IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

REYNOLDS INNOVATIONS INC.,
Plaintiff,
vs.
NO LEAF VAPOR COMPANY, INC.,
d/b/a
YOUVAPEFORLESS.COM, and
LAWRENCE GOLDSTEIN,
individually,
Defendants.
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Civil Action No. 1:15-cv-317

PLAINTIFFS BRIEF IN SUPPORT OF MOTION FOR FINAL JUDGMENT

AND PERMANENT INJUNCTION BY DEFAULT
AGAINST ALL DEFENDANTS
Plaintiff Reynolds Innovations Inc. (RII) submits this brief in support of its
Motion for Final Judgment and Permanent Injunction by Default (Dkt. No. 11) (the
Motion)

against

Defendants

No

Leaf

Vapor

Company,

Inc.,

d/b/a

YOUVAPEFORLESS.COM (No Leaf Vapor), and Lawrence Goldstein (Mr.

Goldstein). No Leaf Vapor and Mr. Goldstein are hereinafter referred to collectively as
Defendants.
INTRODUCTION
As shown below, the pertinent facts are undisputed due to Defendants default in
this action. Those uncontroverted facts demonstrate that Defendants have deliberately
and willfully infringed RIIs valid legal rights in RIIs federally-registered CAMEL

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Marks. As a result of such infringement, RII has been irreparably harmed and the public
is likely to be harmed, and RII is therefore entitled to permanent injunctive relief.
PROCEDURAL BACKGROUND
RII commenced this action on April 15, 2015. (Dkt. No. 1.) In the Complaint, RII
alleged five (5) claims for relief: (1) trademark infringement under the Lanham Act, 15
U.S.C. 1114; (2) unfair competition and false designation of origin under the Lanham
Act, 15 U.S.C. 1125; (3) trademark dilution under the Lanham Act, 15 U.S.C. 1125;
(4) trademark infringement and unfair competition under the common law of the State of
North Carolina; and (5) unfair and deceptive trade practices under North Carolina law,
N.C. Gen. Stat. 75-1.1 et seq. Compl. at 1.
On April 20, 2015, No Leaf Vapor was duly served, by hand delivery to an agent
of No Leaf Vapor, with a copy of the Complaint and a properly issued Summons. See
Dkt. No. 6. On April 20, 2015, Mr. Goldstein was duly served, by hand delivery, with a
copy of the Complaint and a properly issued Summons.

See Dkt. No. 7.

Due to

Defendants failure to file an answer to the Complaint, or to otherwise file an appropriate

response to the Complaint, RII filed on June 1, 2015, a motion for entry of default against
all Defendants under Fed. R. Civ. P. 55(a). (Dkt. No. 8.) On June 2, 2015, this Court
entered Defendants default. (Dkt. No. 10.) RII has now moved, pursuant to Fed. R. Civ.
P. 55(b)(2), that final judgment, including a permanent injunction, be entered against
Defendants.
UNDISPUTED FACTS
It is well-settled that when a defendant defaults, all well-pleaded allegations of
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the complaint are considered admitted. Duncan v. Lord, 409 F. Supp. 687, 692 (E.D.
Pa. 1976) (citing Thomson v. Wooster, 114 U.S. 104, 109-10 (1885)).

Thus, the

following facts are established and uncontroverted by virtue of Defendants default:

RII is a trademark holding company and a subsidiary of R.J. Reynolds

Tobacco Company. Compl. at 6. RII is the record owner of the CAMEL Marks
at issue in this dispute. Id. 1

Reynolds has been, and currently is still, engaged in the business of

manufacturing, distributing, marketing, advertising, offering for sale, and selling
various types of tobacco products throughout the United States under multiple
trademarks owned by RII and under authority from RII. Id. at 14. RIIs famous
CAMEL Marks are registered on the Principal Register of the United States Patent
and Trademark Office (USPTO) and are used in connection with the sale of
cigarettes, among other tobacco products. Id.

