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NOT FOR PUBLICATION (Docket No. 20)

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW JERSEY

CAMDEN VICINAGE

_____________________________________

:

LORILLARD TOBACCO COMPANY :

:

:

Plaintiff, : Civil No. 11-1420 (RBK/AMD)

:

v. : OPINION

:

TROPICAL GROCERY STORE, :

ABUL KALAM AZAD, :

KHALEDA YESMIN, : 

:

Defendants. :

____________________________________ :

KUGLER, United States District Judge:

This matter comes before the Court upon a Motion for Summary Judgment by Lorillard 

Tobacco Company (“Plaintiff”) on Count I of its Amended Verified Complaint against Tropical 

Grocery Store (“Tropical”) and Abul Kalam Azad (“Azad”) (collectively, “Defendants”). 

Plaintiff alleges that Defendants are liable for selling counterfeit versions of Plaintiff’s products 

in violation of 15 U.S.C. § 1114(1)(a). Defendants have not filed opposition to Plaintiff’s 

motion.

For the reasons expressed below, the Court will grant Plaintiff’s motion.

I. BACKGROUND

This lawsuit comes before the Court as a result of the Defendants’ alleged sale of 

counterfeit cigarettes bearing Plaintiff’s registered marks. Pl. Br. in Supp. of Summ. J., 1. 

Plaintiff owns the Newport® and Lorillard® trademarks, which are associated with the leading 

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brand of menthol cigarettes and the second-leading cigarette brand in United States overall. Id.

at 2. Plaintiff has owned the trademarks and associated trade dress, which are registered with the 

United States Patent and Trademark Office, since 1956. Id. Eight of Plaintiff’s marks are at 

issue in this case. Id. 

Azad owns Tropical, a retail grocery store in Atlantic City, New Jersey. Id. at 3. On 

March 8, 2011, one of Plaintiff’s employees entered Tropical and discovered what he believed to 

be three stale packs of Newport® cigarettes. Id. The employee replaced the stale products with 

fresh packs and sent the stale packs to Plaintiff’s offices for further inspection. Id. 

An expert in identifying counterfeit product, employed by Plaintiff, examined the packs 

and determined them to be counterfeit. O’Brien Dec., 1-2. The expert first discovered that the 

tear tape used to remove the cellophane wrapping from cigarette packaging was more elastic on 

the packs removed from Tropical than on the authentic product. Id. at 2. Secondly, he noted that 

the printing on the side panels of the replaced packs were much clearer than that of Plaintiff’s

products. Id. Lastly, the expert noticed that the replaced packs contained out-of-date product 

codes which are no longer used by Plaintiff. Id. The combination of these observations led him 

to determine that the packs removed from Tropical were counterfeit. Id. Plaintiff received a 

court order authorizing a seizure at the store, conducted by members of the U.S. Marshal Service 

on March 22, 2011. Pl. Br. in Supp. of Summ. J., 3. No additional counterfeit cigarettes were 

found at that time. Id. 

Plaintiff claims that Defendants are strictly liable for selling the counterfeit cigarettes 

under Section 1114(1)(a) of the Lanham Act, which forbids the sale of products bearing 

counterfeited versions of another person’s registered marks. Pl. Br. in Supp. of Summ. J., 1, 5. 

Defendants submitted no opposition, but in their answer contended that they are not capable of 

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distinguishing between counterfeit and authentic cigarettes. Def. Resp. to Pl. Amend. Compl., 1. 

Defendants claim further that they discontinued sale of the counterfeit product as soon as they 

became aware of the issue and that their suppliers are responsible for the counterfeit products 

reaching their store. Id.

II. LEGAL STANDARD

Summary judgment is appropriate where the Court is satisfied that “there is no genuine 

issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed. 

R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). A genuine issue of material 

fact exists only if the evidence is such that a reasonable jury could find for the non-moving party. 

Anderson v. Liberty Lobby, Inc, 477 U.S. 242, 248 (1986). When the Court weighs the evidence 

presented by the parties, “[t]he evidence of the non-movant is to be believed, and all justifiable 

inferences are to be drawn in his favor.” Id. at 255.

The burden of establishing the nonexistence of a “genuine issue” is on the party moving 

for summary judgment. Aman v. Cort Furniture Rental Corp., 85 F.3d 1074, 1080 (3d Cir. 

