.3d 600, 603 n.1 

(Fed. Cir. 2002), cert denied, 540 U.S. 821 (2003)).

Indeed, in cases where one party is relying on the superior trademark 

rights of another party to establish their own priority of use in the mark, 

the only requirement is that the party with superior trademark rights 

‘permit[] a defendant to use a trademark as part of a contractual 

agreement.’ . . . ‘Thus, privity may even be established through an 

implied-in-fact contract.’ . . . ‘A contract implied in fact may result as an 

inference from the facts and circumstances of the case although not 

formally stated in words . . . and is derived from the ‘presumed’ intention 

of the parties as indicated by their conduct.’ . . . An implied-in-fact 

contract is equally binding as an express contract; therefore, an implied 

in fact contract requires proof of the same elements to establish an express 

contract - mutuality of intent, offer and acceptance, lack of ambiguity, 

and consideration. . . However, these elements can be inferred from the 

‘specific conduct of the parties, industry custom, and course of dealing.’

Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 218 (E.D.N.Y. 2007) (emphasis added) 

(internal citations omitted); see also Diarama Trading, Inc., 2005 U.S. Dist. LEXIS 19496 (holding 

implied-in-fact contract existed between the defendants and a third party where there was extensive 

evidence of relationships between them whereby defendants were authorized to use the mark at issue 

in their advertising); United Food Imps., Inc. v. Baroody Imps., Inc., No. 09-2835 (DRD), 2010 U.S. 

Dist. LEXIS 33585, at *17 (D.N.J. Apr. 6, 2010) (finding privity was sufficiently alleged in light 

of contractual relationship between manufacturer and distributor “in that [the third-party] supplied 

the Defendants with the allegedly infringing goods”).

Here, even though it has not yet used it, Weiboli has a contractual license from Imiracle to 

use the ELF mark in the sale and distribution of electronic cigarettes. Accordingly, to the extent 

needed, Weiboli can rely on Imiracle’s senior priority to defeat VPR’s claims of infringement. See 

Kingdomworks Studios, 2021 U.S. Dist. LEXIS 225018, at *30 (“Because KS is in privity with 

Kingdom, Inc. through the License Agreement, Plaintiff’s claims against KS for trademark 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 14 of 21
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infringement and unfair competition must fail.”) (citing 578539 B.C. Ltd. v. Kortz, No. CV 14-04375, 

2015 U.S. Dist. LEXIS 192895, at **37-38 (C.D. Cal. April 10, 2015) (recognizing that a licensee 

or assignee in privity with a senior user may assert the senior user's priority rights and seek 

cancellation of a junior user's mark). 

Similarly, the Distributor Defendants serve as master distributors of Imiracle’s ELFBAR

products. Imiracle and its affiliate, Heaven Gifts, regularly supplied the Distributor Defendants 

with ELFBAR products with the understanding and expectation that the Distributor Defendants 

would use Imiracle’s ELF mark in connection with their marketing, promotion, and sale of the 

ELFBAR products. And indeed, as the evidentiary record from the preliminary injunction hearing 

reflects, the Distributor Defendants did so—regularly purchasing ELFBAR products from Imiracle

or its affiliate Heaven Gifts, and then marketing and selling the ELFBAR products for their own 

profit and that of Imiracle, using the ELF mark with Imiracle’s implicit, if not explicit, 

authorization in connection therewith.

Therefore, privity exists between Imiracle and the Distributor Defendants. See, e.g., United 

Food Imps., Inc., 2010 U.S. Dist. LEXIS 33585; see also Lapinee Trade, 687 F. Supp. at 1278 

(finding privity between manufacturer and exclusive distributor since, by appointing the distributor, 

the manufacturer “implicitly authorized” the use of the mark, and the distributor “must necessarily 

use” the mark “in the course of fulfilling its distribution agreement”).

II. THE ORDER SHOULD BE DISSOLVED OR VACATED BECAUSE VPR IS 

UNLIKELY TO SUCCEED ON THE MERITS.

The recent assignment by GD Sigelei of its rights in the ELF mark to Imiracle means that 

VPR cannot succeed on the merits of its claims for trademark infringement, false designation of 

origin, and unfair competition because it lacks priority over Defendants’ use of the ELF mark. See, 

e.g., Lapinee Trade, 687 F. Supp. at 1264 (denying motion for preliminary injunction because 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 15 of 21
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defendant distributor was in privity with manufacturer that had prior, superior rights over the 

plaintiff, and therefore defendant distributor could rely on the priority as a complete defense); Plant 

Food Sys. v. AgroSource, Inc., No. 16-80326-Civ-Marra/Matthewman, 2016 U.S. Dist. LEXIS 

124185, **57-58 (S.D. Fla. Sep. 12, 2016), adopted by, injunction denied by Plant Food Sys. v. 

