UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

REPUBLIC TECHNOLOGIES (NA), LLC, and )

SREAM, Inc., )

)

Plaintiffs, )

) No. 20 C 461

v. )

)

NUR TRADING, INC. D/B/A TOBACCO ) Judge Thomas M. Durkin

TIME, and ASIF SALIM, )

)

Defendants. )

MEMORANDUM OPINION AND ORDER

Plaintiff Republic Technologies, LLC (“Republic”) owns certain trademarks

that are in turn licensed by plaintiff Sream, Inc. (“Sream”). Plaintiffs allege that 

defendants Tobacco Time and Asif Salim have engaged in trademark infringement, 

counterfeiting, and false designation of origin/unfair competition in violation of the 

Lanham Act, 15 U.S.C. § 1051 et seq., by offering for sale water pipes and related 

products bearing a branding similar to Republic’s trademarks. Defendants moved to 

dismiss Plaintiffs’ complaint for failure to state a claim under Federal Rule of Civil 

Procedure 12(b)(6). R. 14. For the following reasons, that motion is denied.

Standard

A Rule 12(b)(6) motion challenges the “sufficiency of the complaint.” Berger v. 

Nat. Collegiate Athletic Assoc., 843 F.3d 285, 289 (7th Cir. 2016). A complaint must 

provide “a short and plain statement of the claim showing that the pleader is entitled 

to relief,” Fed. R. Civ. P. 8(a)(2), sufficient to provide defendant with “fair notice” of 

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the claim and the basis for it. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). 

This standard “demands more than an unadorned, the-defendant-unlawfullyharmed-me accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While “detailed 

factual allegations” are not required, “labels and conclusions, and a formulaic 

recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. 

The complaint must “contain sufficient factual matter, accepted as true, to ‘state a 

claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 

550 U.S. at 570). “‘A claim has facial plausibility when the plaintiff pleads factual 

content that allows the court to draw the reasonable inference that the defendant is 

liable for the misconduct alleged.’” Boucher v. Fin. Sys. of Green Bay, Inc., 880 F.3d 

362, 366 (7th Cir. 2018) (quoting Iqbal, 556 U.S. at 678). In applying this standard, 

the Court accepts all well-pleaded facts as true and draws all reasonable inferences 

in favor of the non-moving party. Tobey v. Chibucos, 890 F.3d 634, 646 (7th Cir. 

2018).

Background 

Republic is the registered owner of the RooR trademark. R. ¶ 5. Sream has 

been the exclusive United States licensee authorized to use the RooR trademark since 

2013. Sream is also the manufacturer of RooR glass water pipes and other smokers’ 

articles. R. 1 ¶¶ 5-6, 13. According to Plaintiffs, RooR products are high quality; 

distinctive; “hand-blown by individual artists;” made from “glass that is nearly 

unbreakable; advertised in a “wide array of websites, magazines, and specialty 

shops;” and “immediately identifiable.” Id. ¶¶ 18, 19. As such, genuine RooR-branded 

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products sell for approximately three times more than similar non-RooR branded 

products and are targeted by counterfeiters. Id. ¶¶ 21, 22. 

At all relevant times, defendant Asif Salim owned, managed and/or operated

defendant Tobacco Time, a retail store located in Plano, Illinois. In this capacity, Mr. 

Salim had authority to determine which products to purchase and resell at Tobacco 

Time. Id. ¶ 8. Among those products offered and sold are counterfeit RooR branded 

water pipes and related parts “made of inferior materials and inferior technology as 

compared to RooR brand products.” Id. ¶¶ 7, 24, 26, 31. Photo examples of the 

allegedly infringing products and Tobacco Time’s display are attached to Plaintiffs’

complaint. See id., Ex. E. 

Plaintiffs bring the following Lanham Act claims against Defendants: (1) 

trademark counterfeiting and infringement under 15 U.S.C. § 1114 (Count I); (2) 

trademark counterfeiting under 15 U.S.C. § 1116(d) (Count II); and (3) false 

designation of origin and unfair competition under 15 U.S.C. § 1125(a) (Count III). 

Defendants move to dismiss the complaint in its entirety, arguing that: (1) the 

complaint fails to plausibly allege likelihood of confusion in support of each of 

Plaintiffs’ claims; and (2) the complaint fails to allege an intent to use the RooR mark 

knowing it was counterfeit as required to support Plaintiffs’ counterfeiting claim 

(Count II). The Court addresses these arguments in turn below.

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Analysis

I. Likelihood of Confusion

“[W]hether consumers are likely to be confused about the origin of a company’s 

products is a question of fact” governed by seven factors: “(1) similarity between the 

marks in appearance and suggestion; (2) similarity of the products; (3) the area and 

manner of concurrent use; (4) the degree of care likely to be exercised by consumers; 

(5) the strength of the plaintiff’s mark; (6) whether actual confusion exists; and (7) 

whether the defendant intended to ‘palm off’ his product as that of the plaintiff.” CAE,

Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 677-78 (7th Cir. 2001).1 “No single factor 

is dispositive;” instead, “courts may assign varying weights to each of the factors 

depending on the facts presented.” Id. at 678. “In many cases, the similarity of the 

marks, the defendant’s intent, and actual confusion” are “likely to be particularly 

important.” Id. However, “there is no hard and fast requirement that all three of these 

factors must weigh in the plaintiff’s favor in order to find that a likelihood of confusion 

exists.” Id. at 686.

