Case 1:15-cv-06403-AT Document 66 Filed 12/28/15 Page 1 of 23

UNITED STATES SOUTHERN DISTRICT COURT

OF NEW YORK
________________________________________________
BREATHE LLC
) Civil Action No.
Plaintiff
) 15:06403
)
v.
)
METRO TABLET, INC., BREATHE ECIGS CORP
)
And JOSHUA KIMMEL
)
Defendants
)
________________________________________________)
MEMORANDUM OF LAW IN OPPOSITION TO MOTION TO DISMISS

BREATHE LLC AND TYLER GLOVER

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

Case 1:15-cv-06403-AT Document 66 Filed 12/28/15 Page 2 of 23

Table of Contents
Table of Contents

Table of Cases

Table of Statutes

A. Facts

B. Argument

1. Defendants Motion Seeking To Dismiss The Complaint Based On Its

Uncontroverted Evidence Must Be Denied

2. Defendants Analogous Use Requires Discovery And Is Substantially

Fact Intensive Precluding Dismissal

3. Defendants Use Is Not Continuous Due To A Break In The Chain Of Title

16

4. The Facts Alleged By The Plaintiffs Are Sufficient To Establish A Famous Mark

18

5. The Facts Alleged By The Plaintiffs Are Sufficient To Establish Unfair Competition

18

6. First Filed Rule

19

7. Exceptions To The First File Rule

19

8. Anticipatory Filing

20

9. The Balances of Conveniences

21

10. Joshua Kimmel As A Defendant

22

C. Conclusion

22

Table of Cases
AFA Dispensing Grp. B.V. v. Anheuser-Busch, Inc.,
740 F. Supp. 2d 465 (S.D.N.Y. 2010)

20

Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622 (9th Cir. 1991)

19
2

Case 1:15-cv-06403-AT Document 66 Filed 12/28/15 Page 3 of 23

Aycock Engg, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009)

Brookfield Communications, Inc. v. West Coast Entertainment Corp.,

174 F.3d 1036, 50 USPQ2d 1545 (9th Cir. 1999)

8, 9

CGI Solutions, LLC v. Sailtime Licensing Grp., LLC, No. 05-cv-4120, 2005
U.S. Dist. LEXIS 28878, 2005WL 3097533 (S.D.N.Y. Nov. 17, 2005)

20

Chicago Ins. Co. v. Holzer, No. 00-cv-1062, 2000 U.S. Dist. LEXIS 8327,
2000 WL 777907, (S.D.N.Y. June 16, 2000)

20

Computer Food Stores, Inc. v. Corner Store Franchises, Inc.,

175 U.S.P.Q. (BNA) 535 (TTAB 1973)

16

Curtis v. Citibank, N.A., 226 F.3d 133 (2d Cir. 2006)

19

Emplrs. Ins. v. Fox Entm't Group, Inc.,522 F.3d 271 (2d Cir. N.Y. 2008)

19, 20

Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009)

Guantanamera Cigar co. v. Corporacion Habanos SA, 2009 U.S. Dist. LEXIS
1115127 (D.D.C. Dec. 10, 2009)

J. Lyons & Co. v. Republic of Tea, Inc., 892 F. Supp. 486, 491 (S.D.N.Y. 1995)

20, 21

Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 USPQ2d 1638,
1639 (Fed. Cir. 1989)

7, 9

Mondo, Inc. v. Spitz,No. 97-cv-4822, 1998 U.S. Dist. LEXIS 369, 1998 WL 17744
(S.D.N.Y. Jan. 16, 1998)

21

National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc.,

937 F.2d 1572, 19 U.S.P.Q.2D (BNA) 1424 (Fed. Cir. 1991)

9, 16

Old Swiss House, Inc. v. Anheuser-Busch,Inc.,

569 F.2d 1130, 196 U.S.P.Q. (BNA) 808 [***1882] (CCPA1978)

10

Oleg Cassini, Inc. v. Serta, Inc., 2012 LEXIS 33875 (S.D.N.Y. 2012)

19

Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994)

7
3

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Schnabel v. Ramsey Quantitative Sys.,322 F. Supp. 2d 505 (S.D.N.Y. 2004)

20

Sead Pepic, Lifeguard Master, LLC v. The Lifeguard Store, Inc., 12-cv-3171

21

Smith v. McIver, 22 U.S. (9 Wheat) 532, 535 (1824)

19

T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879

(Fed. Cir. 1996)

7,9,15,16

The PNC Financial Services Group, Inc. v.

