Case 1:15-cv-06403-AT Document 17 Filed 09/21/15 Page 1 of 10

UNITED STATES SOUTHERN DISTRICT COURT

OF NEW YORK
________________________________________________
BREATHE LLC
) Civil Action No.
Plaintiff
) 15:06403
) MOTION AND
v.
) MEMORANDUM
) OF LAW FOR
METRO TABLET, INC., BREATHE ECIGS CORP
) PRELIMINARY
And JOSHUA KIMMEL
) INJUNCTION
Defendants
)
_______________________________________________ )
INTRODUCTION
The Plaintiff Breathe LLC (Breathe) files the instant Motion for A Preliminary
Injunction enjoining the sale, marketing, distribution, and advertising of the any electronic
cigarettes presently being sold by the defendants that infringes on Plaintiffs trademark. Breathe
owns the trademark for the sale, marketing and distribution of electronic cigarettes that utilize
the word Breathe. Defendants action is causing injury to Plaintiff and harm to the reputation
and goodwill of Breathe.

FACTS
1.
Breathe LLC (Breathe) is a Florida entity and has a business address at 1400 Mount
Jefferson Road, Suite 7, West Jefferson, NC 28694. Breathe does business in the State of New
York.
2.
Tyler Glover is the sole member of Breathe and has a business address of 1400 Mount Jefferson
Road, Suite 7, West Jefferson, NC, 28694. Glover presently resides in North Carolina.
3.
Metro Tablet, Inc. is a New York entity w (Metro or Defendant) and the registered
agent for Metro is the United States Corporation Agents, Inc, 7014 13th Ave., Suite 202,
Brooklyn, New York, 11228.

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4.
Breathe E Cigs Corp (Corp or Defendant) is a Tennessee company with an address at
9921 Lani Lane Knoxville, TN 37932. Corp is publicly traded in the state of New York.
5.
Joshua Kimmel is the president of Corp and has a business address at 9921 Lani Lane
Knoxville, TN 37932 (Corp or Defendant).

6.

The amount in controversy exceeds One Million Dollars ($1,000,000.00).

7.
Corp is a publicly traded company in the state of New York and does business in the state
of New York. Corp actually launched its products in New York City in 2015.
http://breathecig.com/2015/07/14/maximlaunch/
See Exhibit A to Complaint. Corps
distribution partner in the state of New York is Metro Tablet, Inc.
8.
Jurisdiction is predicated on federal question and the New York Long Arm Statute.
Defendants purposefully availed itself of the privilege of conducting activities in the state of
New York and has established minimum contacts sufficient to confer jurisdiction over said
Defendants. The assumption of jurisdiction will not offend traditional notions of fair play and
substantial justice and is consistent with the constitutional requirements of due process.
9.

Breathe is an electronic cigarette company with a website at www.breatheic.com.

10.
Breathe has a registered trademark with the United States Patent and Trademark Office
(USPTO), registration number 4,633,887.
11.
Corp is an electronic cigarette company with a website at www.Breathecig.com. Metro is
the distribution partner of Corp in the State of New York. See Exhibit B to Complaint
12.
Corp recently applied for a trademark associated with the use of Breathe in the
electronic cigarette market and was declined by the USPTO.
13.
In July 2015, Breathe contacted Corp via email and informed Corp that it was infringing
on Breathes registered trademark.
14.

Corp failed to respond to the letter.

15.
The marks used by Breathe and Corp are substantially similar and both companies are
engaged in the same business.
16.

The actions of Corp and Metro infringes on the mark of Breathe.

17.

The actions of Corp and Metro are diluting the mark of Breathe.

18.

The actions of Corp and Metro has harmed Breathe in its business.
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ARGUMENT
1. Plaintiffs Request For An Injunction Must Be Granted Because The Defendants Are
Infringing On Plaintiffs Trademark

APPLICABLE LAW AND DISCUSSION

I. Preliminary Injunction
[W]hether a preliminary injunction should issue involves consideration of (1) the threat
of irreparable harm to the movant; (2) the state of balance between this harm and the injury that
granting the injunction will inflict on other parties litigant; (3) the probability that movant will
succeed on the merits; and (4) the public interest. Dataphase Systems, Inc. v. C L Systems,
Inc., 640 F.2d 109, 114 (8th Cir. 1981) (en banc). No single factor is dispositive, as the district
court must balance all factors to determine whether the injunction should issue. Lankford v.
Sherman, 451 F.3d 496, 503 (8th Cir. 2006). The district court has broad discretion when
making that determination; however, the burden is upon the movant to demonstrate the necessity
of injunctive relief per the Dataphase factors. Id.
In determining whether a preliminary injunction should be issued, a district court must
take into account the threat of irreparable harm to the movant, the balance between this harm and
the harm to the other party if the injunction is granted, the probability of movant's success on the
merits, and the public interest.

See Dataphase Systems, Inc., 640 F.2d at 113 (8th Cir.1981).

