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Lorillard Tobacco Co. v. Asian American Market


April 23, 2007


The opinion of the court was delivered by: Simandle, District Judge



This matter comes before the Court upon the motion of Plaintiff Lorillard Tobacco Company (the "Plaintiff") for summary judgment upon Count One pursuant to Fed. R. Civ. P. 56. Plaintiff brought this six-count complaint (the "Complaint") against Defendants Asian American Market ("Asian Market"), Mohammed Hossain and Anjuman Hossain (collectively, the "Defendants") claiming: (1) trademark counterfeiting and infringement (in violation of 15 U.S.C. § 1114(1)); (2) unfair competition and false designations of origin (in violation of 15 U.S.C. § 1125(a)); (3) trademark dilution (in violation of 15 U.S.C. § 1125(c)); (4) state trademark dilution (in violation of N.J. Stat. Ann. § 56:3-13.20); (5) common law unfair competition; and (6) statutory unfair competition (in violation of N.J. Stat. Ann. § 56:4-1 et seq.) Plaintiff's motion is for summary judgment as to Count One of the Complaint, trademark counterfeiting and infringement (in violation of 15 U.S.C. § Case 1:06-cv-00948-JBS-AMD Document 13 Filed 04/23/2007 Page 2 of 9 1114(1)). The Plaintiff's motion is unopposed and for the following reasons, the motion will be granted.*fn1

The Court finds as follows:

1. Plaintiff is the owner of a family of NEWPORT and LORILLARD trademarks that are registered on the Principal Register of the U.S. Patent and Trademark Office and used in association with cigarettes and related goods since 1956. (Certification of Victor Lindsley in Support of Plaintiff's Application for an Ex Parte Seizure Order, dated February 27, 2006, ¶ 2.)*fn2

2. Defendant Asian Market is a grocery store located in Atlantic City, New Jersey and owned by Defendant Mohammed Hossain and his wife Anjuman Hossain. (Deposition of Mohammed Hossain at 11.) On February 21, 2006, an employee of Plaintiff discovered what he believed to be old NEWPORT-brand cigarettes at the Asian Market. (Certification of Dave McMahon in Support of Plaintiff's Application for an Ex Parte Seizure Order ¶ 3.) The cigarettes were removed from the shelves and, upon inspection by another employee of Plaintiff, Plaintiff determined that each of the packs of cigarettes was counterfeit. (Certification of Edward F. O'Brien in Support of Plaintiff's Application for an Ex Parte Seizure Order ¶ 2.)

3. On March 3, 2006, Plaintiff filed the Complaint against Defendants and requested an ex parte seizure order. On March 3, 2006, this Court granted Plaintiff's request for an ex parte seizure order, [Docket Item No. 4], and March 8, 2006, Plaintiff conducted the court-ordered seizure. The seizure revealed additional three cartons and six packs of counterfeit NEWPORT-brand cigarettes. (Russell Cert. ¶ 3, 4; O'Brien Cert. ¶ 3.) Moreover, on March 30, 2006, Plaintiff and Defendants entered into a consent order preliminarily enjoining Defendants from purchasing and selling counterfeit Lorillard cigarettes and requiring that Defendants notify Plaintiff when Defendants receive a shipment of Lorillard cigarettes and allow representatives from Plaintiff to conduct regular inspections of Defendants' inventory. [Docket Item No. 8.]

4. On June 26, 2006, Plaintiff deposed Defendant Rajput. (Russell Cert. ¶ 5.) Hossain confirmed that he was primarily responsible for the purchase and sale of cigarettes on behalf of Asian Market, offered no defense for his sale of counterfeit cigarettes and presented no evidence to suggest that the cigarettes were not counterfeit. (Hossain Dep. Tr. at 37-38.)

5. Plaintiff filed a motion for summary judgment on November 8, 2006. [Docket Item No. 12.] The motion is unopposed.

6. On a motion for summary judgment, the court must determine whether "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Abraham v. Raso, 183 F.3d 279, 287 (3d Cir. 1999)(citing Fed. R. Civ. P. 56(c)). A party opposing summary judgment "must do more than simply show that there is some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). If the nonmoving party fails to oppose the motion by evidence such as written objection, memorandum, or affidavits, the court "will accept as true all material facts set forth by the moving party with appropriate record support." Anchorage Assocs. v. Virgin Islands Bd. of Tax Rev., 922 F.2d 168, 175 (3d Cir. 1990)(quoting Jaroma v. Massey, 873 F.2d 17, 21 (1st Cir. 1989)). If the nonmoving party has failed to establish a triable issue of fact, summary judgment will not be granted unless "appropriate," and only if movants are entitled to judgment as a matter of law. Fed. R. Civ. P. 56(e); see Anchorage Assocs., 922 F.2d at 175.