Keith Alexander Ashe dba Spendology and Spendology LLC ( TTAB 2013)

8, 9

West Florida Seafood, Inc. v. Jet Restaurants,

1 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994)

Table of Statutes
15 U.S.C. 1127

28 U.S.C. 1404(a)

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A.

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 (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.
4.
Breathe E Cigs Corp (Corp or Defendant) is a Nevada 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.
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.
7.

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

8.
Breathe has a registered trademark with the United States Patent and Trademark Office
(USPTO), registration number 4,633,887.
9.
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.
10.
Corp recently applied for a trademark associated with the use of Breathe in the electronic
cigarette market and was declined by the USPTO.
11.
In July 2015, Breathe contacted Corp via email and informed Corp that it was infringing on
Breathes registered trademark. Corp continued to use the registered trademark of Breathe despite the
notification.
12.
The marks used by Breathe and Corp are substantially similar and both companies are engaged in
the same business.
13.

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

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14.

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

15.
The action of Corp and Metro has confused the public and has engaged in unfair competition in
the use of Breathes trademark.
16.

The actions of Corp and Metro has harmed Breathe in its business.

17.
Beginning in June 2013 through September 2013, Glover began creating, marketing, advertising
and promoting Breathe. Glover created samples, purchased inventory, began locating web developers
and partners for his new business.
18.
In July 2013 Breathe signed a commission contract to have its products enter Foxwoods Casino
in Connecticut. Presently Breathe is the official e-cigarette of the renowned Foxwoods Casino.
19.
In August-September 2013, Glover created Breathe LLC in the State of Florida and began
selling, disturbing, marketing and promoting his products through the company.
20.
In September 2013, Glover caused for a Trademark Application to be filed with the USPTO
which was granted.
21.
Glover/Breathe filed an intent to use application with the USPTO because the initial marketing
had not been completed and its website was not live in September 2013.
22.
The defendants are infringing on the common law mark utilized by the Plaintiffs and have
harmed their business.

B. ARGUMENT
1. Defendants Motion Seeking To Dismiss The Complaint Based On Its
Uncontroverted Evidence Must Be Denied.

Defendants seek to dismiss Plaintiffs entire Complaint alleging that the uncontroverted
evidence associated with Mr. Kimmels Affidavit of October 2015 establishes analogous use
superior to the rights of the Plaintiffs. The Defendants are incorrect on all accounts. As this
Court is aware, there has been no discovery in this action nor has Kimmels Affidavit the
Defendants heavily reply upon in support of the Motion to Dismiss been subjected to scrutiny.
The Courts ruling in denying Plaintiffs Motion for Preliminary Injunction only indicates that
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the Defendants facts (Kimmels Affidavit) presenting Kimmels usage of the breathe mark
may rise to level of analogous usage. See this Courts Order dated November 6, 2015,
Transcript page 23 Line 24. The Court has not made a final determination of the facts as the
Defendants argue in their Motion To Dismiss. In fact the Defendants evidence is void of any
substantial evidence suggesting analogous use at all. Discovery has not been completed and the
Defendants actually style their Motion To Dismiss as a Motion For Summary Judgment
inclusive of a new Kimmel Affidavit. Therefore, all facts must be viewed in a light most
favorable to the non-moving party (Plaintiffs) and the facts indicate the Defendants Motion must
be denied.
2. Defendants Analogous Use Requires Discovery And Is Substantially Fact
Intensive Precluding Dismissal
In order to demonstrate that use analogous to trademark use has given rise to proprietary
rights, a party must show that such prior use was sufficient to create an association in the minds
of the purchasing public between the mark and the goods. Malcolm Nicol & Co. v. Witco Corp.,
881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989). This is a fact intensive analysis. We
may infer the fact of identification of the mark with the party on the basis of indirect evidence
regarding the party's use of the word or phrase in advertising brochures, catalogs, newspaper ads,
articles in newspapers, trade publications and Internet websites which create a substantial public
awareness of the designation as a trademark identifying the party as a source. See T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996) vacating
Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994); Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1023 (TTAB 2009). The Court found that taken as a whole, applicants
exhibits do not establish proprietary rights arising before the constructive use date. West Florida
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Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
Applicants securing of the spendology.net web domain from hostgator.com on July 24, 2010
does not by itself establish use analogous to trademark use in connection with the services.
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50
USPQ2d 1545, 1556 (9th Cir. 1999) (registration of a domain name does not by itself constitute
use for purposes of establishing priority of use).
Pursuant to the Lanham Act a mark must be used in commerce, when it used or displayed in
the sale or advertising of services, the services are rendered in commerce and the person rendering the
services is engaged in commerce in connection with the services. 15 U.S.C. 1127; Aycock Engg, Inc.
v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). The Court in Aycock noted that mere
preparations to use a mark in commerce are insufficient to constitute use in commerce. The Court then
explained the fundamental proposition that [w]ithout question, advertising or publicizing a service that
the applicant intends to perform in the future will not substantiate commerce usage and that the
advertising must instead relate to an existing service which has already been offered to the public. Id.
at 1358. Mere advertising and web sites (potentially viewable by U.S. residents) is not "use in
commerce" in the absence of actual evidence of U.S. sales. Guantanamera Cigar co. v. Corporacion
Habanos SA, 2009 U.S. Dist. LEXIS 1115127 (D.D.C. Dec. 10, 2009).

