UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

WEST PALM BEACH DIVISION

CASE NO. 22-81576-CIV-CANNON

VPR BRANDS, LP,

 

Plaintiff, 

v. 

SHENZHEN WEIBOLI TECHNOLOGY

CO. LTD. et al., 

Defendants.

_______________________________/ 

ORDER GRANTING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

[ECF No. 5] AND DENYING DEFENDANTS’ MOTION TO REOPEN [ECF No. 76]

THIS CAUSE comes before the Court upon Plaintiff’s Motion for Preliminary Injunction 

(the “Motion”) [ECF No. 5], filed on October 14, 2022. The Motion asks the Court to enter a 

preliminary injunction enjoining Defendants from using Plaintiff’s ELF trademark or any 

substantially similar imitation design; selling any products using the ELF trademark; and 

advertising or marketing any products using the ELF trademark [ECF No. 5 p. 18]. The Court 

held a hearing on the Motion on November 18, 2022, and December 1, 2022 [ECF Nos. 39, 46, 

52, 60]. At the hearings, the Court admitted evidence and heard witness testimony [ECF Nos. 46, 

54, 55, 56, 57, 58, 60]. The Court has reviewed the Motion, Defendants’ Response in Opposition 

[ECF No. 32], Plaintiff’s Reply [ECF No. 34], Plaintiff’s Proposed Findings of Fact and 

Conclusions of Law [ECF No. 66], Defendants’ Proposed Findings of Fact and Conclusions of 

Law [ECF No. 65], and the full record. For the reasons set forth below, the Motion [ECF No. 5] 

is GRANTED, and Defendants’ Motion to Reopen the Evidentiary Hearing [ECF No. 76] is 

DENIED. 

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FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff VPR Brands, LP (“Plaintiff”) manufactures electronic cigarettes (“e-cigarettes”) 

and related products [ECF No. 1 ¶¶ 10–11]. Plaintiff has marketed a line of e-cigarettes and 

accessories under the mark ELF since November 24, 2017 [ECF No. 1 ¶¶ 13–14]. Plaintiff 

obtained a trademark in the ELF mark from the United States Patent and Trademark Office 

(“USPTO”) on June 5, 2018 [ECF No. 1 ¶ 15; ECF No. 1-1]. The trademark allows Plaintiff to 

use the mark “in connection with ‘Electronic cigarette lighters; Electronic cigarettes; [and] 

Smokeless cigarette vaporizer pipe’” [ECF No. 1 ¶ 15; ECF No. 1-1]. Plaintiff currently markets 

two products under the ELF mark: (1) the ELF Original Auto Draw Conceal Kit, “a reusable 

(non-disposable) bar-shaped e-cigarette”; and (2) a high-capacity e-cigarette battery for use with 

the “industry standard refillable 510 mouthpieces” [ECF No. 1 ¶¶ 19, 22]. The ELF Original Auto 

Draw Conceal Kit is “a square box vaporizer with a mouthpiece attached to the top,” which allows 

the consumer to inhale products such as essential oils, nicotine, and other products [ECF No. 46

pp. 18:4–8, 19:7–9; see also ECF No. 38-2 (photo of ELF Original Auto Draw Conceal Kit)]. The 

vaporizer is sold empty, without liquid [ECF No. 46 p. 20: 19–20], and it is reusable, allowing the 

consumer to “use [the] product for the lifespan of the rechargeable battery” [ECF No. 46 

p. 25:16–22]. 

Defendant Shenzhen Weiboli Technology Co. Ltd. (“Weiboli”) is a Chinese manufacturer 

of e-cigarettes that markets its e-cigarettes under the name ELFBAR [ECF No. 1 ¶¶ 39, 41]. The 

ELFBAR product is an e-cigarette disposable vaporizer that is made out of plastic and comes 

“pre-filed with nicotine e-liquid” [ECF No. 46 p. 34:14–19; see also ECF No. 56 (ELF product)].1 

1 Plaintiff’s ELF Auto Draw Conceal Kit is classified as an “open system,” which allows a user to 

refill the tank and is re-usable, as opposed to a disposable e-cigarette product similar to 

Defendants’ ELFBAR product [ECF No. 60 pp. 63:23–25, 64:1–6]. 

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The other seven Defendants operate as Weiboli’s wholesale distributors of the ELFBAR products 

within the United States [ECF No. 1 ¶¶ 42–55]. 

Plaintiff alleges that Weiboli’s distribution of the ELFBAR e-cigarette products infringes 

on Plaintiff’s ELF trademark, because it is “confusingly similar to Plaintiff’s ELF Mark as applied 

to e-cigarette products, and is likely to cause confusion among consumers, retailers and distributors 

in the United States” [ECF No. 1 ¶ 65]. Plaintiff alleges that Weiboli was on notice of this

likelihood of confusion after the USPTO, on July 19, 2021, rejected Weiboli’s application to 

register the ELFBAR mark because it could result in confusion with Plaintiff’s ELF mark 

[ECF No. 1 ¶ 70; ECF No. 38-3 (USPTO official letter refusing registration application “because 

of a likelihood of confusion with the mark in U.S. Registration No. 5486616,” and then addressing 

similarity of the marks and relatedness of the goods and/or services)]. Weiboli nonetheless entered 

the U.S. market after the USPTO rejection and began to distribute its ELFBAR e-cigarettes 

[ECF No. 1 ¶ 72].2

 Weiboli abandoned its application to register the ELFBAR mark with the 

USPTO as of January 20, 2022 [ECF No. 1 ¶ 71]. 

On October 15, 2022, Plaintiff filed a four-count Complaint [ECF No. 1]. As relevant to 

Plaintiff’s Motion for Preliminary Injunction [see ECF No. 5 p. 9], the Complaint asserts that 

(1) Defendants are liable for trademark infringement under the Lanham Act because Defendants’ 

use of the ELFBAR mark is likely to cause confusion with Plaintiff’s ELF mark in the marketplace 

[ECF No. 1 ¶¶ 100–07] (Count I – Trademark Infringement Under Section 32(a) of the Lanham 

Act, 15 U.S.C. § 114(a)); and (2) Defendants are liable for false designation of origin, because 

their use of the ELFBAR mark could cause confusion to consumers as to Plaintiff’s affiliation with 

2 The Complaint does not specify the exact date (after July 19, 2021) when Weiboli entered the 

U.S. market, but a representative for one of the distributors (Demand Vape) testified at the hearing 

that it began distributing Weiboli’s ELFBAR products in October 2021 [ECF No. 60 p. 88:10–12].

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Defendants’ products [ECF No. 1 ¶¶ 108–16] (Count II – Trademark Infringement, False 

Designation of Origin, and Unfair Competition Under Section 43(a) of the Lanham Act, 15 U.S.C. 

§ 1125(a)).3

 

On October 14, 2022, Plaintiff filed the instant Motion, seeking a preliminary injunction 

to enjoin Defendants from marketing their ELFBAR products or otherwise infringing on Plaintiff’s 

trademark [ECF No. 5]. Following notice to Defendants, a hearing, and full briefing, the Motion 

is ripe for adjudication [ECF Nos. 32, 34, 65, 66; see ECF Nos. 28, 75].4

 

LEGAL STANDARD

To obtain preliminary injunctive relief, a party must establish the following elements: 

“(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if 

the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict 

on the non-movant; and (4) that entry of the relief would serve the public interest.” Schiavo ex. 

rel Schindler v. Schiavo, 403 F.3d 1223, 1225–26 (11th Cir. 2005); see also Levi Strauss & Co. v. 

Sunrise Int’l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995). None of the four requirements “has 

a fixed quantitative value. Rather, a sliding scale is utilized, which takes into account the intensity 

of each in a given calculus.” Texas v. Seatrain Int’l, S.A., 518 F.2d 175, 180 (5th Cir. 1975) (citing 

3 Plaintiff also asserts claims for common law unfair competition against all Defendants (Count 

III), direct patent infringement against Weiboli (Count IV), and cybersquatting against Weiboli 

under the Lanham Act (Count V) [ECF No. 61]. On December 16, 2022, after the hearing on this 

Motion, Plaintiff filed a First Amended Complaint (the “FAC”) to add a claim for cybersquatting 

against Weiboli under the Lanham Act [ECF No. 61]. The FAC does not alter Plaintiff’s claims 

for trademark infringement and unfair competition under the Lanham Act. Accordingly, given 

the procedural history of this case as relates to this Motion, citations in this Order to Plaintiff’s 

complaint are to Plaintiff’s original complaint, whose allegations as relevant here are unchanged. 