The standard for granting a permanent injunction is essentially the same as for a preliminary
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injunction, except that to obtain a permanent injunction the movant must attain success on the
merits.

See Amoco Prod. Co. v. Village of Gambell, Alaska, 480 U.S. 531, 546 n. 12, 107 S.Ct.

1396, 94 L.Ed.2d 542 (1987).

A.

SUCCESS ON THE MERITS

Breathe has absolute success of the merits in this action. First, Breathe is the owner of a

registered trademark that was filed in September 2013. In July 2015, the defendants application
for a United States Trademark Office was denied as it was determined that if was substantially
similar to Plaintiffs trademark.
Furthermore, the defendants were unable to establish any use of its proposed trademark
prior to Plaintiffs use and registration. To quote the decision from the USPTO in regards to
denying the defendants application for a trademark and its use in commerce, the USPTO said as
follows:

Specimen Unacceptable Web Page Advertising for Goods

Registration is refused because the specimen in International Class 34 is not acceptable as a
display associated with the goods and appears to be mere advertising material; thus, the
specimen fails to show the applied-for mark in use in commerce for each international class.
Trademark Act Sections 1 and 45, 15 U.S.C. 1051, 1127; 37 C.F.R. 2.34(a)(1)(iv), 2.56(a);
TMEP 904, 904.07(a). Specifically, the specimen consists of a web page with (a) picture or
textual description of the goods and (b) the mark appearing in association with the goods, but
does not include the means for ordering the goods. See In re Sones, 590 F.3d 1282, 1286-89,
93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957
(TTAB 2012); TMEP 904.03(i) et seq. Without this feature, the specimen is mere advertising
material, which is not acceptable as a specimen to show use in commerce for goods. See In re
Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re MediaShare Corp., 43 USPQ2d
1304, 1307 (TTAB 1997); TMEP 904.04(b), (c).
An application based on Trademark Act Section 1(a) must include a specimen showing the
applied-for mark in use in commerce for each international class of goods identified in the
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application or amendment to allege use. 15 U.S.C. 1051(a)(1); 37 C.F.R. 2.34(a)(1)(iv),

2.56(a); TMEP 904, 904.07(a).
It is clear that Breathes interest in its registered trademark is superior and prior to any use of
Defendants proposed trademark. The USPTO also determined that the Defendants mark was
substantially similar to Plaintiffs trademark and would confusion in the marketplace.
Furthermore, the information provided to the United States Exchange Commission (USEC)
by Corp. also establish that the Plaintiff has a strong likelihood of success. In its filing with the
USEC in August 2015, Corp stated as follows:
Breathe, LLC was formed in October 2013 and Breathe eCigs.
Corp. was formed on December 31, 2014. On December 31,
2014, Breathe, LLC entered into a Bill of Sale to transfer
100% of the assets to Breathe eCigsCorp.
Since formation, Breathe has operated as a development stage
company, with the intentions of designing marketing and
distributing electronic cigarettes (Ecigarettes), vaporizers,
e-liquids (i.e., liquid nicotine) and related accessories. As
of the six month period ended June 30, 2015, Breathe
had generated nominal revenues of $6,000.
E-cigarettes and vaporizers are replacements for traditional
cigarettes allowing smokers to reproduce the smoking experience.
Although they do contain nicotine, Ecigarettes and vaporizers
do not burn tobacco and are not smoking cessation devices.
Breathes initial line of products will focus on E-cigarettes.
The present day E-Cigarette is a smokeless, battery-powered
device that vaporizes liquid nicotine for delivery via inhalation
by the user. The E-Cigarette does not contain tobacco, only
nicotine derived from the tobacco plant and trace amounts
of secondary chemical ingredients. The component parts of
an E-Cigarette are the nicotine cartridge; the atomizer
(which vaporizes the liquid nicotine); the rechargeable
battery that powers it; and a light-emitting diode (LED)
indicator at the end that is activated when the user draws
in air (collectively referred to as the Component Parts).
Breathe will partner with manufacturers in the United States
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who will be responsible for producing the liquid nicotine filling

the nicotine cartridge with liquid nicotine; thereby ensuring a
safe and high standard process for producing a consumer product.
(emphasis added)

It is clear from the Defendants August 2015 filing with the USEC that its initial use occurred
after the Plaintiffs use, application and registration of its trademark.
Corps website also establishes that Breathe has a strong likelihood of success. Corps
website states as follows in the frequently asked questions section:

FAQS:
When was the company founded?

Breathe, LLC was formed in October 2013 and Breathe ECig Corp. was formed on
December 31, 2014.

On December 31, 2014, Breathe, LLC entered into a Bill of Sale to transfer 100% of the
assets to Breathe ECig Corp.

January 15, 2015 Knoxville, TN DNA Precious Metals, Inc. (OTCQB: BVAP)
announced today that it has acquired all of the issued and outstanding equity interests in
Breathe, LLC (Breathe) in exchange for the issuance of 150 million shares of BVAP
common stock, representing approximately 56% of BVAPS issued and outstanding shares of
common stock.