In The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology
and Spendology LLC ( TTAB 2013), the entity attempting to establish analogous use provided
two Spendology beta website pages which are not self-authenticating as they do not include
the date and URL on the printout, although one page includes a copyright notice dated 2010.
Neither page references the services identified in the involved application. Furthermore, the site
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was not public (as in this case) as it was under construction. There was no declaration
testimony provided regarding how many persons viewed or were exposed to the website.
Hence, the Board concluded that the website evidence failed to establish use analogous to
trademark use in connection with applicants products. Such is the case with Kimmels alleged
use of his website from May-September 2013 and his social media actitivty.
In addition, like in Spendology, Kimmels extremely modest use of social media such as
joining Facebook does not by itself establish use analogous to trademark use. Cf. Brookfield
Commc'ns, Inc., 50 USPQ2d at 1556 (registration of domain name does not by itself constitute
use for purposes of priority). With regard to the social media evidence submitted by Kimmel,
which includes URL and dates of publication, there is no declaration testimony as to consumer
exposure to applicants blog posts, twitter page, tweets, or Facebook page. None of this evidence
shows use in connection with applicants identified services. Thus, this evidence failed to
establish use analogous to trademark use in Spendology, and it fails to establish sufficient use by
Kimmel and the Defendants in the instant litigation.
In Spendology, the Board found that the applicants indirect evidence fails to establish
use analogous to trademark use as it does not support an inference of identification in the mind
of the consuming public. See T.A.B. Systems, 37 USPQ2d at 1881 (analogous use must be of
such a nature and extent as to create public identification of the target term with the opposer's
product or service. See, e.g., National Cable Television Ass'n, Inc. v. American Cinema Editors,
Inc., 937 F.2d 1572, 1578, 19 U.S.P.Q.2D (BNA) 1424, 1429 (Fed. Cir. 1991) ("Prior public
identification of petitioner with the name ACE for awards from use analogous to service mark
usage is sufficient ground for cancellation."); Malcolm Nicol & Co., 881 F.2d at1065 (affirming
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Board's determination that "Witco used 'BRITOL' in a way that created in the minds of people
the necessary association between 'BRITOL' and the Witco product").
Where, however, such indirect evidence falls short of supporting the critical inference of
identification in the mind of the consuming public, we have not hesitated to reject an analogous
use opposition. For example, in Old Swiss House, Inc. v. Anheuser-Busch,Inc., 569 F.2d 1130,
196 U.S.P.Q. (BNA) 808 [***1882] (CCPA1978), the uncontradicted evidence of analogous use
consisted of the following: "12 articles, each published only once, which appeared in various
newspapers and trade journals between December 27, 1963, and April 1, 1964, and a single
speech, on April 22, 1964, by one of [the user's] vice-presidents at a shareholders' meeting." Id.
at 1133, 196 U.S.P.Q. (BNA) at 810. The court rejected the contention that the articles
constituted analogous use sufficient to demonstrate prior proprietary rights in the target phrase.
Nor can there be any doubt that purchaser perception must involve more than an
insubstantial number of potential customers. For example, if the potential market for a given
service were 10,000 persons, then advertising shown to have reached only 20 or 30 people as a
matter of law could not suffice. However close the linkage between the mark and the future
service, analogous use could not be shown on such facts because the actual number of potential
customers reached, not the strength of the linkage for some "reasonable potential customer," is
the focal point of the analogous use inquiry. As noted above, under Old Swiss House, HN8 what
is required is "public exposure of a mark that would be expected to have any significant impact
on the purchasing public." 569 F.2d at 1133.
According to Defendant Corp, the target market for e-cigarettes is 42.1 Million
Americans and the market potential is 2.1 Billion in total area market.
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See http://breathecig.com/investor-info/