4 Of the eight named defendants, seven were served with the Complaint and the Motion prior to 

the first hearing on the Motion [ECF No. 28]. The remaining defendant, Unishow (U.S.A.), Inc., 

was served on January 30, 2023 [ECF No. 75], but appeared at the hearing and joined the 

opposition through counsel representing all Defendants in this action [ECF Nos. 16, 17, 26]. There 

is no suggestion of lack of notice as to Unishow.

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Siff v. State Democratic Exec. Comm., 500 F.2d 1307 (5th Cir. 1974)).5 

A “preliminary injunction is an extraordinary and drastic remedy not to be granted unless 

the movant ‘clearly carries the burden of persuasion’ as to the four prerequisites[,]” and ‘“[t]he 

burden of persuasion in all of the four requirements is at all times upon the plaintiff.”’ United 

States v. Jefferson Cnty., 720 F.2d 1511, 1519 (11th Cir. 1983) (quoting Canal Auth. v. Callaway, 

489 F.2d 567, 573 (5th Cir. 1974)). “[A] district court may rely on affidavits and hearsay materials 

which would not be admissible evidence for a permanent injunction, if the evidence is ‘appropriate 

given the character and objectives of the injunctive proceeding.”’ Levi Strauss & Co. v. Sunrise 

Int’l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (quoting Asseo v. Pan Am. Grain Co., 805 

F.2d 23, 26 (1st Cir. 1986)). 

To prevail on a trademark infringement claim, “a plaintiff must demonstrate (1) that its 

mark has priority and (2) that the defendant’s mark is likely to cause consumer confusion.” 

Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). Courts 

consider seven factors in determining whether a likelihood of confusion exists: (1) type of mark; 

(2) similarity of the mark; (3) similarity of the products the marks represent; (4) similarity of the 

parties’ retail outlets (trade channels) and customers; (5) similarity of advertising media; 

(6) defendant’s intent; and (7) actual confusion. Id. 

DISCUSSION

Upon review of the Motion and the full record, the Court hereby enjoins Defendants from 

use of Plaintiff’s ELF trademark through the selling of Defendants’ ELFBAR products in the 

United States. In doing so, the Court first determines that Defendants’ unlawful use argument 

lacks merit as a tool in this proceeding to invalidate and/or to declare Plaintiff’s trademark 

5

 The Eleventh Circuit adopted as binding precedent all decisions of the former Fifth Circuit issued 

prior to October 1, 1981. Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981).

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unenforceable. Turning to the applicable factors for injunctive relief, the Court concludes that 

Plaintiff has carried its heavy burden to show that it is likely to succeed on the merits of its 

trademark infringement claim because its ELF mark has priority and because Defendants’ 

ELFBAR mark is likely to cause consumer confusion. Without injunctive relief, Plaintiff has 

sufficiently established that it is likely to suffer irreparable injury; that the threatened injury to 

Plaintiff outweighs any harm the injunction will pose to Defendants; and that the preliminary 

injunction will serve the public interest. The Court addresses each aspect of the analysis in turn. 

I. Unlawful Use Doctrine

At the outset, the Court rejects Defendants’ lead argument to declare as unenforceable

Plaintiff’s trademark under the “unlawful use doctrine,” which the Eleventh Circuit has not 

adopted [ECF No. 32 pp. 2–4, 7–9; ECF No. 65 pp. 5–6, 13–15]. As described by the Eleventh 

Circuit in FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071 (11th Cir. 2016), “[t]he ‘unlawful 

use doctrine’ appears almost exclusively in the administrative setting, originating in United States 

Trademark Trial and Appeal Board (“TTAB”) proceedings to oppose trademark applications or 

cancel registrations.” Id. at 1086.6 Interpreting the definition of the phrase “use in commerce” in 

15 U.S.C. § 1127, the TTAB has stated that “[a] mark ha[s] to comply with all applicable laws and 

regulations before a party may claim trademark protection for that mark.” Id. at 1087 (internal 

quotation marks omitted).7

 A party using the “unlawful use doctrine” to oppose a trademark 

6 The TTAB’s administrative trademark judges are authorized to determine a party’s right to 

register a trademark with the federal government or to retain a registration under challenge. The 

TTAB does not determine questions of trademark infringement or unfair competition. See 

generally About TTAB, USPTO Website, https://www.uspto.gov/trademarks/trademark-trial-andappeal-board/about-ttab. 

 

7 Section 1127 defines “use in commerce” as “the bona fide use of a mark in the ordinary course 

of trade” which may lawfully be regulated by Congress, specifying further that a mark “shall be 

deemed to be in use in commerce on goods when,” as relevant here,” “the goods are sold or 

transported in commerce,” and separately defining “commerce” to mean “all commerce which 

may lawfully be regulated by Congress.” 15 U.S.C. § 1127.

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application or cancel a trademark application before the TTAB must prove by clear and convincing 

evidence that the mark being challenged is not entitled to trademark protection, because there has 

been “a finding of non-compliance[] by a court or government agency having competent 

jurisdiction under the statue involved, or where there has been a per se violation of a statute 

regulating the sale of a party’s goods.” Id.; see 37 C.F.R. § 2.111(b) (permitting “any person” to 

file a petition to TTAB for cancellation of trademark registration). A challenge under the 

“unlawful use doctrine” goes to the merits of a party’s trademark rights. 

As a defense to the Motion, Defendants argue that Plaintiff’s “asserted ELF trademark is 

unenforceable due to illegality,” because Plaintiff has not obtained FDA pre-marketing 

authorization to sell its ELF-branded products as required by 21 U.S.C. § 387j(a)(1)–(2).

8 In a 

nutshell, Defendants’ position is that Plaintiff’s ELF-branded products—i.e., the ELF-branded 

vaporizer and e-cigarette battery—qualify as “new tobacco products” for which “premarket 

review” is required, see 21 U.S.C. § 387j(a)(1)–(2), because they are “intended or reasonably 

expected” to be used “for the human consumption of a tobacco product.”9

 The FDCA prohibits 

“the introduction or delivery for introduction into interstate commerce of any . . . tobacco product 

8 Chapter 9 of the Federal Food, Drug, and Cosmetics Act (FDCA) gives the FDA authority to 

regulate tobacco products. 21 U.S.C. § 387a. 

9 A “new tobacco product,” includes, as relevant here, “(A) any tobacco product (including those 

products in test markets) that was not commercially marketed in the United States as of February 

15, 2007,” 21 U.S.C. § 387j(a)(1), and a “tobacco product,” in turn, is defined as 

any product made or derived from tobacco, or containing nicotine from any source, 

that is intended for human consumption, including any component, part, or 

accessory of a tobacco product (except for raw materials other than tobacco used in 

manufacturing a component, part, or accessory of a tobacco product).

21 U.S.C. § 321(rr)(1). The FDA issued regulations, effective August 8, 2016, defining the terms 

“component or part” as “any software or assembly of materials intended or reasonably 

expected . . . [t]o be used with or for the human consumption of a tobacco product,” even if it does 

not itself contain tobacco or is derived from tobacco. 21 C.F.R. § 1100.3. 