Beginning at least as early as 1913, Reynolds adopted and began using the
distinctive designation CAMEL in interstate commerce for the purpose of
identifying and distinguishing Reynoldss tobacco products from the products of
other manufacturers and distributors of tobacco. Id. at 16. Reynolds has
advertised, marketed, distributed, offered for sale, and sold its products under the
CAMEL Marks continuously for more than 100 years. Id.

On September 30, 1919, RIIs predecessor-in-interest was granted U.S.

Trademark Registration No. 126,760 for the trademark CAMEL, in stylized form,
on the USPTOs Principal Register for use in connection with cigarettes. Id. at
17 and Ex. 1.

On January 13, 1976, RIIs predecessor-in-interest was granted U.S.

Trademark Registration No. 1,030,232 for the Camel Design trademark on the
USPTOs Principal Register for use in connection with cigarettes. Id. at 18 and
Ex. 2.

On April 29, 1986, RIIs predecessor-in-interest was granted U.S.

Trademark Registration No. 1,391,824 for the trademark CAMEL & Design on
the USPTOs Principal Register for use in connection with cigarettes. Id. at 19
and Ex. 3.
1

For convenience, and unless the context indicates otherwise, the term Reynolds will be used to refer
collectively to RIIs predecessors-in-interest and to RIIs corporate affiliates who use the trademarks
owned by RII under authority from RII.

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On February 20, 2007, RIIs predecessor-in-interest was granted U.S.

Trademark Registration No. 3,211,464 for the trademark CAMEL, in standard
characters, on the USPTOs Principal Register for use in connection with snuff,
namely snus. Id. at 19 and Ex. 4.

On October 7, 2008, RIIs predecessor-in-interest was granted U.S.

Trademark Registration No. 3,512,391 for the trademark CAMEL & Design the
CAMEL Pack Design) on the USPTOs Principal Register for use in connection
with cigarettes. Id. at 21 and Ex. 5.

U.S. Trademark Reg. Nos. 126,760; 1,030,232; 1,391,824; 3,211,464; and

3,512,391 (the CAMEL Registrations) are valid and subsisting and have become
incontestable. Id. at 17-21. (The CAMEL Registrations, the trademarks shown
therein, and the common law equivalents of such trademarks are referred to herein
and in the Motion, as the CAMEL Marks.)

The CAMEL Marks inherently serve to distinguish Reynoldss tobacco

products from those of others, and the CAMEL Marks are recognized by the
general consuming public of the United States as a designation of the source of
Reynoldss products. Id. at 24.

As a result of Reynoldss long and continuous use and promotion of the

CAMEL Marks throughout the United States, consumers of tobacco products
recognize the CAMEL Marks as symbols of the highest quality of tobacco
products, and associate and identify the CAMEL Marks with Reynolds. Id.

Reynoldss CAMEL Marks are famous trademarks under 15 U.S.C.

1125(c)(2)(A), in that they are widely recognized by the general consuming public
of the United States as a designation of the source of Reynoldss goods. Id. at
23. Reynolds derives substantial goodwill and value in the United States from this
identification by the consuming public and the trade. Id. at 24.

The CAMEL Marks became famous long prior to Defendants use of the
CAMEL Marks, or colorable imitations of those marks. Id. at 47.

Defendants have been and continue to be engaged in the business of

operating Internet websites displayed at <www.noleafvapor.ecwid.com>,
<www.witchesbrewvapor.com>, and <www.youvapeforless.com> (Defendants
Websites), through which Defendants actively promote and sell, among other
items, flavored liquid nicotine products for use with electronic cigarettes. Id. at
3, 26. Defendants have offered for sale and sold liquid nicotine products through
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Defendants Websites, which are accessible to users in North Carolina. Id. at 4,

26-27.

Defendants have advertised and have offered for sale products bearing the
CAMEL Marks, or colorable imitations of the CAMEL Marks that are confusingly
similar to the CAMEL Marks, including a nearly wholesale copy of the CAMEL
Pack Design in connection with the flavor identified as Camel Light. Id. at
27-28 and Ex. 6.

Defendants actual products have displayed the designation CAMEL

LIGHT. Id. at 28-30 and Ex. 7.