Target Market: 42.1 Million U.S. smokers

Market Potential: 2.1B + Total Area Market

Investment: $3-5 Million Investment Opportunity

In order to demonstrate that use analogous to trademark use has given rise to proprietary
rights, Corp must show that such prior use was sufficient to create an association in the minds of
the purchasing public between the mark and the goods they offered from May 2013 through
September. Corp has not met this burden nor has the facts been challenged in discovery yet.
A review of Corp.s uncontroverted facts which appear in the Affidavit of Kimmel
dated October 23, 2015 (which Plaintiffs have not had the ability to challenge in the discovery
phase of this litigation) fails on its face to establish analogous use. There is no evidence
submitted by Corp/Kimmel that the use was sufficient to create an association in the minds of
the purchasing public from May 2013 through September 2013. Below is a discussion relating
to the Exhibits attached to Kimmels Affidavit dated October 23, 2015 that are uncontroverted.
Exhibit 1-WayBill May 26, 2013
The Waybill attached as Exhibit to the Affidavit of Kimmel cannot be found on any
carriers website (UPS, Fedex, DHL or USPS). A request was made to the Defendants to produce
evidence that the waybill actually existed prior to discovery, however, the request was declined.
See Exhibit 4 to the Affidavit of Christopher Brown dated December 28, 2015. Regardless of
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Attorney Trainor lack of interest in supplying support evidence and the fact that Waybill fails to
establish that any product actually arrived in Tennessee or at any Corp location (the shipment
stops in Ohio and does not reach Tennessee) the Waybill fails to establish an association in the
minds of the purchasing public of Corp and breathe.
Exhibit 2-Logo Concept May 19, 2013
Next, Corp and Kimmel allege that their sample logo designs allegedly created in May
2013 is evidence of analogous use. Internal sample log designs are clearly not sufficient to
establish an association in the minds of the purchasing public of Corp and breathe
Exhibit 3- Chinese Quotation To Produce Product June 3, 2013
Corp and Kimmel present a quotation of e-cigarettes Kimmel allegedly purchased. First,
the quote does not contain any product that bear the logo breathe nor does the quotation
present any evidence, other than Kimmels word, that the product was actually purchased. A
cancelled check, receipt, wire payment transaction would suffice, however, it is clear that
Kimmel cannot produce such documents or chooses not to produce such documents. Without
proof that it was actually purchased, this quotation is of no value and fails to establish an
association in the minds of the purchasing public of Corp and breathe.
Exhibit 4- Gift Letter to SBE dated June 2013
Kimmels gift letter to the SBE Group according the letter at Exhibit 4, provided five
(5) e-cigarettes in the package. The letter indicates a solicitation to have the SBE Group work
with the Defendants. Clearly SBE Group was not the purchasing public. The letter is a request
for a venture of some type between the Defendants and the SBE Group. This is not analogous
use.
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Exhibit 5-Kimmel/Breathe website September 2013