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. . . that is adulterated,” 21 U.S.C. 331(a), and a “new tobacco product” without premarket 

authorization is considered an “adulterated product,” 21 U.S.C. § 387(b). Hence, Defendants 

contend, Plaintiff’s continued “marketing and sale of the [ELF] products is a per se violation of 

21 U.S.C. § 331(a),” which means, in Defendants’ view, that this Court should declare Plaintiff’s 

registered ELF mark unenforceable in this proceeding [ECF No. 32 pp. 7–9; ECF No. 65 

pp. 13–15]. Defendants do not dispute that there has been no finding by a court or government 

agency that Plaintiff is in violation of 21 U.S.C. § 331(a) or the pertinent regulations, and the 

record reflects neither a FDA proceeding against Plaintiff for its ELF products nor a TTAB 

declaration of unlawful use.10 11

Acknowledging Defendants’ argument and the absence of definitive guidance from the 

Eleventh Circuit, see FN Herstal SA, 838 F.3d at 1087, the Court permitted Defendants to make a 

record on this issue,

12 but the Court ultimately declines to apply the “unlawful use doctrine” to bar 

10 Defendants offered the testimony of Bryan Haynes, an expert in FDA marketing restrictions for 

tobacco products [ECF No. 60 pp. 13–54]. Mr. Haynes opined that Plaintiff’s ELF products would 

be classified as “tobacco product components,” because they are intended or reasonably expected 

to be used to consume a tobacco product and thus require pre-market authorization from the FDA

[ECF No. 60 pp. 38:6–21, 39:12–23]. Mr. Haynes based his opinion in part on two FDA “Warning 

Letters” issued to other companies not implicated here, extrapolating from those letters that FDA 

would treat Plaintiff’s products similarly [ECF No. 58-5; ECF No. 58-6]. Mr. Haynes 

acknowledged that he had not seen an example of an FDA enforcement proceeding against a 

product “just like this”; that he was not aware of an FDA enforcement action or warning letter 

specific to Plaintiff’s ELF products [ECF No. 60 p. 47:8–14]; and that the application of the 

pre-marketing authorization requirement was “fact-specific and could depend on a variety of 

things” [ECF No. 60 p. 40:6–15]. As FDA’s website indicates, warning letters are “issued for 

violations of regulatory significance that may lead to enforcement action if not promptly and 

adequately corrected.” https://www.fda.gov/animal-veterinary/complianceenforcement/advisory-action-letters. 

11 Defendants also do not have pre-market authorization to sell the ELFBAR e-cigarette products. 

 

12 [see ECF No. 60 pp. 13–54; ECF No. 58 (plus exhibits); ECF No. 46 pp. 91–94] 

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Plaintiff’s Lanham Act infringement and unfair competition claims. The Court’s reasoning is set 

forth below, guided by persuasive authorities.13 

First, as stated, when given an opportunity to adopt the doctrine in the trademark 

infringement context, the Eleventh Circuit did not do so, characterizing it as appearing “almost 

exclusively in the administrative setting.” See FN Herstal SA, 838 F.3d at 1086. Admittedly, the 

Eleventh Circuit ultimately declined to adopt the defense because the party asserting it had not 

submitted sufficient evidence in the district court to raise an issue of fact about plaintiff’s allegedly 

unlawful use. Id. at 1087 (“This Court has not adopted the unlawful use doctrine and need not do 

so today because even if we were to adopt it, Clyde Armory has not submitted evidence sufficient 

to raise an issue of fact in this respect.” (internal footnote omitted)). But even accepting that

ultimate rationale, the Eleventh Circuit’s caution signals caution here too, in an area of trademark 

13 See Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 475 (5th Cir. 2021) (“[T]his court 

has not adopted the unlawful use doctrine—the doctrine that failing to abide by all laws and 

regulations can turn what would otherwise constitute ‘use’ into ‘non-use.’ We see no reason to 

adopt the doctrine here.” (citing FN Herstal SA, 838 F.3d at 1086–88, and 3 J. Thomas McCarthy, 

McCarthy on Trademarks and Unfair Competition § 17:12 (5th ed. 2021))); Hi-Tech Pharms. Inc. 

v. Dynamic Sports Nutrition, LLC, No. 16-CV-00949, 2020 WL 10728951, at *6–7 (N.D. Ga. Jan. 

10, 2020) (refusing to apply unlawful use doctrine to declare mark unenforceable in trademark 

infringement and false designation of origin and unfair competition case, noting that Eleventh 

Circuit has not adopted the doctrine, there is no private right of action under 21 U.S.C. § 331 and 

other statutes, Defendants had not established that a court or government agency had found 

Plaintiff’s product non-compliant with the cited statutes or regulations, and Defendants had not 

established that Plaintiff’s sale of its product “[c]onstitutes a per se violation” of federal law”); 

RooR Int’l BV v. Kinan Shouk, Inc., No. 19-CV-00027, 2019 WL 5088742, at *2 (M.D. Fla. July 

31, 2019) (on a motion to dismiss challenging Plaintiffs’ standing based on alleged illegality of its 

product, refusing to apply unlawful use doctrine, citing FN Herstal SA, and declining to exercise 

discretion to convert motion to dismiss to motion for summary judgment).

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registration and cancellation over which the TTAB holds primary responsibility,14 and in an area 

of tobacco regulation over which the FDA exercises primary jurisdiction.

15

Second, although Plaintiff cites some nonbinding authority supporting application of the 

“unlawful use” defense in a similar posture, see CreAgri, Inc. v. USANA Health Scis., Inc., 474 

F.3d 626, 630 (9th Cir. 2007),

16 there are persuasive authorities pointing in the opposite direction, 

Perry, 994 F.3d at 475; Hi-Tech Pharms. Inc. v. Dynamic Sports Nutrition, LLC, No. 16-CV00949, 2020 WL 10728951, at *6–7 (N.D. Ga. Jan. 10, 2020); RooR Int’l BV v. Kinan Shouk, Inc., 

14 See Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Mgmt., Inc., 744 F.3d 595, 599 (9th 

Cir. 2014) (dismissing claim for cancellation of trademark registration because Section 37 of the 

Lanham Act it does not provide an independent basis for jurisdiction, referring to the TTAB as the 

“primary vehicle for cancellation” (citing 3 J. Thomas McCarthy, McCarthy on Trademarks and 

Unfair Competition § 30:110 (4th ed.))); Beasley v. Howard, 14 F.4th 226, 235–36 (3d Cir. 2021)

(“Because the Lanham Act’s cancellation provision, section 14(c), does not create an independent 

basis for a plaintiff to sue for cancellation in federal district court, a plaintiff . . . could not have 

selected the District Court as a forum to raise any invalidity arguments against Howard unless he 

could have maintained a trademark infringement claim in the District Court at the same time.” 

(internal citation omitted)); E. Iowa Plastics, Inc. v. PI, Inc., 832 F.3d 899, 903 (8th Cir. 2016)

(citing cases) (“EIP’s standing to seek cancellation of the trademark under section 37 of the 

Lanham Act, codified at 15 U.S.C. § 1119, was dependent on its section 38 claim, because section 

37 only provides a remedy for some other violation of the trademark laws, not an independent 

cause of action.”).

15 See 21 U.S.C. § 387a(a); United States v. W. Pac. R.R. Co., 352 U.S. 59, 64 (1956) (primary 

jurisdiction doctrine applies “whenever enforcement of [a] claim requires the resolution of issues 

which, under a regulatory scheme, have been placed within the special competence of an 

administrative body”).

16 Beyond CreAgri, Defendants principally cite out-of-circuit appellate authorities tangentially 

suggesting the idea of “unlawful use” as a defense to trademark infringement [ECF No. 32 p. 8 

n.10 (citing Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987) (in appeal of 

TTAB decision refusing concurrent use registration, referencing general principle that a valid 

application for registration of a trademark cannot be filed without “lawful use in commerce”), and 

United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1226 (10th Cir. 2000) 

(suggesting in dicta that a party, during a jury trial on trademark infringement, may have been 

entitled to a jury instruction on “lawful use” had party sold product in violation of EPA 

regulation)]. 

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No. 19-CV-00027, 2019 WL 5088742, at *2 (M.D. Fla. July 31, 2019)—yielding, at best, a mixed 

landscape with no positive inclination from the Eleventh Circuit. 