According to Corp.s webpage, its predecessor entity was formed in October 2013, one
month after the Plaintiff filed its intent to use application in September 2013. Hence, it is
actually and legally impossible for Corp to have a use prior to the Plaintiffs usage of its
trademark. Breathes trademark was granted in November 2014, one month before the alleged
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Breathe LLC sale of its assets to Breathe E Cig Corp. For these reasons, Plaintiff has a strong
likelihood of success on the merits.

B. PLAINTIFF HAS SUFFERED IRREPARABLE HARM DUE TO DEFENDANTS

ACTION AND INFRINGEMENT
The party moving for a preliminary injunction is required to show the threat of
irreparable harm. Baker Elec. Co-op., Inc. v. Chaske, 28 F.3d 1466, 1472 (8th Cir. 1994). In the
instant case, Plaintiff has a registered trademark that is being infringed upon by the defendants.
The public is confused as both entities are selling identical products utilizing the similar marks.
The Plaintiff is harmed by the infringement of its trademark.
Irreparable injury will occur to Plaintiffs business if Defendants are allowed to willfully
infringe upon Plaintiffs name, federal and common law trademark rights. Trademark
infringement by its very nature results in irreparable harm to the owner of the mark. See TallyHo, Inc. v. Coast Community College District, 889 F.2d at 1029 (11th Cir. 1989). Though, it is
true that this presumption is much weaker and questionable after eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388 (2006), and the treatment of the presumption varies based on the Circuit.
Irreparable harm `exists in a trademark case when the party seeking the injunction
shows that it will lose control over the reputation of its trademark pending trial, because loss of
control over ones reputation is neither `calculable nor precisely compensable.' Pretty Girl, Inc.
v. Pretty Girl Fashions, Inc., 778 F. Supp. 2d 261, 269 (2nd Cir. 2011). The Court went on to
state: For these same reasonsbecause the losses of reputation and goodwill and subsequent loss
of customers that Plaintiff will suffer are not precisely quantifiable remedies at law cannot

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adequately compensate Plaintiff for its injuries. See generally Nw. Natl Ins. Co. of Milwaukee,
Wisc. v. Alberts, 937 F.2d 77, 80 (2d Cir. 1991) (The irreparable injury requisite for the
preliminary injunction overlaps with the absent lack of adequate remedy at law necessary to
establish the equitable rights.) Furthermore, where a defendant provides no assurances that it
will cease its infringing activity, this fact suggests that monetary damages are insufficient.
Montblanc-Simplo GmbH v. Colibri Corp., 692 F.Supp.2d 245, 259 (E.D.N.Y.2010).
In this action, the defendants continue to operate and sell its products that are
substantially similar to Plaintiffs products continue to market its products nationwide. The
Plaintiff business, goodwill, reputation and ability to market has been irrepably injured. Hence,
Plaintiff is entitled to an injunction terminating Defendants use of the Plaintiffs trademark.

C. THE HARM TO BREATHE WAYS IN FAVOR OF GRANTING THE INJUNCTION

Breathe has absolute success of the merits in this action. First, Breathe is the owner of a
registered trademark that was filed in September 2013. In July 2015, the Defendants
application for a United States Trademark Office was denied as it was determined that it was
substantially similar to Plaintiffs trademark. The state of balance between Plaintiffs harm and
the injury that granting the injunction will inflict on Corp. is necessary. Corp in an infringer and
federal trademark laws protects the interest of the Plaintiff in its trademark. For this reason, the
balance of harm mandates that the injunction be granted.

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D. THE PUBLIC INTEREST WAYS IN FAVOR OF GRANTING THE INJUNCTION

The state of balance between Plaintiffs harm and the injury that granting the injunction
will inflict on Corp. is necessary. Corp in an infringer and federal trademark laws protects the
interest of the Plaintiff in its trademark. The public has in interest in protecting the trademarks
filed with the USPTO. See Toyo Tire Holdings of Ams. Inc. v. Contl Tire N. Am., Inc., 609
F.3d 975, 982 (9th Cir. 2010) (citing Winter v. NRDC, Inc., 129 S. Ct. 365, 374 (2005)). An
injunction would reduce the publics confusion about the trademark, which was in the public
interest. For this reason, the injunction must be granted.

CONCLUSION
For the reasons stated above, this court must issue an injunction against the Defendants
because the Plaintiff can establish a likelihood of success on the merits and irreparable injury.
The defendants are causing irreparable injury to the trademark owned by Breathe LLC and an
injunction must be issued by this Court.

BREATHE LLC
By Its Attorneys,

September 21, 2015

____________________________
Christopher L. Brown
BBO No. 2953891
Brown & Rosen LLC
Attorneys At Law
100 State Street, Suite 900
Boston,, MA 02109
617-728-9111 (T)
617-695-3202 (F)
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