Defendants have sold liquid nicotine products bearing the CAMEL Marks,
or marks confusingly similar to the CAMEL Marks (collectively, the Infringing
Products) through Defendants Websites to purchasers in North Carolina and
within this judicial district. Id. at 28-29.

Reynolds did not and does not manufacture, distribute, market, offer for
sale, or sell any electronic cigarette or liquid nicotine products under the CAMEL
Marks. Id. at 31.

RII has not authorized, and does not authorize, Defendants use of the
CAMEL Marks, or colorable imitations of any of these marks, in connection with
the manufacture, advertisement, or sale of Defendants liquid nicotine products or
any other products of Defendants. Id. at 32.

Defendants unauthorized use of the CAMEL Marks and Defendants sale

of CAMEL liquid nicotine products, are likely to cause confusion, mistake, or
deception among consumers as to the source, origin, or sponsorship of such
products. Id. at 34.

Consumers are likely to believe that Defendants Infringing Products are

authorized by RII for sale under the CAMEL Marks, partaking of the same
qualities and characteristics as legitimate products bearing the CAMEL Marks
when such is not the case. Id.

Defendants unauthorized sale of their CAMEL variety of liquid nicotine

products, and Defendants unauthorized use of the CAMEL Marks, or colorable
imitations of these marks, in connection with the sale of Defendants liquid
nicotine products were intentionally done with a view and purpose of trading on
and benefiting from the substantial reputation and goodwill in the United States
associated with the CAMEL Marks. Id. at 36.
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Defendants use of the CAMEL Marks, or colorable imitations of any of

these marks, in connection with the unauthorized sale of their Infringing Products
is likely to dilute RIIs famous CAMEL Marks by lessening the capacity of these
marks to identify and distinguish Reynolds exclusively as the source of products in
the United States bearing or provided under the famous CAMEL Marks. Id. at
48.

Defendants unauthorized use of the CAMEL Marks in connection with the

sale in the United States of Defendants Infringing Products is intended and has
the effect of trading on Reynoldss reputation and causing dilution of the famous
CAMEL Marks. Id. at 49.

Defendants cannot assert any rights in the CAMEL Marks that are prior to
RIIs first use, actual or constructive, of the CAMEL Marks. Id. at 50.
ARGUMENT

I.

RII Has Established Defendants Liability

Based on the foregoing unchallenged facts, RII has plainly proven Defendants

liability to RII on the claims set forth in the Complaint. Defendants unauthorized use of
the CAMEL Marks, or colorable imitations of any of these marks owned by RII, results
in a likelihood of confusion or mistake that Defendants products are affiliated with
Reynolds, or that Reynolds has sponsored, endorsed, licensed, or otherwise approved of
the sale of Defendants liquid nicotine products, in violation of Sections 32 and 43(a) of
the Lanham Act, 15 U.S.C. 1114, 1125(a). Defendants conduct dilutes RIIs famous
CAMEL Marks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).
Defendants conduct also constitutes unfair or deceptive trade practices in violation of the
North Carolina Unfair and Deceptive Trade Practices Act, N.C. Gen. Stat. 75-1.1 et
seq., and trademark infringement and unfair competition under the common law of the
State of North Carolina.
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A.

Infringement of RIIs Registered Marks

In this action, RII asserts a claim for trademark and service mark infringement
under Section 32 of the Lanham Act, which provides in relevant part, as follows:
(1) Any person who shall, without the consent of the registrant
(a) use 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; . . . shall be liable in a civil action by the registrant . . . .
15 U.S.C. 1114(1)(a).
A plaintiff asserting a trademark infringement claim under the Lanham Act must
satisfy two general elements: (1) that it has a valid, protectable trademark, and (2) that
defendants use of a copy or colorable imitation of plaintiffs mark is likely to cause
confusion, or to cause mistake, or to deceive as to the source of the goods offered under
such mark. See 15 U.S.C. 1114, 1125; see, e.g., Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1527 (4th Cir. 1984). As shown below, RII easily satisfies both of these
elements.
The undisputed facts recited above establish (a) that RII owns valid trademark
rights in the CAMEL Marks; (b) that RII maintains at least two (2) incontestable federal
registrations for these Marks; (c) that Defendants have made unauthorized use of the
CAMEL Marks; and (d) that such use has resulted in a likelihood of consumer confusion.
1.