Third, on the merits, the Court has considered the matter and agrees with the court in 

Hi-Tech Pharmaceuticals Inc. v. Dynamic Sports Nutrition, LLC, No. 16-CV-00949, 2020 WL 

10728951 (N.D. Ga. Jan. 10, 2020), that the unlawful use doctrine should not be wielded to do 

what Defendants seek in this infringement action—i.e., to essentially strip Plaintiff of its trademark 

property interest, without an independent basis to seek cancellation of Plaintiff’s mark. Various 

considerations inform this conclusion. To begin, there is the already-stated observation that the 

“unlawful use doctrine” has its home in the administrative setting as a tool in TTAB proceedings 

to challenge registrations and/or to cancel previously issued registrations. FN Herstal SA, 838 

F.3d at 1086. That makes sense and accords with the applicable regulatory structure, which makes 

the TTAB the primary vehicle for cancellation of registered marks. Supra note 14. Furthermore, 

as a related point, and as all parties agree, the FDCA does not provide for a private cause of action 

to enforce the requirements thereunder. 21 U.S.C § 337(a) (stating that actions brought to enforce 

FDCA “shall be by and in the name of the United States”); Keller v. Strauss, 480 F. App’x 552, 

554 (11th Cir. 2012) (citing Ellis v. C.R. Bard, Inc., 311 F.3d 1272, 1284 n.10 (11th Cir. 2002)); 

[see also ECF No. 60 p. 21:22–25]. Yet Defendants’ request in this action largely does a run 

around that principle, giving Defendants the benefit of a declaration of a competitor’s invalidity 

without going through the TTAB cancellation process, and of course without any finding of 

non-compliance by the primary regulatory of tobacco (FDA). See Hi-Tech Pharms. Inc, No. 16-

CV-00949, 2020 WL 10728951, at *6 (“[T]here is no private right of action under the statutes 

Defendants cite. . . . Whether Plaintiff has violated the provisions of these statutes are matters best 

left for the applicable government agencies.”). Finally, although Defendants have offered some 

support for its theory of Plaintiff’s non-compliance, there is no evidence that the FDA has found 

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Plaintiff’s e-cigarettes to be in violation of the FDCA or its applicable regulations. To reach that 

determination with clear and convincing evidence would require extrapolations and inferences 

from the present record, see supra note 10, which is a matter best left for the FDA in any event. 

II. Likelihood of Success on the Merits 

As to the first element for a preliminary injunction, the Court finds that Plaintiff has 

established a likelihood of success on the merits on its trademark infringement claim. Plaintiff’s 

ELF mark has priority over Defendant’s use of the ELFBAR, and Defendants’ use of ELFBAR to 

market their e-cigarette products creates a likelihood of confusion with Plaintiff’s ELF mark. 

a. Priority 

Plaintiff has met the first requirement for likelihood of success on the merits because 

Plaintiff has established that it has priority in the ELF mark. “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, 574 U.S. 418, 419 (2015). 

Here, Plaintiff alleges that it first used the ELF mark in marketing its e-cigarettes on November 

24, 2017 [ECF No. 1 ¶¶ 13–14]. Moreover, Plaintiff obtained a trademark registration for the ELF 

mark from the USPTO on June 5, 2018 [ECF No. 1 ¶ 15; ECF No. 1-1]. Defendants, however, 

did not begin using the ELFBAR mark in marketing e-cigarettes until around July 2021 

[ECF No. 1 ¶¶ 71, 73]. As such, Plaintiff was the first to use the ELF mark in commerce. 

Defendants do not dispute this fact. The Court, therefore, finds that Plaintiff has priority for the 

ELF mark because it first used the mark in commerce. 

b. Likelihood of Confusion 

The factors for establishing likelihood of confusion weigh soundly in favor of finding that 

Defendants’ use of the ELFBAR mark is likely to cause confusion with Plaintiff’s ELF mark. 

Plaintiff has demonstrated that the ELF mark is strong; that there is great similarity between the 

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ELF mark and Defendants’ ELFBAR mark; that the products utilizing the mark are nearly 

identical; that both parties market their products to the same retail outlets and customers; that both 

parties utilize similar advertising media; and that Defendants manifested improper intent in 

adopting the ELFBAR mark. The Court addresses each factor in turn below. 

i. Type/Strength of Mark 

The first factor in assessing likelihood of consumer confusion is the strength of the 

allegedly infringed mark, which is an inquiry that proceeds in two parts: first, the Court classifies 

the mark as “generic,” “descriptive,” “suggestive,” or “arbitrary,” with “arbitrary” carrying the 

strongest protection, and then second, the Court considers “the degree to which third parties make 

use of the mark.” Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc., 830 F.3d 1242, 1256–57 

(11th Cir. 2016). Id. at 1336. “‘The less that third parties use the mark, the stronger it is, and the 

more protection it deserves.’” Id. at 1257 (quoting Frehling Enters., 192 F.3d at 1336). 

The evidence establishes that Plaintiff’s ELF mark is a so-called “arbitrary” mark that

receives greater trademark protection in the strength continuum of marks. There are four 

categories of marks—generic, descriptive, suggestive, and arbitrary—which are based on the 

relationship between the name and the service or good it describes. Frehling Enters., 192 F.3d at 

1335. “An arbitrary mark is a word or phrase that bears no relationship to the product.” Id. 

Plaintiff argues that the ELF mark is arbitrary and thus worthy of the greatest trademark protection 

[ECF No. 5 pp. 11–12]. Plaintiff notes that ELF “had no significance in the electronic cigarette 

industry, prior to VPR’s use of the ELF Mark” [ECF No. 5 pp. 11–12]. The Court agrees, and 

Defendants do not meaningfully dispute the conceptual strength of Plaintiff’s mark [ECF No. 32 

pp. 11–12]. The ELF mark does not bear any relationship to the product it is used on—e-cigarettes 

and related products. Given the arbitrary nature of the mark, Plaintiff’s ELF mark falls in the 

“strongest of the four categories.” See Frehling Enters., Inc., 192 F.3d at 1336. 

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Turning to the “degree to which third parties make use of the mark,” id., the only evidence 

of third-party use is Defendants’ use of the mark in marketing ELFBAR products. Nor do

Defendants advance a theory about third-party use weakening Plaintiff’s mark. Defendants do, 

however, dispute the commercial strength of Plaintiff’s mark, arguing that Plaintiff’s mark is 

commercially weak because of Plaintiff’s low sales of ELF products within the e-cigarette industry 

[ECF No. 32 pp. 11–12]. Defendants then assert, as a counterpoint, that the ELFBAR mark has 

significant commercial strength as indicated by strong sales since Defendants introduced ELFBAR 

into the U.S. market [ECF Nos. 58-18, 58-19 (providing sales data of two of Defendants’ 

distributors); see ECF No. 60 pp. 72:8–13, 98:18–24 (testimony about ELFBAR product being so 

popular that counterfeit products have sprung up when there has been a shortage of ELFBAR 

products on the market)]. As a rejoinder, Plaintiff does not contest that its sales are “paltry” when 

compared to Defendants’ sales of the ELFBAR products [ECF No. 60 p. 126:13–16]. But Plaintiff 

maintains that its mark merits strong trademark protection even if it is less commercially 

successful. The Court agrees and declines to afford the ELF mark less trademark protection simply 

because Plaintiff’s sales of the product are significantly less than Defendants’ sales for the 

ELFBAR products. Defendants are not entitled to infringe on a validly registered trademark and 

then attempt to avoid consequences for that infringement by outperforming the trademark holder 

in sales. Plaintiff’s ELF mark is a validly registered trademark [ECF No. 1-1], the mark can be 

categorized as arbitrary, and there has been no evidence of third parties, outside of Defendants, 

using the mark. Taken together, this speaks to the strength of the ELF mark, even acknowledging 

that Plaintiff’s sales of its ELF products are much less than Defendants’ sales of its allegedly 

infringing products. This factor weighs in favor of finding a likelihood of confusion. 

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ii. Similarity of Mark

The Court also determines that the ELF and ELFBAR marks are sufficiently similar to 

support a finding of likelihood of confusion. This factor “requires the factfinder to compare the 

plaintiff’s marks with the defendant’s marks and measure their similarity. The greater the 

similarity, the greater the likelihood of confusion.” Fla. Int’l Univ. Bd. of Trs., 830 F.3d at 1260 

(internal citations omitted). This does not require the marks to be identical, rather “the key 

question remains whether the marks are sufficiently similar ‘to deceive the public.’” Id. (quoting 

Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33 (1900)). The court is to consider “the 

overall impression created by the marks” by using points of comparison such as “‘the appearance, 

sound and meaning of the marks, as well as the manner in which the marks are used.’” Id. (quoting 

John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 975 (11th Cir. 1983)). 