1996). The moving party may satisfy its burden either by “produc[ing] evidence showing the 

absence of a genuine issue of material fact” or by ‘showing’ — that is, pointing out to the district 

court — that there is an absence of evidence to support the nonmoving party’s case.” Celotex, 

477 U.S. at 325.

Once the moving party satisfies this initial burden, the nonmoving party must “set out 

specific facts showing a genuine issue for trial.” Fed. R. Civ. P. 56(e). To do so, the nonmoving 

party must “do more than simply show that there is some metaphysical doubt as to the material 

facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rather, to 

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survive summary judgment, the nonmoving party must “make a showing sufficient to establish 

the existence of [every] element essential to that party’s case, and on which that party will bear 

the burden of proof at trial.” Celotex, 477 U.S. at 322. Furthermore, “[w]hen opposing 

summary judgment, the nonmovant may not rest upon mere allegations, but rather must ‘identify 

those facts of record which would contradict the facts identified by the movant.’” Corliss v. 

Varner, 247 F. App’x 353, 354 (3d Cir. 2007) (quoting Port Auth. of N.Y. and N.J. v. Affiliated 

FM Ins. Co., 311 F.3d 226, 233 (3d Cir. 2002)).

In deciding the merits of a party’s motion for summary judgment, the court’s role is not 

to evaluate the evidence and decide the truth of the matter, but to determine whether there is a 

genuine issue for trial. Anderson, 477 U.S. at 249. Credibility determinations are the province 

of the factfinder, not the district court. BMW, Inc. v. BMW of N. Am., Inc., 974 F.2d 1358, 

1363 (3d Cir. 1992).

III. DISCUSSION

Plaintiff asserts that summary judgment should be granted because there is no genuine 

issue of material fact as to Defendants’ sale of the counterfeit cigarettes. Defendants have not 

responded to Plaintiff’s Motion for Summary Judgment but claim in their answer to Plaintiff’s 

Complaint that the companies responsible for supplying the cigarettes to Defendants, rather than 

the Defendants themselves, should bear responsibility.

Plaintiff’s Amended Complaint alleges a violation of Section 1114(1)(a) of the Lanham 

Act, which creates civil liability for any person who:

use[s] in commerce any reproduction, counterfeit, copy or colorable imitation of a 

registered mark in connection with the sale, offering for sale, distribution, or advertising 

of any goods or services on or in connection with which such use is likely to cause 

confusion, or to cause mistake, or to deceive. 

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15 U.S.C. § 1114(1)(a).

In the Third Circuit, trademark infringement is established when a plaintiff proves that: 

(1) the mark or marks are valid and legally protectable, (2) the marks are owned by Plaintiff, and 

(3) the defendant’s use of marks to identify goods or services is likely to create confusion 

concerning the origin of goods or services. A & H Sportswear, Inc. v. Victoria’s Secret Stores, 

Inc., 237 F.3d 198, 211 (3d Cir. 2000). Plaintiff argues that its trademarks are valid and that 

consumers will be confused by Defendant’s use of Plaintiff’s trademarks.

The first prong, validity and legal protectablity, as well as the second prong, ownership,

can be established by demonstrating federal registration of a mark and use of the mark by the 

Plaintiff for the requisite period of time. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 

277, 291 (3d Cir. 1991). A movant establishes that a mark is valid and legally protectable when 

the mark in dispute has become incontestable under 15 U.S.C. § 1065. Ford Motor, 930 F.2d at 

291. Ownership is also established by a showing of incontestability. Id. A mark becomes 

incontestable if it is registered on the Principle Register and has been used continuously for five 

years. 15 U.S.C. § 1065. 

When a mark meets these requirements, the statute provides nine defenses which a 

defendant may assert to refute incontestability. These include fraud in obtaining the registration 

or incontestability, abandonment of the mark by the registrant, or use of the mark with the 

permission of the registrant so as to misrepresent the source of the goods on which the mark is 

used. 15 U.S.C. § 1115(b). Defendants have not forwarded any of these defenses and, as a 

result, this Court will not consider them. 

Plaintiff’s marks are registered on the Principal Register and Defendant has not 

challenged the validity or legal status of Plaintiff’s marks. Plaintiff’s marks have also been used 

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continuously for over five years and thus have obtained incontestable status. Other courts have 

recognized Plaintiff’s marks to be valid and protectable trademarks. See, e.g., Lorillard Tobacco 

Co. v. Jamelis Grocery, 378 F. Supp. 2d 448 (S.D.N.Y. 2005); Lorillard Tobacco Co. v. S & M 

Cent. Serv. Corp., 2004 WL 2534378 (N.D. Ill. 2004). Accordingly, the marks are valid, legally

protectable and owned by Plaintiff, satisfying the first and second prongs of the test for 

trademark infringement.

In addition to proving validity, protectability and ownership, Plaintiff must also establish 

that the use of marks by Defendants is likely to cause consumer confusion. A likelihood of 

confusion exists “when the consumers viewing the mark would probably assume that the product 

or service it represents is associated with the source of a different product or service identified by 

a similar mark.” Id. Marks “are confusingly similar if ordinary consumers would likely 

conclude that [the two products] share a common source, affiliation, connection or sponsorship.” 

