NJOY Files Lawsuit Against Victory Electronic Cigarettes

Published in CSP Daily News

Alleges patent, trade dress infringement over technology, packaging

SCOTTSDALE, Ariz. -- NJOY Inc., a leading independent manufacturer of electronic cigarettes, has announced that it has filed a lawsuit against Victory Electronic Cigarettes Corp. in the U.S. District Court for the District of Arizona for patent and trade dress infringement.

In the suit, NJOY alleges that Victory e-cigarettes infringe patented technology used in the NJOY disposable King cigarette (U.S. Patent No. 8,539,959) and that Victory e-cigarette cases infringe NJOY's trade dress rights protecting its uniquely identifiable King case.

"On Sept. 24, 2013, the [U.S. Patent & Trademark Office] duly and legally issued the '959 patent, entitled 'Electronic Cigarette Configured to Simulate the Natural Burn of a Traditional Cigarette.' NJOY is the sole owner of the '959 Patent," the company said in the complaint.

"NJOY developed its uniquely proportioned NJOY Case to allow users to easily identify NJOY as the source of the products contained therein and … affiliate themselves with the NJOY brand. As intended, consumers have become attached to the NJOY Case and recognize it as a source identifier uniquely tied to NJOY," said the complaint.

Brent Willis, CEO and chairman at Victory Electronic Cigarettes, dismissed the allegations during a Q&A session at the 2130 E-Cig Forum hosted in New York City by Wells Fargo Securities.

“It’s something I can’t talk about as a company," he said. "Personally, I think it’s a little reckless.”

NJOY is represented by Perry Viscounty, Ryan Owens, and Patrick Justman of Latham & Watkins, LLP, and Andrew M. Federhar and Ray Harris of Fennemore Craig PC.

Spring Lake, Mich.-based Victory Electronic Cigarettes, a Nevada corporation, began online sales in 2012 and expanded to retail early in 2013.

NJOY, a Delaware corporation based in Scottsdale, Ariz., offers a variety of disposable and rechargeable electronic cigarette products made for adult smokers. These products provide nicotine with tobacco or menthol flavor, without tobacco smoke or odor. Its products are in 80,000 stores nationwide, as well as in the U.K., France, Spain, Italy, Portugal and the Netherlands.