Plaintiff argues that the marks are sufficiently similar because both parties use the term 

ELF to identify their e-cigarette products, noting further that Defendants’ “addition of the word 

‘bar’ is irrelevant because it is descriptive of the shape of the product” [ECF No. 5 p. 12]. Plaintiff 

also notes that “bar” is commonly used in the e-cigarette industry to refer to bar-shaped 

e-cigarettes, similar to the ones marketed by Plaintiff and Defendants [ECF No. 5 p. 12]. 

Defendants respond by arguing that their ELFBAR mark is “a unitary term comprised of two 

syllables that creates a different overall impression in terms of sight, sound, meaning, and overall 

commercial impression” from Plaintiff’s ELF mark [ECF No. 32 p. 13]. Defendants then ask the 

Court to reject Plaintiff’s attempt to “dissect[]” its mark into component parts and instead find that 

the marks are dissimilar [ECF No. 32 p. 13]. 

Upon review of the full record, Plaintiff has met its burden to show that the ELF and 

ELFBAR marks are sufficiently similar, and thus, likely to lead “‘to deceive the public.’” Fla. 

Int’l Univ. Bd. of Trs., 830 F.3d at 1260 (quoting Saxlehner, 179 U.S. at 33). As an initial matter, 

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the marks appear similar—they both begin with the same three-letter word—ELF. Though 

Defendants have added the addition of “bar” to their mark, the Court does not find this addition to 

materially lessen the similarity of the marks. The evidence presented established that “bar” is 

often added to the end of other words to form the names of e-cigarette products. For example, the 

Court heard testimony about other competitors in the e-cigarette industry such as Puff Bar, Biff 

Bar, Luffbar, and Geek Bar [see, e.g., ECF No. 60 p 119:5–6]. Additionally, the marks are used 

to market nearly identical products, as more fully discussed below. Both parties utilize their 

respective marks to market their e-cigarette products and related accessories; they are not utilizing 

the marks in separate fields. This contributes to the strong possibility that Defendants’ use of 

ELFBAR causes consumer confusion with Plaintiff’s ELF mark. 

In sum, when considering the marks as a whole, the Court concludes that the overall 

impression created by the ELF and ELFBAR marks renders the marks similar in a manner that 

would contribute to a likelihood of confusion in the e-cigarette market. This factor weighs in favor 

of finding that Plaintiff is likely to succeed in showing a likelihood of confusion, and ultimately, 

achieve success on the merits of its trademark infringement claim. 

iii. Similarity of Products

The factor of similarity of products “requires a determination as to whether the products 

are the kind that the public attributes to a single source, not whether or not the purchasing public 

can readily distinguish between the products of the respective parties.” Frehling Enters., Inc., 192 

F.3d at 1338. “[T]he test [is] not whether the goods could be distinguished . . . but whether the 

goods are so related in the minds of consumers that they get the sense that a single producer is 

likely to put out both goods.” Id. The court must determine whether “a reasonable consumer could 

possibly attribute the products . . . to the same source.” Id. 

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That test is satisfied here; both parties’ products are similar, contributing to a likelihood of 

confusion among consumers about the source of the products. Plaintiff argues that both e-cigarette 

products have the same bar shape and appear to be “virtually identical” [ECF No. 5 pp. 12–13]. 

Defendants respond that the bar shape is functional and “used widely in the industry,” and as such, 

cannot be the basis for finding the products to be similar [ECF No. 32 p. 14]. Defendants also 

contrast the products by stating that while Weiboli’s products contain e-liquid and are disposable

and ready to use upon purchase, Plaintiff’s ELF products do not contain any e-liquid, are 

rechargeable, and must be paired with a separate mouthpiece before use [ECF No. 32 p. 14]. 

Although the Court heard testimony about these differences in the products [see, e.g., ECF No. 46 

p. 34:15–19], these differences are not significant in a way that would undermine the Court’s 

finding that a reasonable consumer could attribute the ELF and ELFBAR products to a singular 

source. See Frehling Enters., Inc., 192 F.3d at 1338. The shape and size of the two products are

nearly identical, rendering them nearly indistinguishable to the naked eye, notwithstanding the 

different names attached [Compare ECF No. 38-2, with ECF No. 38-14]. The products perform 

the same function, allowing a consumer to vape the liquid placed inside. Thus, from the 

appearances of the products, they are similar such that the public could attribute them to a single 

source. See Frehling Enters., Inc., 192 F.3d at 1338. 

The Court recognizes the differences in the functions of the products, but finds that overall,

a reasonable consumer could attribute both the ELF and ELFBAR products to a single source. 

This similarity of products contributes to the likelihood of confusion between the products. 

iv. Similarity of Retail Outlets and Customers

The parties also sell their products in similar retail outlets and to similar customers, which

contributes to a likelihood of confusion about the origin of the products. “Dissimilarities between 

the retail outlets for and the predominant consumers of plaintiff’s and defendants’ goods lessen 

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the possibility of confusion, mistake, or deception.” Amstar Corp. v. Domino's Pizza, Inc., 615 

F.2d 252, 262 (5th Cir. 1980). “This factor takes into consideration where, how, and to whom the 

parties’ products are sold.” Frehling Enters., Inc., 192 F.3d at 1339. Direct competition is not 

required. Id. Here, both parties sell their products in vape shops through wholesale distributors 

and market them to the same customer base—individuals who use e-cigarettes. 

Plaintiff argues that the parties have overlapping sales channels and the same consumers 

of their products [ECF No. 5 p. 13]. Defendants respond by arguing that because they do not sell 

their ELFBAR products through Plaintiff’s website, and because Defendants use a different 

distribution network, the parties do not have similar retail outlets and customers [ECF No. 32 

pp. 14–15; ECF No. 65 p. 21]. The evidence presented to the Court undercuts Defendants’ 

contention of dissimilar outlets. As the record indicates, both parties advertise their products to 

wholesale distributors through industry magazines [see ECF No. 46 p. 34:11–15]. The parties then 

utilize the wholesale distributors to sell their products to vape shops, smoke shops, and 

convenience stores throughout the country [ECF No. 34 p. 24:12–19 (describing the way in which 

Plaintiff’s products are distributed); ECF No. 60 p. 56:8–11 (describing how the e-cigarette 

channels of distribution work); ECF No. 60 p. 87:21–23 (describing the places where Defendants’ 

products are sold)]. Though Defendants presented testimony that certain of Defendants’

distributors had never seen Plaintiff’s ELF products in the vape shops and convenience stores they 

had visited [ECF No. 60 pp. 62:5–9, 91:1–4], direct competition between the products is not 

required. See Frehling Enters., Inc., 192 F.3d at 1339. On the whole, the Court finds that the 

parties utilize the same retail outlets—smoke shops, vape shops, and convenience stores through 

wholesale distributors—to sell their products. 

The parties also sell their products to a similar consumer base. Though Plaintiff’s products 

do not contain any nicotine e-liquid when sold [ECF No. 46 p. 72:15–20], both parties market and 

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sell their e-cigarette products to members of the public who are interested in vaping. The only 

difference is that consumers of Plaintiff’s products can choose to vape other substances, such as 

essential oils and supplements in addition to nicotine [ECF No. 46 p. 72:14–15]. The main 

consumer base for both the ELF and ELFBAR products remains a consumer interested in vaping, 

though Defendants’ base may be partially narrowed to consumers interested in vaping only 

nicotine e-liquid. This similarity in the consumer base contributes to a likelihood of confusion 

about the origin of the parties’ products. 

v. Similarity of Advertising Media

Both parties utilize similar advertising media—magazines marketed to wholesale 

distributors—to attract customers, which contributes to a likelihood of confusion about the source 

of the products. 

The greater the similarity in the advertising methods, the greater the likelihood of 

confusion. Sovereign Mil. Hospitaller Ord. of Saint John of Jerusalem of Rhodes & of Malta v. 

Fla. Priory of the Knights Hospitallers of the Sovereign Ord. of Saint John of Jerusalem, Knights 

of Malta, The Ecumenical Ord., 809 F.3d 1171, 1188 (11th Cir. 2015). “‘[T]he standard is whether 

there is likely to be significant enough overlap in the [audience of the advertisements] that a 

possibility of confusion could result.’” Fla. Int’l Univ. Bd. of Trs., 830 at 1262 (quoting Frehling 

Enters., Inc., 192 F.3d at 1340). 