7. Section 1114(1)(a) of the Lanham Act states that a person is liable for trademark infringement if that person uses in commerce, without the trademark registrant's consent, "any reproduction, counterfeit, copy of colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services . . . [if] such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a). A plaintiff establishes infringement of a trademark by proving that "(1) the marks are valid and legally protectable; (2) the marks are owned by the plaintiff; and (3) the defendant's use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods or services." Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 192 (3d Cir. 1990); Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir. 1991). Sellers are strictly liable for violation of the Lanham Act; as such, a plaintiff need not prove that a defendant intended to sell counterfeit goods. See Henri's Food Prods. Co. v. Kraft, Inc., 717 F.2d 352, 359 (7th Cir. 1983) ("A finding of fraudulent intent or bad faith is not essential to prove infringement where likelihood of confusion already exists.")

8. In this matter, Plaintiff has satisfied the first and second elements to prove infringement; i.e., that Plaintiff owns the NEWPORT trademarks and that they are valid and protectible. Each of the Trademarks is registered on the Principal Register of the U.S. Patent and Trademark Office. (Lindsley Cert. Ex. 1-5.) Registration of the Principal Register is prima facie evidence that the Trademarks (1) are both registered and valid, (2) are owned by Plaintiff, and (3) that Plaintiff uses the Trademarks in commerce. See 15 U.S.C. § 1057(b);*fn3 see also Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 799 (3d Cir. 1949). When a plaintiff sues for infringement of a registered mark, it is the defendant's burden to rebut the presumption that the plaintiff owns the mark and that the mark is protectible. See Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F. Supp. 1327, 1336 (E.D. Pa. 1976). Here, Defendants have not contested the validity or ownership of the Trademarks. As such, Plaintiff has satisfied these two elements.

9. Plaintiff has also satisfied the third element necessary for proving trademark infringement by demonstrating that no genuine issue of material fact exists on the issue of whether Defendants' distribution of counterfeit NEWPORT-brand cigarettes is likely to confuse consumers. The Third Circuit Court of Appeals has established ten factors a district court must weigh in determining whether a defendant's use of a trademark is likely to cause confusion. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462-63 (3d Cir. 1983). *fn4 However, when goods are directly competing and the marks are clearly very similar, as here, "a district judge should feel free to consider only the similarity of the marks themselves." A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 213 (3d Cir. 2000). Moreover, in finding that the defendants were in violation of 15 U.S.C. § 1114(1), another court in the District of New Jersey held that:

It would be difficult to imagine a clearer case of consumer confusion than the instant case in which the defendants, acting in direct competition with the plaintiff, sold counterfeit products on which plaintiff's registered marks appear in their entirety. Under these circumstances, the likelihood of consumer confusion, mistake or deception is clear.

Microsoft Corp. v. CMOS Tech., 872 F. Supp. 1329, 1335-36 (D.N.J. 1994).

10. Defendants do not dispute that Defendants distributed and offered to sell counterfeit NEWPORT-brand cigarettes. (Statement of Facts ¶¶ 5-6.) On February 21, 2006, a representative of Plaintiff discovered a carton of counterfeit NEWPORT-brand cigarettes at the Atlantic Market. (McMahon Cert. ¶ 3.) In addition, after Plaintiff conducted the court-ordered seizure on March 8, 2006, Plaintiff discovered an additional three cartons and six packs of counterfeit NEWPORT-brand cigarettes. (Russell Cert. ¶ 3,4; O'Brien Cert. ¶ 3.) Defendants' distribution and offering of counterfeit cigarettes for sale, in itself, caused a likelihood of confusion among consumers as a matter of law establishing Defendants' liability under 15 U.S.C. § 1114(a)(1).


For the foregoing reasons, Plaintiff's unopposed motion for summary judgment as to Count One of the Complaint (trademark counterfeiting and infringement) will be granted. Plaintiff's claims in Counts Two through Six are deemed abandoned. Plaintiff shall file its motion for final judgment as to Count One within twenty (20) days.

JEROME B. SIMANDLE U.S. District Judge

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