Fisons Horticulture v. Vigoro Indus., 30 F.3d 466, 477 (3d. Cir. 1994). The Third Circuit applies

a ten-factor test to determine if the use of a mark will cause consumers to assume the product 

comes from a different source bearing similar marks. See Interpace Corp. v. Lapp, Inc., 721 

F.2d 460, 463 (3d Cir. 1983). The factors should be used both in cases of competing goods and 

noncompeting goods. A & H Sportswear, 237 F.3d at 212-13.

In order to determine whether a likelihood of consumer confusion exists, the Court will

consider: (1) the degree of similarity between the owner's mark and the alleged infringing mark; 

(2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the 

care and attention expected of consumers when making a purchase; (4) the length of time the 

defendant has used the mark without evidence of actual confusion arising; (5) the intent of the 

defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, 

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though not competing, are marketed through the same channels of trade and advertised through 

the same media; (8) the extent to which the targets of the parties' sales efforts are the same; and

(9) the relationship of the goods in the minds of consumers because of the similarity of the 

product’s function. Lapp, 721 F.2d at 463. The Court will also consider any other facts 

suggesting that the consuming public might expect the prior owner to manufacture a product in 

the defendant's market, or that he is likely to expand into that market. Id. Each factor must be 

weighed and balanced one against the other and none is determinative of the likelihood of 

confusion. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F. 3d 270, 286 (3d 

Cir. 2001). However, “the court often need not apply each and every factor.” A & H

Sportswear, 237 F.3d at 216. 

Similarity between the marks in question is the single most important factor in 

determining the likelihood of confusion. Id. The proper test to be conducted in deciding the 

degree of similarity is not a side-by-side comparison but “whether the labels create the same 

overall impression when viewed separately.” Fisons, 30 F.3d at 477. The “appearance, sound 

and meaning of the marks” should be considered in the analysis. Checkpoint Sys., Inc. 269 F.3d 

at 281. When products are directly competing and the marks are very similar, a district judge has 

discretion to consider the similarity of the marks alone. Id. at 214.

The marks used on the products sold by Defendants were identical to the marks owned by 

Plaintiff. “There is a great likelihood of confusion when an infringer uses the exact trademark.” 

S & R Corp. v. Jiffy Lube Int’l., Inc., 968 F.2d 371, 375 (3d Cir. 1992). When viewed 

separately, the marks used on the packaging of the counterfeit products and Plaintiff’s registered 

marks are indistinguishable. O’Brien Dec., Ex. A; Lindsley Dec., Ex. 2. The ordinary consumer

would believe that the products sold by Defendants were manufactured by Plaintiff. So, the first 

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factor weighs in favor of Plaintiff. In fact, given that the products are identical and thus clearly 

competing products, this Court could resolve this dispute based solely on this factor. The Court 

will, nonetheless, consider the remaining factors. 

The Court next turns to the strength of the mark to determine the likelihood of consumer 

confusion. In analyzing this factor the Court considers: (1) “the inherent features of mark 

contributing to its distinctiveness or conceptual strength” and (2) “the factual evidence of the 

mark's commercial strength or of marketplace recognition of the mark.” Sabinsa Corp. v. 

Creative Compounds, LLC, 609 F.3d 175, 184-85 (3d Cir. 2010). This factor is employed by 

courts to determine the relative strength of different marks and the resulting impact on 

consumers. Id. Under the Lanham Act, greater protection is provided to stronger marks. A & H

Sportswear, 237 F.3d at 222. Since the marks used by Defendant were identical to Plaintiff’s 

marks, the Court cannot find that this factor weighs in favor of either party.

Consumer sophistication, the third factor, is evaluated by looking at the type of product 

bearing the mark and the type of buyer purchasing the product. Checkpoint Sys., 269 F.3d at 

284. “Where the relevant products are expensive, or the buyer class consists of sophisticated or 

professional purchasers, courts have generally not found Lanham Act violations” because these 

purchasers are sophisticated enough to not be confused by similar marks. Id. However, there is 

no heightened standard of care for buyers when the consumer class for the product is a 

combination of professionals and ordinary consumers. Id. at 285. 

Cigarettes are a relatively inexpensive product and there are no “sophisticated or 

professional purchasers” in the class of cigarette consumers. Consumers of cigarettes do not 

include professionals with specialized training as to the characteristics of cigarettes and cigarette 

packaging. Unlike computer-security software, consumers of cigarettes do not “take great care 

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in purchasing” the product. Checkpoint Sys., 269 F.3d at 285. Rather, like the dietary 

supplements in Sabinsa, cigarettes are advertised widely to a broad range of consumers and can 

be obtained “as quick[ly] as a trip to the check-out counter.” Sabinsa, 609 F.3d at 186-87. As a 

result, buyers of cigarettes should not be held to a higher standard of care and should not have 

been expected to discern the differences between Plaintiff’s products and those sold by 

Defendants. Therefore, the third Lapp factor weighs in Plaintiff’s favor.