The Court finds such an overlap exists here. Plaintiff argues that “both parties advertise 

their e-cigarettes online,” which “supports a likelihood of confusion” [ECF No. 5 p. 13]. 

Defendants counter that there can be no likelihood of confusion, because Plaintiff “does not show 

that the parties use the same discrete types of online advertising” when Plaintiff advertises only on 

its own website [ECF No. 32 p. 15]. At the hearing, however, the Court was presented with 

additional information about the parties’ advertising methods. Specifically, Defendants’ 

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distributor witness (Haitham Shriteh, Operations Manager for Defendant Safa Goods), explained 

that, in the e-cigarette industry, the manufacturer (such as Plaintiff or Weiboli here) sells its 

product to master distributors (or distributors), who ultimately sell the products to the stores where 

the everyday consumer can access them [ECF No. 60 p. 56:8–11]. Plaintiff’s CEO testified that 

they “are not legally allowed to advertise to consumers [because] the products are not acceptable 

to most advertising agencies” [ECF No. 46 p. 2:3–5]. Therefore, Plaintiff advertises its products 

to wholesale distributors in trade magazines [ECF No. 46 pp. 23:9–10, 23:22–25, 24:1–5, 

24:16–19]. Defendant similarly advertises in these trade magazines [ECF No. 46 pp. 34:11–19, 

35:9–17; ECF No. 38-16 (advertisement for ELFBAR product in trade show magazine)]. Though 

the record contains some evidence that the parties also market their products via online websites 

[see, e.g., ECF Nos. 38-4 (screenshot of ELF product on Plaintiff’s website); ECF No. 38-14 

(screenshot of ELFBAR product on ELFBAR website)], the testimony establishes that a significant

advertising outlet utilized by e-cigarette companies is trade magazines, which are geared toward 

wholesale distributors. Beyond using the same “method” of advertising (trade magazines), the 

testimony also showed that the parties have in fact utilized the same magazines to market their 

products [ECF No. 46 p. 35:9–17 (stating that the ELFBAR product was advertised in the same 

“magazine [Plaintiff] previously advertised [its] product in”)]. This further supports a “‘significant 

enough overlap in the [audience of the advertisements] that a possibility of confusion could 

result.’” See Fla. Int’l Univ. Bd. of Trs., 830 at 1262 (quoting Frehling Enters., Inc., 192 F.3d at 

1340). 

vi. Defendants’ Intent

The next factor considers “the intent of the alleged infringer to misappropriate the 

proprietor’s good will.” Fla. Int’l Univ. Bd. of Trustees, 830 F.3d at 1255. “If it can be shown 

that a defendant adopted a plaintiff’s mark with the intention of deriving a benefit from the 

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plaintiff’s business reputation, this fact alone may be enough to justify the inference that there is 

confusing similarity.” Frehling Enters., Inc., 192 F.3d at 1340. The Court must determine whether 

the alleged infringer “‘had a conscious intent to capitalize on the plaintiff’s business reputation, 

was intentionally blind, or otherwise manifested improper intent’” in adopting the mark. Fla. Int’l 

Univ. Bd. of Trs., 830 F.3d at 1263 (quoting Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 

508 F.3d 641, 648 (11th Cir. 2007)). 

Although there is no direct evidence that Defendants specifically intended to adopt the ELF 

mark to derive a benefit from Plaintiff’s business reputation, the Court was presented with other 

evidence raising an inference of improper intent on the part of Defendant Weiboli in adopting the 

ELFBAR mark. On this point, Plaintiff argues that Weiboli clearly manifested improper intent 

because it had actual knowledge of the ELF mark by July 19, 2021, when the USPTO rejected its

trademark registration application—yet Weiboli, through the Defendant distributors, “proceeded 

to enter the U.S. market and sell its infringing ELFBAR products” [ECF No. 5 p. 14]. According 

to Plaintiff, this gives “rise to an inference that Defendants intended to benefit from Plaintiff’s 

reputation to Plaintiff’s detriment” [ECF No. 5 p. 14]. Defendants disagree, noting that knowledge 

of Plaintiff’s trademark alone is not evidence of an intent to trade on Plaintiff’s reputation and 

goodwill, pointing also to their “international portfolio of registered trademarks and pending 

applications for the ELFBAR mark for countries spanning multiple continents” [ECF No. 32 

pp. 15–16]. Defendants also argue that Plaintiff’s small sales numbers and relative lack of 

notoriety in the e-cigarette industry shows that Defendants could not have appropriated the ELF 

mark with an intent to “use [Plaintiff’s] goodwill” [ECF No. 60 p. 161:1–8]. And Defendants 

caution that the USPTO’s decision not to register the ELFBAR trademark cannot have res judicata 

effect, nor should the Court be persuaded by the decision of an examining attorney at the USPTO 

[ECF No. 32 p. 10].

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While the Court recognizes that the USPTO’s decision is not determinative of Defendant’s 

intent to misappropriate Plaintiff’s good will, the Court does find it informative as to Defendant

Weiboli’s knowledge and intent at the time it entered the U.S. market with its ELFBAR products. 

There is no dispute—at this point—that Plaintiff’s sales numbers are “paltry” in comparison to the 

sales made by Defendants of the ELFBAR products [ECF No. 60 p. 126:13–16]. That much is 

true, although, as a counterpoint, Plaintiff presented testimony of its noticeably declining sales 

coinciding with Weiboli’s entry into the U.S. market [ECF No. 46 pp. 87:22–25; see ECF No. 58-9 

p. 6; ECF No. 58-10 p. 5 (Plaintiff’s quarterly reports)]. In any event, even without direct evidence 

of Defendants’ intentional use of the ELF mark to specifically derive a benefit from Plaintiff’s 

business reputation, there can be no dispute that Weiboli adopted the ELFBAR mark despite the

uncontested evidence that Plaintiff had a validly registered and preexisting trademark in the ELF 

mark—a mark which the USPTO cited in an official action as a reason to reject Weiboli’s

ELFBAR mark application [ECF No. 38-3]. Specifically, on July 19, 2021, Weiboli was provided 

with notice, through a USPTO Office Action, that its trademark application had been rejected due 

to a likelihood of confusion with Plaintiff’s ELF Mark [ECF No. 38-3]. After acquiring this 

knowledge, Weiboli, through its distributors, proceeded soon after to enter the United States 

market to sell its ELFBAR products [See ECF No. 60 p. 57:15–18 (stating that Safa Goods began 

distributing ELFBAR products in January 2022); ECF No. 60 p. 88:10–12 (stating that Demand 

Vape began distributing ELFBAR products in October 2021)]. Although not conclusive, this 

evidence supports a finding of improper intent on the part of Defendants’ “improper intent” in 

adopting the ELFBAR mark. 

The Court is also unpersuaded by Defendants’ argument that they could not have had an 

improper intent in adopting the mark in the United States because they have valid registrations for 

the mark in multiple other countries [ECF No. 32 p. 16; ECF No. 65 p. 23; see ECF No. 58-7]. 

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The fact remains that Defendants were aware, prior to marketing their ELFBAR products in the 

United States, that USPTO had found a likelihood of confusion with Plaintiff’s ELF mark and used 

that as a basis to reject Weiboli’s application. Despite this knowledge, Defendants entered the 

United States market to sell ELFBAR e-cigarette products and proceeded to achieve great success, 

all the while Plaintiff’s sales declined. This knowledge, the Court finds, is evidence of “improper 

intent” on the part of Defendants, supporting Plaintiff’s showing of a likelihood of consumer 

confusion. 

vii. Actual Confusion 

Though Plaintiff presented a text message received by Plaintiff’s CEO suggesting that one 

of Plaintiff’s distributors had been confused by the origin of the ELFBAR products

[ECF No. 38-11], the Court does not find that evidence sufficiently persuasive to establish actual 

confusion. 

“It is undisputed that evidence of actual confusion is the best evidence of a likelihood of 

confusion. However, such evidence is not a prerequisite, and thus it is up to individual courts to 

assess this factor in light of the particular facts of each case.” Frehling Enters., Inc., 192 F.3d at 

1340. In assessing the weight of the evidence, courts consider who was confused and how they 

were confused. Fla. Int’l Univ. Bd. of Trs., 830 F.3d at 1264. “Short-lived confusion or confusion 

of individuals casually acquainted with a business is worthy of little weight, while confusion of 

actual customers of a business is worthy of substantial weight.” Safeway Stores, Inc. v. Safeway 

Disc. Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982) (internal citations omitted). 