RIIs Marks Are Valid And Protectable Trademarks.

Reynolds has used the distinctive designation CAMEL for more than one hundred
(100) years, and the first federal registration for the CAMEL Marks issued to Reynolds in
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1919. RII currently owns at least two (2) incontestable federal trademark registrations on
the USPTOs Principal Register for its CAMEL Marks.
These above-referenced incontestable registrations thus constitute conclusive
evidence of (a) the validity of these registrations; (b) RIIs rights of ownership in the
CAMEL Marks; and (c) RIIs exclusive right to use the CAMEL Marks. See 15 U.S.C.
1115(b). See also Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia., Inc., 43
F.3d 922, 930 (4th Cir. 1995).

RIIs federal registrations of the CAMEL Marks

conclusively establish that RII has valid and protectable trademark rights in the CAMEL
Marks in connection with the goods identified in those registrations.
2.

There Is A Likelihood Of Confusion Between RIIs Marks and

Defendants Marks.

The ultimate question, for purposes of determining liability in trademark

infringement actions, is whether there exists a likelihood that an appreciable number of
ordinary prudent purchasers will be misled, or indeed simply confused, as to the source of
the goods in question. Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 127 (4th Cir.
1990).
In determining a likelihood of confusion, courts in the Fourth Circuit consider,
among other factors: (1) the strength or distinctiveness of the plaintiffs mark; (2) the
similarity of the two parties marks; (3) the similarity of the goods and services the marks
identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the
similarity of advertising used by the two parties; (6) the defendants intent; and (7) actual
confusion. Pizzeria Uno Corp., 747 F.2d at 1527. The importance and relevance of
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each factor may vary from case to case. Id. ([n]ot all these factors are always relevant or
equally emphasized in each case). In this case, however, even a cursory analysis of
these factors shows a clear likelihood of confusion between the CAMEL Marks owned
and used by Reynolds, and the designation CAMEL used by Defendants in connection
with its liquid nicotine products.
a.

RIIs Marks are Strong and Distinctive Marks and are

Entitled to Broad Protection.

The first step in proving infringement is to determine the strength and

distinctiveness of the CAMEL Marks. See Pizzeria Uno Corp., 747 F.2d at 1527. The
stronger a mark is, the more likely that use of a similar mark will cause confusion among
consumers. See, e.g., Opryland U.S.A., Inc. v. Great Am. Music Show, Inc., 970 F.2d
847, 851 (Fed. Cir. 1992) ([A] well-known mark enjoys an appropriately wider latitude
of legal protection, for similar marks tend to be more readily confused with a mark that is
already known to the public.).
The CAMEL Marks are strong and famous marks based on the high degree of
distinctiveness that they have acquired through Reynoldss use of those Marks for over
one hundred (100) years. Compl. at 16-24. Consequently, the CAMEL Marks enjoy
wide public identification and association with Reynolds, and have come to be
recognized widely by the public as an indicator of the origin of the goods provided by
Reynolds. Id. at 23. Reynolds therefore owns tremendous valuable goodwill that is
symbolized by the CAMEL Marks. Id. The strength of the CAMEL Marks is a key
factor weighing in favor of finding a likelihood of confusion because [a] strong mark . . .
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casts a long shadow which competitors must avoid. Kenner Parker Toys Inc. v. Rose
Art Indus. Inc., 963 F.2d 350, 353 (Fed. Cir. 1992). The fame of the CAMEL Marks is
another key factor weighing in favor of finding a likelihood of confusion in this case. See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Famous
marks enjoy wide latitude of legal protection since they are more likely to be remembered
and associated in the public mind than weaker marks, and are thus more attractive as
targets for would-be copyists. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005).
b.

Defendants Used Marks That Are Identical or Virtually

Identical to RIIs Marks in Appearance, Sound, and
Commercial Impression.