Because it is fact-intensive, the likelihood of confusion inquiry typically is “best 

left for decision after discovery.” Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752,

769 (N.D. Ill. 2008). As such, the Court’s role at this stage is simply to assess whether 

Plaintiffs have plead facts that plausibly could result in a successful outcome on the 

 1 Defendants’ motion cites an eight-factor likelihood of confusion test and Sixth 

Circuit case law in support. Although similar, that test was not adopted by the 

Seventh Circuit, so the Court declines to address it here.

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likelihood of confusion element of their claims. Top Tobacco v. Fantasia Distrib., Inc., 

101 F. Supp. 3d 783, 790 (N.D. Ill. 2005). As explained below, they have.

Factor 1: Similarity of marks. This factor considers “whether the viewer of 

an accused mark would be likely to associate the product or service with which it is 

connected with the source of products or services with which an earlier mark is 

connected.” AutoZone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008). It is easily met 

here, as Defendants concede.2 Indeed, Plaintiffs allege that Defendants offered for 

sale and did sell counterfeit water pipes bearing RooR marks and attach photographs 

of the marks and products that demonstrate obvious similarity. R. 1 ¶¶ 25, 30; see 

also id., Exs. B and E; R. 14 at 13 (“the factor[ ] of . . . the degree of similarity between 

the marks weigh[s] in favor of Plaintiffs”). Accordingly, the Court turns to the second 

factor.

Factor 2: Similarity of products. Courts assessing this factor consider 

“whether the products are the kind the public might very well attribute to a single 

source.” AutoZone, 543 F.3d at 931. Plaintiffs allege that Sream manufactures, sells 

and advertises RooR-branded water pipes, and that Defendants offer water pipes for 

sale, some of which include the identical RooR mark. That is enough. See KJ Korea, 

Inc. v. Health Korea, Inc., 66 F. Supp. 3d 1005, 1015-16 (N.D. Ill. 2014) (second factor 

satisfied where plaintiffs alleged “that both Plaintiffs and Defendants produce 

 2 Despite this concession, Defendants also argue that Plaintiffs’ allegations concern 

only the physical appearance of the two marks, and that is insufficient under this 

factor. But Defendants are wrong, because Plaintiffs also allege that their genuine 

products are sold in retail stores “specializing in smoker’s products.” R. 1 ¶ 20. In 

other words, stores exactly like Tobacco Time. Id. ¶¶ 32, 64.

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nutritional supplements, massage apparatuses, and health food products in 

association with their respective marks”); Lorillard Tobacco Co. v. J.J. Shell Food 

Market, Inc., 2005 WL 8177551, at *4 (N.D. Ill. Oct. 27, 2005) (second factor satisfied 

where “the counterfeit products are the exact same type of goods as Plaintiffs [sic]”).

Factor 3: Area and manner of use. The third factor considers “whether there 

is a relationship in use, promotion, distribution, or sales between the goods or services 

of the parties.” KJ Korea, 66 F.Supp.3d at 1016 (quoting Ty, Inc. v. Jones Group, Inc.,

237 F.3d 891, 900 (7th Cir. 2001) (internal quotations omitted). The analysis includes 

an evaluation of “relative geographical distribution areas, evidence of direct 

competition between the products, whether products are sold to consumers in the 

same type of store or similar section of a particular store, and whether the product is 

sold through the same marketing channels.” Id. at 1016 (quoting Ty, Inc., 236 F.3d 

at 900). According to Plaintiffs, Sream’s authorized distributors include retail stores 

that service tobacco customers and are located nationwide, including in Illinois. 

Further, Plaintiffs allege that Tobacco Time is a retail store that services tobacco 

customers in Illinois. R. ¶¶ 7, 20, 25, 32. Having alleged that the products are 

distributed in the same general area and are sold to consumers in the same type of 

store, this factor is also satisfied.

Factor 4: Degree of consumer care. The fourth factor concerns the degree of 

care and discrimination consumers are likely to exercise in their purchases. 

Generally, a lesser degree of care “supports a finding that there is a likelihood of 

confusion.” Sorensen v. WD-40 Co., 792 F.3d 712, 730 (7th Cir. 2015). Plaintiffs do not 

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plead any facts regarding consumer care, so this factor weighs against finding that 

Plaintiffs have plausibly alleged a likelihood of confusion.

Factor 5: Strength of mark. This factor “refers to the mark’s 

distinctiveness,” and is measured by “its propensity to identify the products or 

services sold as emanating from a particular source.” CAE, Inc., 267 F.3d at 684. In 

general, “[a] mark’s strength ordinarily corresponds to its economic and marketing 

strength,” Sorensen, 792 F.3d at 731, and the “stronger the mark, the more likely it 

is that encroachment on it will produce confusion,” Autozone, Inc., 543 F.3d at 933.