Agrosource, Inc., 2016 U.S. Dist. LEXIS 141321 (S.D. Fla., Oct. 10, 2016) (denying preliminary 

injunction, finding that “given the facts and legal issues surrounding Plaintiff’s interest and priority 

in the FireWall trademark, Plaintiff clearly has not established a substantial likelihood of prevailing 

on the merits as to this issue.”). 

In light of the substantial change in circumstances since the preliminary injunction Order 

issued, it would be inequitable for the preliminary injunction to continue in effect. See Absolute 

Activist Value Master Fund Ltd. v. Devine, No. 2:15-cv-328-FtM-29MRM, 2017 U.S. Dist. LEXIS 

115463, at *9 (M.D. Fla. July 25, 2017) (“Where a movant establishes a change in circumstances 

‘between entry of the injunction and the filing of the motion that . . . render[s] the continuance of 

the injunction in its original form inequitable,’ the Court may modify the injunction in light of the 

changed circumstances.”).

VPR no longer can succeed on its trademark infringement, false designation of origin, or 

unfair competition claims, the claims on which the injunction was based, because VPR does not 

have priority over the Defendants. Therefore, a necessary element for obtaining a preliminary 

injunction – a substantial likelihood of success on the merits – is not satisfied, and strong grounds 

for dissolution of the injunction exist. See, e.g., Fleming., No. 401-M-Civ-DD., 1964 U.S. Dist. 

LEXIS 7643, at *23 (“Where the grounds and reasons for which the injunction was granted no 

longer exist, by reason of changed conditions, it may be necessary to alter the decree or adapt it to 

such changed conditions, or to set it aside altogether, as where there is a change in the controlling 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 16 of 21
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facts on which the injunction rests, or where the applicable law, common or statutory, has in the 

meantime been changed, modified, or extended.”).

It would be inequitable for the injunction to remain in place, given not only VPR’s minimal 

likelihood of success on the merits of its trademark claims, but also the substantial and ongoing

losses that Defendants have suffered and are continuing to suffer as a result of the injunction. As 

detailed in their testimony and prior briefing on VPR’s motion for preliminary injunction, 

Defendants faced substantial losses if the injunction was entered. Following this Court’s Order, 

those losses have been realized. Defendants have seen drops in monthly revenue ranging from 11% 

to as much as 50% from January, and similarly massive drops in profit, with one distributor seeing 

a 61% drop in profits compared to January. See Declaration of Geoff Habicht (“Habicht Decl.”)

attached hereto as Exhibit 6; Declaration of Matthew Jonathan Glauser (“Glauser Dec.”) attached 

hereto as Exhibit 7; Declaration of Gan Chen a/k/a Gary Chen (“Chen Dec.”) attached hereto as 

Exhibit 8; Declaration of Robert Ali, Exh. 1, at ¶¶ 9-11. As explained in the Distributor Defendants’ 

declarations, these losses are not temporary, and not easily recovered, particularly as the Distributor 

Defendants have seen hundreds of business or retailer customers stop purchasing any products from 

them, and in the case of one Distributor Defendant, over 12,000 consumers have not made another 

purchase of any vapor products since the injunction was entered on February 23, 2023. See

Declaration of Geoff Habicht, Exh. 6, at ¶ 7.

Accordingly, the Order should be vacated and the preliminary injunction dissolved. 

III. ALTERNATIVELY, IF THE INJUNCTION IS NOT DISSOLVED OR VACATED, 

THE REQUIRED SECURITY SHOULD BE SUBSTANTIALLY INCREASED.

If Court decides not to dissolve or vacate the injunction, Defendants request that the Court,

at minimum, increase the required security to $200,000,000, as Defendants requested previously. 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 17 of 21
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As discussed, ELFBAR products constituted a substantial amount of the Distributor 

Defendants’ sales prior to the injunction, as briefed and shown by Defendants prior to entry of the 

Order. However, the Court set the security at only $500,000. This amount is insufficient to 

compensate Defendants for the losses they have already suffered, let alone the losses they will 

continue to incur should the injunction remain in place until after the trial in June 2024. As detailed 

above and in the accompanying declarations, the Distributor Defendants have already experienced 

substantial losses of revenue and profits, with one distributor experiencing profits reduced by more 

than 60% from their pre-injunction levels. Declaration of Geoff Habicht, Exh. 6, at ¶ 6.