Kimmel alleged to have had a website from June 2013 to September 2013 in this Exhibit.
The evidence clearly establishes that no such website existed. It was in fact a sample landing
page which had the web address of Npcxr.ewkhf.servertrust.com/login.asp. This is not a
website open to the public. This is part of the design process of a website and/or is a beta
testing private site. This is simply more material that fails to establish an association in the minds
of the purchasing public of Corp. and breathe.
Exhibit 6- Chinese Manufacturer communication August 14, 2013
This Exhibit is another attempt by Defendants to prove the purchase of product bearing
the breathe logo. It fails to contain proof that the product was actually purchased. This Exhibit
fails to establish an association in the minds of the purchasing public of Corp. and breathe
Exhibit 7- Chinese Quotation To Purchase Product August 14, 2013
This Exhibit is another quotation associated with Exhibit 6, however, the Defendants fail
to establish that the product was actually purchased from the Chinese manufacturer or sold to
actual customers. This is simply more material that fails to establish an association in the minds
of the purchasing public of Corp. and breathe.
Exhibit 8-Facebook postings of September 7 and 18 2013
This is an alleged Facebook posting that received one (1) like from Kimmels
Facebook friends. This establishes that one person that follows Kimmel/Breathe on Facebook
(potentially Kimmels wife, family member or friend) approved of the post. This is clearly
negligible and actually indicates the lack of identification between the public and the logo
breathe with Corp.
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Exhibit 9-Voice Over- Advertisement of September 2013

This Exhibit is an email allegedly containing a voice advertisement posted on youtube
and Kimmels website. However, the actual voice advertisement is not submitted, nor is the
evidence that anyone in the purchasing public actually heard the advertisement. This is simply
more material that fails to establish an association in the minds of the purchasing public of Corp.
and breathe.
Exhibit 11-Chinese Manufacture Quotation of September 26, 2013
This Exhibit is another quotation for breathe e-cigarettes to be purchased. Yet again,
there is no documented evidence submitted that suggests Kimmel actually purchased the material
from China or sold the product to the public.
Exhibit 12-Kimmel Website Build (Website Not Live) September 2013
This Exhibit is an email establishing that the Defendants website/domain was not live
or public in September 2013. A third party vendor contacted the Defendants seeking to assist in
making the website live. Clearly this does not establish a connection to the purchasing public.

The uncontroverted evidence in the Exhibits above establish that Kimmels best
marketing and advertising efforts from May 2013 through September 2013 reached less than ten
(10) people. The evidence submitted indicates that one (1) like on his Facebook page from a
person who is Kimmels Facebook friend and the gift letter allegedly sent to the SBE Group
are the only leads potentially to members of the purchasing public that might have been aware
of Kimmels breathe usage. Clearly we cannot determine any number of alleged customers
Kimmel sold any breathe product o as he claims he has no records of sales in the Affidavit dated
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October 2015 and the new Affidavit dated November 2015. It is also of note that Kimmel has
provided no documented evidence of purchases of any breathe product such as receipts, wire
transfers or cancelled check to the alleged Chinese manufacture. It is rather convenient to allege
over Forty Thousand Dollars ($40,000.00) in breathe inventory purchases in 2013 in a sworn
Affidavit, yet have no records of actually spending the funds and no proof. Furthermore, in
Kimmels new Affidavit dated November 2015 filed in the Tennessee action and in support of
Defendants instant Motion To Dismiss, Kimmel again indicates he has no records of sales and
presumably, purchases of product bearing the breathe logo. Kimmel could easily have
supplied his 2013 tax returns from his sole proprietorship, however he has chosen not to do so.
We already know that no company affiliated with Kimmel purchased any product in 2013 and
2014 as Corps SEC filings indicate, further establishing the lack of identification of the
breathe logo with Corp. with the purchasing public. In addition, the alleged voice
advertisement (Exhibit 9) fails to present any evidence as to who or how many individuals heard
the alleged advertising. The fact of the matter is that the Defendants uncontroverted
evidence indicates that less than ten (10) people who may constitute members of the purchasing
public were aware of Kimmels activity from May 2013 through September 2013. This is far
less than the 42.1 Million (42,100,000) smokers- Kimmels intended market target. This
evidence fails to establish analogous use as the law in clear on the matter of public identification
of a Company with a mark:
That is not to say that a fixed percentage, like 20%,
much less 51%, of the potential customers must have
formed in their mind the required "prior public identification."
As we noted above, it simply requires "more than a
negligible portion of the relevant market." In other words,
advertising of sufficient clarity and repetition to create
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the required identification must have reached a substantial

portion of the public that might be expected to purchase
the service. Thus, the user must prove that the "necessary
association" was created among more than an insubstantial
number of potential customers.
T.A.B. Sys., 77 F.3d at 1376.