Additionally, the Court considers evidence of actual confusion and the length of time the 

mark was used without such confusion. The Third Circuit has combined the fourth and sixth 

Lapp factors and considered them as one. See id. at 187. While proof of actual confusion is not 

necessary, evidence of actual confusion is highly probative as to a likelihood of confusion. Ford 

Motor Co., 930 F.2d at 292; Checkpoint Sys., 269 F.3d at 291. Plaintiff has not offered evidence 

of actual confusion. Consequently, these factors do not weigh in favor of Plaintiff. 

Next, the Court must look to Defendants’ intent in using Plaintiff’s marks. Evidence of a 

defendant's intent is not a prerequisite for finding a Lanham Act violation. Checkpoint Sys., 269 

F.3d at 286. However, courts must look at whether the defendant adopted the mark to 

intentionally confuse consumers. Sabinsa, 609 F.3d at 187. Here, Defendants claim that they

did not know that the cigarettes were counterfeit and sold the products bearing Plaintiff’s marks 

innocently. Defendants’ claim essentially amounts to a denial of intent to use Plaintiff’s marks

and does not weigh in favor of Plaintiff. 

The Court then considers the extent to which the parties’ goods are marketed through the 

same channels of trade. There is a greater likelihood of confusion when the parties’ advertising 

and marketing campaigns are similar. Checkpoint Sys., 269 F.3d at 289. The Court must 

examine trade exhibitions, publications and other media used by the parties to advertise their 

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products in examining this factor. Id. “This is a fact intensive inquiry.” Id. at 289. The record 

does not reveal any evidence that Defendant engaged in advertising to promote the products 

bearing Plaintiff’s marks. Moreover, it is unlikely an independently-owned grocery store would 

have the resources to advertise in a manner comparable to a leading national cigarette 

manufacturer. As a result, this factor does not weigh in Plaintiff’s favor. 

The Court will also consider the extent to which the parties target the same group of 

consumers. “[W]hen parties target their sales efforts to the same consumers, there is a stronger 

likelihood of confusion.” Checkpoint Sys., 269 F.3d at 289. While Defendants made the 

counterfeit products available for purchase, there is no evidence that they engaged in “sales 

efforts”, i.e., advertisement, that would be required in order for the Court to compare the targets 

of the parties’ efforts. See id.; Sabinsa, 609 F.3d at 188-89; PB Brands, LLC v. Patel Shah 

Indian Grocery, 331. Fed. App’x 975, 983 (3d Cir. 2009); 800-JR Cigar, Inc. v. GoTo.com, Inc., 

437 F. Supp. 2d 273, 298 (D.N.J. 2006). Without a basis for comparison, the eighth factor 

cannot weigh in favor of either party.

Finally, the Court will examine the relationship of the goods in the minds of consumers 

as to the product’s function. When looking at this factor, courts should look at “how similar, or 

closely related, the products are.” Kos Pharm. v. Andrx Corp., 369 F.3d 700, 723 (3d Cir. 2004). 

The more closely related the products are, the greater the likelihood that consumers will be 

confused. Lapp, 721 F.2d at 462. Given that the products in question are identical, it is clear 

that this factor weighs in Plaintiff’s favor. 

In sum, the Lapp factors considered weigh in favor of Plaintiff. The products sold by 

Defendant are identical in the marks used, overall appearance and the type of product in 

question. The average consumer of the products would not be able to tell the difference between 

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the products manufactured by Plaintiff and the counterfeit versions sold by defendant. Finally, 

the weight given to the first factor in cases of competing products tips the scales in favor of 

Plaintiff. 

Plaintiff has presented evidence that it owns the marks at issue and that they are valid and 

legally protectable. In addition, Plaintiff has shown that Defendants’ use of Plaintiff’s marks is 

likely to cause confusion among consumers. Defendants do not challenge the validity of 

Plaintiff’s marks nor do they dispute that the use of Plaintiff’s marks was likely to confuse 

consumers. Thus, there is no genuine issue of material fact left to be resolved by the factfinder. 

Plaintiff is entitled to judgment as a matter of law.

IV. CONCLUSION

For the reasons stated above, Plaintiff’s motion for summary judgment is GRANTED. 

An appropriate order shall enter today.

Dated: 10/11/12 /s/ Robert B. Kugler_______ 

 ROBERT B. KUGLER

United States District Judge

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