Thus, should the Court decline to vacate its Order or dissolve the injunction, it should

increase the security required to maintain the injunction for the duration of this matter to $200 

million.

CONCLUSION

For the foregoing reasons, Defendants respectfully request the Court grant Defendants’ 

motion and vacate or dissolve the preliminary injunction Order or, in the alternative, increase the 

security VPR is required to post to $200,000,000. 

 A proposed form of order is enclosed. 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 18 of 21
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CERTIFICATION OF LOCAL RULE 7.1 CONFERENCE

I hereby certify that on March 31, 2023, I emailed counsel for Plaintiff, Joel Rothman, to 

request a conference on the foregoing motion. Having received no response, I conferred in person 

with Mr. Rothman on April 21, 2023, following the hearing on the Court’s Order to Show Cause

in a good faith effort to attempt to resolve the issues presented in the foregoing motion. Mr. 

Rothman confirmed that Plaintiff intends to oppose the foregoing motion. 

 /s/ Eric N. Heyer 

Dated: April 24, 2023 MCDOWELL HETHERINGTON LLP

Attorneys for Defendants 

 2385 N.W. Executive Center Drive, Suite 400 

 Boca Raton, FL 33431 

 (561) 994-4311 

 (561) 982-8985 fax 

By: s/Tucker C. Motta 

 TUCKER C. MOTTA, ESQ.

 Fla. Bar No. 112659 

 tucker.motta@mhllp.com 

 

 Eric N. Heyer (pro hac vice) 

Meixuan (Michelle) Li (pro hac vice forthcoming) 

 Joseph A. Smith (pro hac vice forthcoming) 

 Anna Stressenger (pro hac vice forthcoming) 

 Krupa A. Patel (pro hac vice forthcoming) 

THOMPSON HINE LLP

 1919 M Street, NW, Suite 700 

 Washington, DC 20036 

 Phone: 202.331.8800 

 Fax: 202.331.8330 

 eric.heyer@thompsonhine.com 

 michelle.li@thompsonhine.com 

 anna.stressenger@thompsonhine.com 

 krupa.patel@thompsonhine.com 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 19 of 21
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 Carrie A. Shufflebarger (pro hac vice forthcoming)

 THOMPSON HINE LLP

 312 Walnut Street, 14th Floor

 Cincinnati, OH 45202

 Phone: 513.352.6700

 Fax: 513.241.4771

 carrie.shufflebarger@thompsonhine.com

 Counsel for Defendants

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 20 of 21
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CERTIFICATE OF SERVICE

I certify that on April 24, 2023, I electronically filed the foregoing with the Clerk of the 

Court by using the CM/ECF system which will send a notice of electronic filing to the following: 

Joel B. Rothman, Esq. 

Layla T. Nguyen, Esq. 

SRIPLAW, P.A.

21301 Powerline Road, Suite 100 

Boca Raton, FL 33433 

joel.rothman@sriplaw.com 

layla.nguyen@sriplaw.com 

Counsel for Plaintiff

Joseph A.Dunne, Esq. 

Admitted Pro Hac Vice

SRIPLAW, P.A.

175 Pearl Street, Third Floor 

Brooklyn, NY 11201 

joseph.dunne@sriplaw.com 

Co-Counsel for Plaintiff 

Leslie J. Lott, Esq. 

Ury Fischer, Esq. 

Lott & Fischer P.L.

255 Aragon Ave., Third Floor 

Coral Gables, FL 33134 

ljlott@lottfischer.com

ufischer@lottfischer.com 

Co-Counsel for Ecto World LLC 

Gregory S. Weiss, Esq. 

Mrachek, Fitzgerald, Rose, Konopka, Thomas & Weiss, P.A. 

505 S. Flagler Drive, Suite 600 

West Palm Beach, FL 33401

gweiss@mrachek-law.com

Co-Counsel for Safa Goods LLC and 

Counsel for Non-Parties Orange Wholesale LLC, 

Taher Shriteh, Haitham Shriteh and Ahmed Shriteh 

s/Tucker C. Motta 

 Tucker C. Motta 

Case 9:22-cv-81576-AMC Document 144 Entered on FLSD Docket 04/24/2023 Page 21 of 21