The similarity of the parties respective marks visually, aurally, and in commercial
impression also weighs strongly in favor of finding a likelihood of confusion. When
evaluating this factor, the Fourth Circuit has reasoned that the marks need only be
sufficiently similar in appearance, with greater weight given to the dominant or salient
portions of the marks. Lone Star Steakhouse & Saloon, 43 F.3d at 930, 936 (citing
Pizzeria Uno Corp., 747 F.2d at 1529-30, 1534-35.
Here, the parties respective marks are much more than sufficiently similar. The
marks Defendants have used are identical or virtually identical to RIIs marks.
Defendants have advertised and sold the Infringing Products under the designations
CAMEL LIGHT and have incorporated a photograph of Reynoldss product packaging
on its website. Compl. at 2, 26-28 & Exs. 6-7. Finally, the fact that Defendants used a
nearly wholesale copy of the product packaging for Reynolds CAMEL-brand products
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to promote their products further demonstrates that Defendants intended to create

confusion or imply an affiliation with Reynolds, when none exists.
c.

Defendants Liquid Nicotine Products are Closely Related to

Reynoldss Tobacco Products.

Goods need only be sufficiently related to result in a likelihood of confusion.

See, e.g., Lone Star Steakhouse & Saloon, 43 F.3d at 936; Commcns Satellite Corp., 429
F.2d at 1252-53 (Complementary products, or services, are particularly vulnerable to
confusion . . . .).

Here, the close relationship between the parties products is

undeniable. Defendants liquid nicotine products offered under the designation CAMEL
LIGHT are liquid nicotine products to be used with electronic cigarettes. Reynoldss
products offered and sold under the CAMEL Marks include cigarettes and other tobacco
or tobacco-related products.
Because Defendants goods are closely related to the goods for which Reynolds
has previously used and registered its CAMEL Marks, this factor weighs decisively in
favor of finding a likelihood of confusion.
d.

Defendants Had Knowledge of RIIs Prior Rights in RIIs

Marks, and Defendants Intended to Profit from Use of RIIs
Marks.

When a defendant, with knowledge of a plaintiffs mark, adopts a mark similar to

the plaintiffs mark, an intent to trade upon the plaintiffs goodwill is inferred. Teaching
Co. Ltd. Pship v. Unapix Entmt, Inc., 87 F. Supp. 2d 567, 583 (E.D. Va. 2000) (citing
Beer Nuts v. Clover Club Foods Co., 805 F.2d 920, 927 (10th Cir. 1986) (The deliberate
adoption of a similar mark may lead to an inference of intent to pass off goods as those of
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another which in turn supports a finding of likelihood of confusion.).

In this case, Defendants clearly were aware of Reynoldss prior rights in the
famous CAMEL Marks, which have been used for 100 years in connection with
cigarettes. The designation Camel is an arbitrary mark as applied to cigarettes or other
tobacco products and there is no plausible explanation for Defendants decision to refer
to their liquid nicotine products as CAMEL other than Defendants intention to evoke the
famous CAMEL Marks. Defendants nonetheless ignored Reynoldss established rights
in its CAMEL Marks. Defendants plainly attempted to associate its products with the
CAMEL Marks in order to free-ride on the commercial magnetism of the CAMEL
Marks, and the goodwill and reputation that the CAMEL Marks.
In sum, all of the relevant likelihood of confusion factors cited above support a
finding of likelihood of consumer confusion and, consequently, Defendants infringement
of RIIs registered CAMEL Marks.
B.

Unfair Competition by False Designation of Origin

Section 43 of the Lanham Act creates a federal cause of action for false
representation of goods or services in commerce, including false designations of origin.
See, e.g., Perini, 915 F.2d at 124. The legal standard for finding unfair competition by
false designation of origin under Lanham Act 43(a) is essentially identical to that for
trademark infringement, namely, a likelihood of confusion.