An unbroken line of precedents of both the Courts and the Trademark Board make clear
that activities claimed to constitute analogous use must have substantial impact on the
purchasing public. See T.A.B. Sys, 77 F.3d at HN5; Computer Food Stores, Inc. v. Corner Store
Franchises, Inc., 175 U.S.P.Q. (BNA) 535 (TTAB 1973). Analogous use can only succeed if the
use is of a nature and extent as to create public identification of the target term with the product
or service. National Cable Television Assn Inc., 937 F.2d at 1578.
There is no doubt that the evidence submitted by Kimmel and Corp at best indicates a
negligible portion of the relevant market. Case law has established that twelve (12) weeks of
advertising in the newspaper was not sufficient to create analogous use (See T.A.B. Sys), hence,
Kimmels evidence which is far less then in T.A.B Sys., clearly fails to have a substantial impact
on the purchasing public.
For this reason, the Plaintiffs action should not be dismissed. In fact, this Court should
sua-sponte, grant the Plaintiff summary judgment. Kimmels Affidavits present the Defendants
best case scenario of facts (before their evidence is actually challenged in the discovery phase of
this litigation) and the evidence false to establish analogous use as presented by the Defendants
in this litigation.

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3. Defendants Use Is Not Continuous Due To A Break In The Chain Of Title

It is also important for the Court to address the clear break in the Defendants Chain Of
Title. The Defendants companion company Breathe LLC (TN) allegedly sold 100 percent of
its assets to Breathe Ecigs Corp (TN) in December 2014 according to all of the Defendants SEC
filings filed with the Court. Breathe LLC (TN) acquired its use of the breathe mark from
Kimmel in October 2013. However, Breathe LLC (TN) was dissolved in August 2014 by the
Tennessee Secretary of State, hence it could not have sold anything in December 2014. In a
clear attempt to correct the paper trail, in September 2015, Breathe LLC (TN) authored an
Assignment transferring its interest in the logo/mark breathe to Breathe Ecigs Corp (NV) a
completely separate entity from Breathe Ecigs Corp (TN), bypassing and ignoring the
December 2014 sale previously reported in SEC filings. This September 2015 Assignment
contradicts all of the Defendants SEC filings and was surely created for this litigation. The
assignment attempts to avoid the clear fact that any rights the Defendants may have had,
evaporated in August 2014 when Breathe LLC (TN) dissolved without transferring the rights to
any third party.
Defendant Breathe ECigs Corp.s form S-1 previously filed with
This Court states as follows:
Breathe LLC [TN] was formed in October 2013 and Breathe
ECigs Corp [TN] was formed on December 31, 2014. On
December 31, 2014, Breathe LLC [TN] entered into a
Bill of Sale to transfer 100% of the assets to Breathe
ECigs Corp.[TN]1
Since formation, Breathe has operated as a development
stage company, with the intentions of designing marketing
The [TN] usages were placed in the quotation by Plaintiffs counsel and does not appear in the
original quote from the SEC filing.

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and distributing, electronic cigarettes, (E

cigarettes) vaporizers, e-liquids (i.e, liquid nicotine)
and related accessories. As of December 31, 2014 Breathe
had no revenues and limited assets.