To establish actual confusion, Plaintiff points to a text message its CEO received from its 

distributor, AJ Wholesale Distributor, in June 2022, inquiring about ELFBAR and asking if 

Plaintiff had produced those products [ECF No. 46 pp. 39:6–12, 40:1–20; ECF No. 38-11 (text 

message)]. Defendants argue that this single instance of consumer confusion is insufficient to 

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conclude that there is likelihood of confusion to warrant a preliminary injunction [ECF No. 32 

p. 17]. On this factor, the Court agrees. Though Plaintiff produces evidence that one of its 

distributors was confused about ELFBAR’s origin and briefly thought that Plaintiff “was behind”

the product [ECF No. 38-11 (“Hey are you the one behind elf bar.”)], this amounts most reasonably 

to “short-lived confusion” on the part of the distributor. See Safeway Stores, Inc., 675 F.2d at

1167. Plaintiff’s CEO corrected the confusion, and Plaintiff has produced no other evidence that 

consumers were confused about the origin of the ELFBAR products or otherwise attributed them 

to Plaintiff. As such, the Court cannot conclude that Plaintiff has produced sufficient evidence of 

actual consumer confusion. This factor weighs against a finding that Plaintiff is likely to succeed 

on the merits.

III. Irreparable Injury

Plaintiff has shown that it is likely to suffer irreparable injury in the absence of a 

preliminary injunction. “[A] sufficiently strong showing of likelihood of confusion may by itself 

constitute a showing of substantial likelihood of prevailing on the merits and/or a substantial threat 

of irreparable harm.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525, 

1530 (11th Cir. 1985). Grounds for showing irreparable injury include “‘loss of control of 

reputation, loss of trade, and loss of goodwill.’” Ferrellgas Partners, L.P. v. Barrow, 143 F. App’x 

180, 190 (11th Cir. 2005) (quoting Pappan Enters, Inc. v. Hardee’s Food Sys., Inc., 143 F.3d 800, 

805 (3d Cir. 1998)). Irreparable harm is at its peak when the victim is unable to control the nature 

and quality of the infringer’s goods. Id. at 190–91. “A plaintiff need not show that the infringer 

acted in such a way as to damage the reputation of the plaintiff. It is the loss of control of one’s 

reputation by the adoption of a confusingly similar mark that supplies the substantial threat of 

irreparable harm.” Id. at 191. Plaintiff has met this standard here, even assuming that a showing 

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of likelihood of confusion is not alone sufficient to show irreparable injury. See N. Am. Med. 

Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227 (11th Cir. 2008).

The Court first notes that Plaintiff has produced a “sufficiently strong showing of 

likelihood of confusion.” See E. Remy Martin & Co., S.A., 756 F.2d at 1530. As discussed above, 

see Part II supra, the clear majority of the factors weigh in favor of finding that Plaintiff can 

succeed in showing a likelihood of confusion between their ELF mark and Defendants’ ELFBAR 

mark. As such, on that basis alone, Plaintiff has shown that it is likely to suffer a substantial threat 

of irreparable harm in the absence of a preliminary injunction. See E. Remy Martin & Co.., 756 

F.2d at 1530. 

However, given the Eleventh Circuit’s suggestion in North American Medical Corp. v. 

Axiom Worldwide, Inc., 522 F.3d 1211, 1227–28 (11th Cir. 2008), that the court may require a 

further showing of irreparable injury following the Supreme Court’s decision in eBay Inc. v. 

MercExchange, L.L.C., 547 U.S. 388 (2006), the Court examines the other indicia of irreparable 

harm by Defendants’ use of its mark—ultimately finding a sufficient basis to support Plaintiff’s 

contention that it will suffer irreparable harm absent injunctive relief. See N. Am. Med. Corp., 522 

F.3d at 1227–28 (stating that “a recent U.S. Supreme Court case calls into question whether courts 

may presume irreparable harm merely because a plaintiff in an intellectual property case has 

demonstrated a likelihood of success on the merits” but ultimately declining to adopt a new rule 

on establishing irreparable injury). Specifically, Plaintiff has shown that Defendants’ use of the 

ELFBAR mark has resulted in a loss of trade for their ELF products. Plaintiff’s CEO testified that 

the company has seen its sales decline by more than half since the ELFBAR products were 

introduced into the market because customers are drawn to Defendants’ product which includes 

free nicotine, unlike Plaintiff’s product [ECF No. 46 p. 83:3–25]. This decline in sales began in 

2021, soon after the ELFBAR product was introduced for sale in the United States [ECF No. 46 

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p. 87:20–25]. This drop in sales is reflected in Plaintiff’s gross profits reported to the SEC 

[ECF No. 58-9 p. 6; ECF No. 58-10 p. 5]. Additionally, Plaintiff has also shown that Defendants’ 

use of the ELFBAR mark has resulted in their inability to control the nature and quality of 

Defendants’ goods that are being marketed and sold under the ELFBAR name. Plaintiff expressed 

particular concern over the ELFBAR products being marketed with nicotine e-liquid in candy and 

fruit flavors [ECF No. 46:61:18–20; ECF No. 54-1]. Plaintiff’s ELF products, by contrast, do not 

contain any nicotine e-liquid, leaving it up to the consumer to choose what to use the product for 

[ECF No. 46 p. 72:15–20]. As Plaintiff has no affiliation with Defendants, they are unable to 

control or influence exactly what products are being marketed under the ELFBAR name. This 

results in the potential for Plaintiff to lose control over its reputation, which shows a substantial 

threat of irreparable harm. See Ferrellgas Partners, L.P., 143 F. App’x at 191. 

The Court is not persuaded by Defendants’ argument that Plaintiff’s purported delay in 

seeking the preliminary injunction belies any threat of irreparable harm. Specifically, Defendants 

argue that Plaintiff will not suffer immediate irreparable harm absent an injunction, because 

Plaintiff learned of Defendants’ ELFBAR products as early as May 2022, but waited nearly five 

months to file the instant motion [ECF No. 32 p. 17]. While Defendants are correct that “[a] delay 

in seeking a preliminary injunction of even only a few months—though not necessarily fatal—

militates against a finding of irreparable harm,” Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244, 

1248 (11th Cir. 2016), Plaintiff has offered a reasonable and credible explanation for the “delay”—

specifically, that Plaintiff was attempting in good faith to settle this matter without litigation. 

Plaintiff’s counsel sent a cease-and-desist letter to Defendants in early June 2022, and then the 

parties engaged in settlement discussions until the instant suit was filed in October 2022 

[ECF No. 34 pp. 4–5; ECF No. 38-20; ECF No. 46 p. 82:5–8]. Though there was a period of time 

in which Plaintiff did not seek the instant injunction, the Court does not find that period of time—

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explained by Plaintiff’s attempts to resolve this matter without litigation—undermines the threat 

of irreparable harm. Unlike in the case cited by Defendants, Plaintiff has offered a clear and 

reasonable explanation for its delay in filing the instant motion, which the Court credits. 

The substantial threat of irreparable harm to Plaintiff resulting from Defendants’ use of the 

ELF mark weighs in favor of granting a preliminary injunction. 

IV. Balancing of Harms

The balance of harms weighs in favor of issuing an injunction. In deciding this factor, the 

Court must decide whether the weight of Plaintiff’s financial harm and nonmonetary harm to its 

goodwill and reputation outweighs Defendants’ losses arising from their inability to use Plaintiff’s 

mark until a decision on the merits is reached. 7-Eleven, Inc. v. Kapoor Bros. Inc., 977 F. Supp. 

2d 1211, 1227 (M.D. Fla. 2013) (citing Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297, 

1304 (11th Cir. 2001)). A party does not suffer legitimate harm when the issuance of a preliminary 

injunction would only prevent a party from using marks which they are not entitled to use. Clayton 

v. Howard Johnson Franchise Sys., Inc., 730 F. Supp. 1553, 1561–62 (M.D. Fla. 1988). 

