ELFBAR Faces Trademark Infringement Lawsuit in U.S. and Will Be Renamed EBDESIGN
ELFBAR, a globally popular disposable e-cigarette brand, has been sued for trademark infringement by VPR Brands, a Florida-based company claiming to have the rights to the Elf brand of e-cigarette products in the USA. As a result, ELFBAR will change its name to EBDESIGN in the USA, while retaining its name in the UK and other markets. The product models for EBDESIGN will remain the same, but be more prominent on their devices and packaging. iMiracle, the parent company of ELFBAR, is appealing the preliminary injunction. Meanwhile, ELFBAR’s other disposable brands, including Lost Mary and Funky Republic, will continue production.
The popular disposable e-cigarette brand, ELFBAR, has announced that it will change its name to EBDESIGN to avoid the risk of trademark infringement in the U.S. market. The company recently issued a statement explaining its decision.
According to the statement:
“On Thursday, February 23rd, we were disappointed to learn that the US Southern District Court of Florida approved a motion by VPR Brands, LP (VPR) requesting a preliminary injunction to prevent our partner from selling our ELFBAR-branded products in the US and refused our motion to supplement the record with favorable survey evidence gathered in recent weeks about consumer confusion potentially bolstering the motion.
Upon learning of the order, we immediately took action to appeal the district court’s preliminary injunction to the US Federal Circuit Court of Appeals, and requested that the district court stay its order pending appeal. Our distributor also filed a petition with the US Patent and Trademark Office’s Trademark Trial and Appeal Board to cancel VPR’s ELF mark registration.
In October 2022, VPR filed a lawsuit against our brand and several distributors, alleging trademark infringement and patent infringement in relation to the ELF brand that they registered. Over the past two years, VPR has filed multiple lawsuits against manufacturers and distributors of one-time e-cigarette products claiming patent infringement, which have often been voluntarily dismissed when the underlying merit of the claim is questioned or when resolved for relatively small amounts.
We have vigorously defended our legal position in this matter and maintained ongoing positive communication with our industry partners, and we plan to continue these communications as we move forward. Although we are disappointed with the preliminary order from the district court, we hold a unique bubble and flower designed trademark registration that our users know and trust for our products, so we will continue to offer the same products with the registered design. In order to protect the interests of our users and partners, we have decided to introduce a new brand name for these products called EBDESIGN, with the above logo design. We are taking measures to protect the EBDESIGN trademark in the U.S. and elsewhere.
Our new EBDESIGN branded products have the same functions as our previous brand. Please support us in this brand transition, and we believe that we will handle this matter responsibly. As the U.S. is one of our main markets, EBDESIGN products will continue to offer selection, quality, and trust to our local customers. We are fully committed to consistently providing first-rate products and unparalleled customer support.”
ELFBAR, which may be the world’s best-selling disposable vape brand, has been accused of trademark infringement and will be changing its name in the U.S. However, the ELFBAR name will continue to be used in the UK and other global markets.
The brand will become EBDESIGN in the U.S., but the company may revert back to the ELFBAR name if the trademark dispute ruling is in its favor. The EBDESIGN branded products will begin arriving at U.S. ports in a few days.
The product model numbers on EBDESIGN products will remain the same and will be more prominently displayed on the devices and packaging. For example, on the popular ELFBAR device, the BC5000 model number will appear much larger than the EBDESIGN brand.
ELFBAR’s parent company manufactures other one-time use brands such as Lost Mary and Funky Republic, which will remain unchanged.
Ban on ELFBAR imports suspended in the USA
ELFBAR’s parent company, Shenzhen iMiracle Technology Co. Ltd., has been sued by VPR Brands for allegedly infringing its trademark rights. VPR, a Florida-based company, claims ownership of the ELF e-cigarette brand for electronic cigarettes and e-cigarette lighters. (VPR has engaged in other trademark and patent infringement suits, often ending in settlement.)
VPR also sued several U.S. ELFBAR product distributors. The distributors have the right to purchase products directly from the manufacturer and sell them to other distributors. Some also sell directly to retailers, and some directly to the public.
The lawsuit was filed in the US Southern District Court of Florida last fall. Last week, US District Court Judge Aileen Cannon approved VPR’s motion for a preliminary injunction, which forbids iMiracle from importing ELFBAR-branded products and its main distributors from selling those products during the litigation.
According to sources close to the lawsuit, retailers and distributors who continue to sell existing ELFBAR inventory are not in legal jeopardy unless they receive a cease-and-desist letter from VPR. However, iMiracle will no longer ship ELFBAR brand products to the US, and its main distributors will no longer stock them.
iMiracle is appealing the preliminary injunction and has requested that Judge Cannon suspend the injunction during the appeal. One of the company’s US-based distributors has also submitted a petition asking the US Patent and Trademark Office’s appeal board to cancel VPR’s trademark.
ELFBAR trademarks, and VPR’s ELF-brand
In 2017, VPR Brands applied for a trademark named ELF for “electronic cigarette lighters; electronic cigarettes”. Electronic cigarette lighters; non-smokeable cigarette vaporizer tubes. The trademark was registered in 2018. In September 2022, VPR applied for the ELF IDENTIFICATION trademark.
VPR currently appears to not be selling any nicotine vapor products using the Elf or Elf Bar names, although it sells a cannabis vaporizer product called Elf Auto Draw Conceal Oil Vaporizer under its HoneyStick brand.
VPR recently launched a website showcasing nicotine electronic cigarette devices under the ELF brand that look very similar to iMiracle’s ELFBAR-even the model numbers are identical. VPR states that they are about to launch. However, without first submitting a pre-market tobacco application (PMTA) and obtaining FDA authorization, no nicotine electronic vapor products can legally be marketed now. There is no longer a window to release new products without first obtaining authorization, as iMiracle did last year when it submitted PMTA for its synthetic nicotine-based ELFBAR device.
iMiracle subsidiary Shenzhen Weiboli Technology Co. Ltd. submitted a U.S. trademark application for ELFBAR in December 2020, but it appears to have been abandoned after the applicant failed to respond to trademark office communications.
The ELF BAR trademark in China was applied for in 2020 and has been held by iMiracle and its subsidiary Weiboli since registration in 2021.
The ELFBAR UK trademark was applied for and registered by iMiracle in 2021. The brand is the most popular disposable electronic cigarette in the UK.
Beware of fake ELFBAR
Since the brand was launched, counterfeit ELFBARs have been a problem. iMiracle has done everything possible to address this issue. According to the company, more than 120 counterfeiting production and sales targets, including factories, warehouses, logistics companies, and foreign trade companies, have been shut down, and more than 2 million counterfeit ELFBAR finished products, hundreds of thousands of packaging boxes, counterfeit codes, semi-finished electronic cigarette tubes, and other accessories have been seized.
The company has cracked down on trademark infringers in China and closed more than 20 factories producing counterfeit ELFBAR products.
It is easy to verify the authenticity of ELFBAR using QR codes, but the company also provides a form to report retailers selling counterfeit ELFBAR.
American consumers will soon become very cautious about retail sales of ELFBAR products. As noted above, legal importation of ELFBAR has been suspended, and distributors have almost no inventory on hand. As the days go by, the probability that any ELFBAR still on store shelves is genuine is decreasing.