See, e.g., Pizzeria Uno

Corp., 747 F.2d at 1527; Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.
1987) (Under 15 U.S.C.A. 1125(a), the test is substantially the same, whether there is
a confusing similarity between the two marks.).
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The undisputed facts recited above establish that (1) RII owns valid trademark
rights in the CAMEL Marks; (2) RII maintains federal registrations for the CAMEL
Marks; (3) Defendants have made unauthorized use of the CAMEL Marks, or colorable
imitations thereof; and (4) such use by Defendants results in a likelihood of consumer
confusion. RII has therefore established Defendants violations of Lanham Act 43(a),
15 U.S.C. 1125(a). Proof of a likelihood of confusion is all that is required to obtain a
permanent injunction for a false designation of origin claim under the Lanham Act. See,
e.g., Polo Fashions, 816 F.2d at 148.
C.

Federal Trademark Dilution

RII has also alleged dilution of its famous CAMEL Marks under the Trademark
Dilution Revision Act (TDRA), which provides that the owner of a famous mark can
enjoin another person who, at any time after the owners mark has become famous,
commences use of a mark or trade name in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous mark. 15 U.S.C. 1125(c); see, e.g.,
Diane Von Furstenberg Studio v. Snyder, 2007 WL 2688184, at *4 (E.D. Va. Sept. 10,
2007). A famous mark is one that is widely recognized by the general consuming
public of the United States as a designation of source of the goods or services of the
marks owner, 15 U.S.C. 1125(c)(2)(A), and dilution by blurring is association
arising from the similarity between a mark . . . and a famous mark that impairs the
distinctiveness of the famous mark, id. at 1125(c)(2)(B).
In this case, the uncontroverted facts establish that RII owns famous marks that are
distinctive, namely, the CAMEL Marks.

Long after RIIs CAMEL Marks became

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famous, Defendants used the CAMEL Marks, or colorable imitations of these marks, in
commerce in such a way as to dilute the famous CAMEL Marks.

Defendants

designation CAMEL LIGHT and RIIs CAMEL Marks are so similar as to give rise to
an association between the marks, and such association between the parties marks is
likely to impair the distinctiveness of or harm the reputation of the CAMEL Marks. See,
e.g., Diane Von Furstenberg Studio, 2007 WL 2688184, at *6 (The Fourth Circuit has
recognized that irreparable injury regularly follows from trademark infringement. . . .
Therefore, a showing of trademark infringement makes it likely that there has been an
irreparable injury to reputation. (internal citations omitted)).

Accordingly, RII has

established Defendants dilution of the famous CAMEL Marks in violation of the TDRA,
15 U.S.C. 1125(c).
D.

State Law Claims

RII has asserted a claim under North Carolinas Unfair and Deceptive Trade
Practices Act (the UDTPA), which provides a cause of action to competitors for
[u]nfair methods of competition in or affecting commerce. N.C. Gen. Stat. 75-1.1(a).
A trade practice is deceptive if it possesse[s] the tendency or capacity to mislead, or
create[s] the likelihood of deception. First Atl. Mgmt. Corp. v. Dunlea Realty Co., 131
N.C. App. 242, 252, 507 S.E.2d 56, 63 (1998) (internal citation omitted). Defendants
unauthorized use of RIIs CAMEL Marks, or colorable imitations of these marks, is
likely to cause consumer confusion, misleads consumers into believing that Reynolds has
approved of or endorsed Defendants products or Defendants use of RIIs marks, and

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misrepresents an affiliation between Reynolds and Defendants. Because Defendants

infringing acts (a) constitute such misrepresentation, (b) affect commerce, and (c)
proximately caused injury to RII, Defendants acts violate the UDTPA.

See id.

(discussing the three elements of the UDTPA). See also Polo Fashions, 816 F.2d at 148
(discussing similarity of tests under 15 U.S.C. 1114, 1125, and N.C. Gen. Stat. 751.1).
RII has also asserted a claim under North Carolina law for common law unfair
competition and trademark infringement. The North Carolina common law of unfair
competition in the context of trademarks and tradenames is similar to the federal law of
trademark infringement. Unfair acts of a defendant are actionable when they damage a
plaintiffs legitimate business. . . . Such damages are suffered when a rival adopts for his
own goods a sign or symbol in an apparent imitation of anothers that would likely
mislead prospective purchasers and the public as to the identity of the goods. Polo
Fashions, 816 F.2d at 148 (internal citations omitted). The same undisputed facts that
establish Defendants infringement of RIIs CAMEL Marks also establish Defendants
unfair competition and trademark infringement in violation of the common law of North
Carolina.
II.