Here, the complaint alleges (among other things) that: Plaintiffs’ RooR Marks 

are distinctive and incontestable to both the consuming public and those in the 

industry; the RooR brand’s “unique style and functional superiority” has earned it 

“accolades in leading trading magazines and online publications and has made the 

RooR Marks synonymous with high quality products;” RooR-branded products have 

generated over $4 million in sales in the United States for the past three years and 

are “hand-blown by individual artists” from “nearly unbreakable” glass; and Sream 

has been “continuously using” RooR Marks in commerce “throughout the United 

States” since 2013. R. 1 ¶¶ 12, 14, 18, 21, 48, 62, 74. That is enough to support this 

factor, as Defendants concede. See Republic Techs. (NA), LLC v. Rayyann Int’l, 2021 

WL 1143515, at *3 (N.D. Ill. Mar. 25, 2021) (holding similar allegations regarding the 

same mark satisfied the strength of mark factor); see also R. 14 at 13 (“the factor[ ] of 

the strength of Plaintiffs’ marks . . . weigh[s] in favor of Plaintiffs”).

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Factor 6: Actual confusion. Plaintiffs admit that they have not plead facts 

to allege actual confusion. But although as noted this factor can be important to the 

likelihood of confusion analysis, “evidence of actual confusion . . . is not required to 

prove that a likelihood of confusion exists.” CAE, Inc., 267 F.3d at 685. Accordingly, 

this factor favors dismissal, but is not determinative. 

Factor 7: Intent. As to the last factor, Plaintiffs allege that Defendants 

intentionally adopted the Plaintiffs’ RooR marks to trade on the goodwill associated 

with them. R. 1 ¶¶ 34, 35, 53, 66, 79. Defendants contend that these allegations are 

too conclusory to pass muster.3 The Court agrees and finds that this factor is neutral. 

See Top Tobacco, 101 F. Supp. 3d at 791 (plaintiff’s conclusory allegations did “not 

weigh particularly heavily in favor of or against likelihood of confusion”).

* * * * *

Plaintiffs have alleged sufficient facts to support factors 1, 2, 3 and 5, and of 

the remaining three factors, one is neutral. The Court thus declines to dismiss the 

complaint for failure to allege a likelihood of confusion. See Republic Techs. (NA), LLC 

v. Friends Trading Inc., 2020 WL 5905218, at *7 (N.D. Ill. Oct. 6, 2020) (plaintiffs 

“raised the possibility of likelihood of confusion ‘above a speculative level’” by alleging 

sufficient facts as to factors 1, 2, 3 and 5); see also Top Tobacco, 101 F. Supp. 3d at 

 3 Defendants also contend that they did not know that the products at issue were 

counterfeit and that they removed them from Tobacco Time’s shelves immediately 

when that fact was discovered, and after having only sold “a few products.” R. 14 at 

15. But that issue is properly the subject of discovery, not a basis for dismissal.

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792 (same); Mon Aimee Chocolat, 2015 WL 6407758, at *5-6 (N.D. Ill. Oct. 22, 2015) 

(same).

II. Intentional Use of a Mark Knowing Product Was Counterfeit

Defendants separately contend that dismissal of Plaintiffs’ counterfeiting 

claim is proper because Plaintiffs have not alleged facts indicating that Defendants 

sold counterfeit products knowing they were counterfeit. Defendants cite a case from 

the Eastern District of Tennessee to support the existence of such a requirement. See 

R. 14 at 14-15 (citing Ford Motor Co. v. Heritage Mgmt. Group, Inc., 911 F. Supp. 2d 

616, 621 (E.D. Tenn. 2012) (a plaintiff who alleges counterfeiting “must also show 

that the defendant intentionally used the mark knowing it was counterfeit, as the 

term counterfeit is defined in 15 U.S.C. § 1116”)). But nothing in the statute suggests 

that knowledge or intent is an element of a counterfeiting claim, and the Seventh 

Circuit has expressly stated that “[s]ellers bear strict liability for violations of the 

Lanham Act.” Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d 

1143, 1152 n.6 (7th Cir. 1992) (emphasis added). Instead, “intent and knowledge 

requirements are relevant in determining how to remedy a counterfeiting violation;”

they have “nothing to do with what is necessary to establish a counterfeiting violation 

in the first place.” Friends Trading, Inc., 2020 WL 5905218, at *7 (emphasis added); 

see also id. (“a plaintiff is entitled to recover statutory damages even for ‘innocent’ 

counterfeiting”); Lorillard Tobacco Co., 2005 WL 8177551, at *3 n.2 (N.D. Ill. Oct. 27, 

2005) (§ 1114(1)(a) “makes no mention of intention”). Defendants’ motion is denied.

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Conclusion

For the foregoing reasons, Defendants’ motion to dismiss, R. 14, is denied. A 

status hearing is set for April 21, 2021 at 9:00 a.m. The parties are directed to file a 

proposed discovery schedule with the Court by April 19, 2021.

ENTERED:

_______________________

Honorable Thomas M. Durkin

United States District Judge

Dated: April 7, 2021

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