Plaintiff points to the “financial harm and nonmonetary harm to its goodwill and 

reputation” that would be suffered should Defendants be allowed to continue marketing and selling 

their ELFBAR products [ECF No. 5 p. 16]. Meanwhile, Plaintiff argues, “Defendants will suffer 

no legitimate hardship in the event a preliminary injunction is issued, because Defendants have no 

right to engage in their present infringing activities and were on notice by the USPTO that their 

product was potentially confusing” [ECF No. 5 p. 17]. Defendants ask the Court to weigh the 

“substantial lost sales” and the threat to “Defendants’ substantial customer relationships and 

goodwill with their customers nationwide” that would result should the Court issue a preliminary 

injunction in this matter, especially when considering that Defendants’ sales “significantly dwarf” 

Plaintiff’s sales [ECF No. 32 p. 18]. 

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While the Court recognizes that Defendants have had considerable success in the sale of 

their ELFBAR products in the United States, the issuance of the preliminary injunction would 

prevent Defendants only from using marks which the record substantially shows they are not

entitled to use. And Plaintiff has offered sufficient evidence on the flipside to support the harms 

(monetary and non-monetary) it will continue to suffer absent an injunction. The balance of harms 

weighs in favor of Plaintiff. 

V. Public Interest 

The public interest also weighs in favor of issuing a preliminary injunction to enjoin 

Defendants’ marketing and sale of the ELFBAR products in the United States. 

“[T]he public interest is served by preventing consumer confusion in the marketplace.” 

Davidoff & CIE, S.A.., 263 F.3d at 1304. Factors to be considered in the trademark infringement 

context are “the public’s interest in not being confused; the public’s interest in encouraging, not 

stifling, competition; and the broader economic implications of [the] grant of the preliminary 

injunction.” Uber Promotions, Inc. v. Uber Techs., Inc., 162 F. Supp. 3d 1253, 1281 (N.D. Fla. 

2016) (alteration in original) (internal citations and quotation marks omitted). 

Plaintiff points to the likelihood of confusion caused by Defendants’ use of the ELFBAR 

mark as the primary reason the public interest would be served by the issuance of a preliminary 

injunction [ECF No. 5 p. 17]. Plaintiff also points to the significant resources it has expended to 

market its ELF e-cigarette products and e-cigarette accessory products, adding that VPR will suffer 

“both financial harm and nonmonetary harm to its goodwill and reputation” [ECF No. 66 p. 25]. 

Defendants take the opposite view, again suggesting that the likelihood of confusion is “minimal 

or nonexistent” [ECF No. 32 pp. 18–19]. Defendants also presented generalized testimony at the 

hearing that the absence of ELFBAR products on the market could lead to harmful results when 

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counterfeit products that are unsafe for human consumption emerge to fill the void that would be 

left by a preliminary injunction [ECF No. 60 pp. 103:1-7, 109:1–5]. 

While health and safety issues are of paramount importance, the record does not reveal a 

concrete harm to such health and safety by entry of this injunction, and the fact remains that 

Plaintiffs have sufficiently shown that Defendants’ use of the ELFBAR mark has created a 

likelihood of confusion with Plaintiff’s ELF mark. See Part II, supra. The public has an interest 

in the prevention of consumer confusion in the marketplace, Davidoff & CIE, S.A., 263 F.3d at 

1304, and the speculation about potential counterfeit products does not move the Court to disregard 

that salutary public interest. As such, the Court finds that the public interest weighs in favor of 

granting a preliminary injunction and enjoining Defendants’ use of the ELF mark. 

VI. Summation of Factors 

On the whole, and upon a full review of the extensive record, the Court finds that the four 

factors applicable to injunctive relief all weigh in favor of preliminarily enjoining Defendants’ use 

of the ELFBAR mark in the United States. 

VII. Bond

The last issue for the Court to decide is whether, as a prerequisite to the issuance of the 

preliminary injunction, Plaintiff should be required to post a monetary bond. Federal Rule of Civil 

Procedure 65(c) provides that: “The court may issue a preliminary injunction or a temporary 

restraining order only if the movant gives security in an amount that the court considers proper to 

pay the costs and damages sustained by any party found to have been wrongfully enjoined or 

restrained.” Fed. R. Civ. P. 65(c). The amount of the security is within the discretion of the trial 

court, and a court may elect to require no security to be posted at all. BellSouth Telecomms., Inc. 

v. MCIMetro Access Transmission Servs., LLC, 425 F.3d 964, 971 (11th Cir. 2005). Courts will 

refrain from requiring a bond to be posted “when the party seeking the injunction has a high 

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probability of succeeding in the merits of its claim.” Univ. Books & Videos, Inc. v. Metro. Dade 

Cnty., 33 F. Supp. 2d 1364, 1374 (S.D. Fla. 1999). 

The parties in this case have vastly different ideas of what an appropriate bond might be in 

this case. Plaintiff argues that if any bond is required by the Court, it should be no more than 

$100,000 [ECF No. 60 p. 149:23; ECF No. 66 p. 30]. In sharp contrast, Defendants argue that 

only a substantial bond of $200 million would be sufficient to cover the lost profits Defendants 

would suffer if a preliminary injunction is issued [ECF No. 60 p. 151:9–10; ECF No. 65 p. 31]. 

Though the Court heard testimony on the damages that Defendants would incur as a result of the 

Court enjoining Defendants’ sale of ELFBAR products, the Court declines to set an extraordinary 

bond as Defendants request. Instead, because of Plaintiff’s high likelihood of success on the merits 

of its trademark infringement claim, the Court generally agrees with Plaintiff that any bond should 

be relatively modest. The Court will require, as a prerequisite for the issuance of the instant 

preliminary injunction, that Plaintiff shall post a bond of $500,000 in the Court’s registry in 

accordance with Federal Rule of Civil Procedure 65(c). This figure represents a five-fold increase 

in Plaintiff’s proposal and is reasonable under the circumstances.

CONCLUSION

Accordingly, it is hereby ORDERED AND ADJUDGED as follows:

1. Plaintiff’s Motion for Preliminary Injunction [ECF No. 5] is GRANTED as specified 

below. 

2. Defendants, their affiliates, officers, agents, servants, employees, attorneys, confederates, 

and all persons acting for, with, by, through, under or in active concert with them are 

enjoined and restrained from:

a. Importing, distributing, advertising, marketing, or selling all ELFBAR e-cigarette 

products in the United States; and

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b. Using VPR’s ELF registered trademark, any design that looks substantially similar 

to VPR’s ELF trademark, or any mark confusingly similar to VPR’s ELF registered 

trademark, in connection with the importation, distribution, advertising, marketing, 

or sale of any e-cigarette product in the United States. 

3. Pursuant to Federal Rule of Civil Procedure 65(c), and on or before February 28, 2023, 

Plaintiff shall post a bond in the amount of Five Hundred Thousand Dollars and Zero 

Cents ($500,000.00), as payment of damages to which Defendants may be entitled in the 

event it is determined that this injunction is wrongful. 

4. This Order shall remain in effect during the pendency of this case and until further Order 

of the Court.

5. Defendants’ Motion to Reopen Evidentiary Hearing [ECF No. 76], filed nearly two months 

after the hearing, is DENIED. Defendants seeks to reopen the evidentiary hearing to add 

new testimony (oral or in declaration form) from Defendants’ expert regarding a newly 

prepared consumer survey intended to evaluate the likelihood of confusion between 

Plaintiff’s ELF mark and Defendants’ ELFBAR mark [ECF No. 76-1]. The Court denies 

this request. As the expansive record and procedural history in this case indicates, the 

Court held two hearings on the Motion, spanning approximately nine hours [ECF Nos. 39, 

52], and received into evidence numerous exhibits by both parties [ECF Nos. 38, 54, 58]. 

The Court also accepted post-hearing briefs on December 20, 2022, totaling an additional 

sixty pages of briefing on top of the fully briefed Motion [see ECF Nos. 65, 66]. Under 

these circumstances, the Court does not find a sufficient basis to expand the already 

developed record on the Motion.

 

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DONE AND ORDERED in Chambers at Fort Pierce, Florida, this 23rd day of February 

2023.

 _________________________________

 AILEEN M. CANNON

 UNITED STATES DISTRICT JUDGE

cc: counsel of record

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