RII is Entitled to Injunctive Relief

Having demonstrated Defendants liability, RII is entitled to remedies in the form

of a permanent injunction against Defendants. The unchallenged facts establish that RII
has suffered, and will continue to suffer, irreparable harm by virtue of Defendants acts of
infringement and unfair competition. Such facts also establish the harm to the public
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arising out of Defendants unlawful conduct.

Accordingly, Defendants should be

enjoined permanently from such conduct. Injunctive relief is appropriately granted to

the owner of a registered trademark whose rights to the mark have been infringed on by
anothers use of a copy or colorable imitation that is likely to cause confusion, or to
cause mistake, or to deceive. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463
(4th Cir. 1996) (quoting 15 U.S.C. 1114(1) and Pizzeria Uno Corp., 747 F.2d at 1527).
The Lanham Act authorizes injunctive relief to remedy the damage caused by acts
of trademark infringement and unfair competition of the type in which Defendants have
engaged. See 15 U.S.C. 1116. Such irreparable injury can be remedied only through
immediate and permanent injunctive relief. See, e.g., Lone Star Steakhouse & Saloon, 43
F.3d at 939. The Fourth Circuit has recognized that irreparable injury regularly follows
from trademark infringement. (internal citations omitted).

Therefore, a showing of

trademark infringement makes it likely that there has been an irreparable injury to
reputation. Diane Von Furstenberg Studio, 2007 WL 2688184, at *6. The injunctive
relief that RII seeks also serves the public interest by preventing future consumers from
being misled or confused about Defendants affiliation with Reynolds. See Lone Star
Steakhouse & Saloon, 43 F.3d at 939.

Similarly, North Carolinas UDTPA also

authorizes injunctive relief for violations of its provisions. See N.C. Gen. Stat. 75-16.
Having established that a permanent injunction is warranted, RII requests entry of
injunctive relief as requested in the Motion and Proposed Order.
CONCLUSION
Defendants willfully infringing conduct should be permanently enjoined.
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Accordingly, RII respectfully requests that the Court grant the instant Motion and enter
judgment by default against Defendants for the relief sought therein, as set forth in RIIs
Proposed Order.
This the 13th day of July, 2015.
s/William M. Bryner
KILPATRICK TOWNSEND & STOCKTON LLP
William M. Bryner, N.C. State Bar No. 23022
Harris W. Henderson, N.C. State Bar No. 43399
1001 West Fourth Street
Winston-Salem, North Carolina 27101
Telephone: 336-607-7300
Facsimile: 336-607-7500
wbryner@kilpatricktownsend.com
hhenderson@kilpatricktownsend.com

Attorneys for Plaintiff Reynolds Innovations Inc.

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Case 1:15-cv-00317-NCT-JEP Document 12 Filed 07/13/15 Page 17 of 18

CERTIFICATE OF SERVICE
I hereby certify that on this date, I electronically filed the foregoing
PLAINTIFFS BRIEF IN SUPPORT OF MOTION FOR FINAL JUDGMENT
AND PERMANENT INJUNCTION BY DEFAULT AGAINST ALL
DEFENDANTS with the Clerk of the Court using the CM/ECF system. I further certify
that a copy is also being forwarded via U.S. Mail, postage prepaid, to Defendants No
Leaf Vapor Company, Inc. and Mr. Lawrence Goldstein at the following addresses:
No Leaf Vapor Company, Inc.
116 Penny Ave.
East Dundee, Illinois 60118
Mr. Lawrence Goldstein
116 Penny Ave.
East Dundee, Illinois 60118
This the 13th day of July, 2015.

s/William M. Bryner
William M. Bryner
KILPATRICK TOWNSEND & STOCKTON LLP
1001 West Fourth Street
Winston-Salem, NC 27101
Telephone: 336-607-7300
Facsimile: 336-607-7500

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