When Breathe LLC (TN) dissolved in August 2014, one of its limited assets was its
alleged interest in the mark breathe. The rights dissolved in August 2014, before the
December 2014 sale or before the very convenient September 2015 Assignment was
drafted/executed. In order to show that any analogous use is continuous (1) the use of the mark
must begin before its adversary's mark was registered and published, and (2) there has been
continuing use since that time. Casual Corner Assoc. v. Casual Stores of Nevada, Inc., 493 F.2d
709 (9th Cir. 1974). Due to the fact that the Defendants have a break in the Chain Of Title, they
cannot establish that the use is continuous. This reason alone is grounds to deny the Defendants
Motion To Dismiss.
4. The Facts Alleged By The Plaintiffs Are Sufficient To Establish A Famous Mark
Throughout the years, certain court rulings have determined that famous marks deserve a
greater number of protection rights than those granted to lesser known marks. There are no
definitive characteristics that define fame for a mark; however, the loose requirements do at least
include that the mark be obviously distinct and that it achieves some public recognition and
renown. The Plaintiffs alleged that Breathe is the official e-cigarette of the renowned
Foxwoods Casino. The Plaintiffs also allege that the actions of Kimmel and his affiliated
companies have diluted the fame associated with the mark. The Defendants actions that have
caused the dilution are clearly identified as marketing, selling and distributing e-cigarettes with
the logo breathe on them. A mark owned by the Plaintiffs. Whether Plaintiffs mark is
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famous pursuant to federal law is an issue for discovery and the finder of fact. The prerequisite
facts are properly alleged in the Complaint.

5. The Facts Alleged By The Plaintiffs Are Sufficient To Establish Unfair Competition
The Plaintiffs allege that Breathe is the owner of a registered trademark breathe. The
Defendants actions have infringed on the registered and common law mark and has forced the
Plaintiffs to compete with the marketing, selling and distributing of e-cigarettes bearing the logo
breathe which the Plaintiffs actually owns. That is unfair competition. The prerequisite facts
are properly alleged in the Complaint.

6. The First-Filed Rule

The First-Filed Rule has been the policy of federal courts for nearly 200 years: "In all cases of
concurrent jurisdiction, the court which first has possession of the subject must decide it. Smith v.
McIver, 22 U.S. (9 Wheat) 532, 535 (1824). However, the rule is discretionary. See Alltrade, Inc. v.
Uniweld Products, Inc., 946 F.2d 622, 629 (9th Cir. 1991)(the most basic aspect of the first to file rule
that it is discretionary). Courts analyzing the First Filed Rule avoid a rigid mechanical approach, instead
carefully considering the equities of the situation and whether exceptions to the first-filed rule apply. See
Curtis v. Citibank, N.A., 226 F.3d 133, 138 (2d Cir. 2006).
First, this action and the action pending in Tennessee do not qualify as cases of concurrent
jurisdiction. Presently, the only pending Motion before the Federal Court in Tennessee is Breathes
Motion To Dismiss For Lack Of Jurisdiction. Breathe contends it has no contacts with the State of
Tennessee. For this reason, the First-Filed Rule does not apply and this Court must reject the Defendants
argument to Dismiss, Stay or Transfer this action to Tennessee.

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7. The Exceptions To The First-Filed Rule

The Second Circuit has recognized two exceptions to the First Filed Rule: (1) where
special circumstances exist, and (2) where the balance of convenience favors the secondfiled action. See Emplrs. Ins. v. Fox Entm't Group, Inc., 522 F.3d 271, 275 (2d Cir. N.Y. 2008).
The special circumstances exception applies where the first-filed case was an anticipatory
filing or the result of forum shopping. See Oleg Cassini, Inc. v. Serta, Inc., 2012 LEXIS 33875
*13 (S.D.N.Y. 2012).
8. Anticipatory Filing
What constitutes an anticipatory filing is a highly fact-dependent inquiry. See Schnabel v.
Ramsey Quantitative Sys., 322 F. Supp. 2d 505, 511-512 (S.D.N.Y. 2004). Often, an anticipatory filing
takes the form of a Complaint seeking to invalidate claims articulated in a notice letter from a potential
plaintiff threatening litigation. The Second Circuit has made clear that where the filing of a Complaint
was triggered by a notice letter, this equitable consideration may be a factor in the decision to allow the
later-filed action to proceed to judgment in the plaintiffs chosen forum. See Emplrs. Ins., 522 F.3d at
275.
For a legal action to be anticipatory, it must be filed in response to a direct threat of litigation
that gives specific warnings relating to subsequent legal action. Employers Ins. Of Wassau, 522 F.3d at
276. Analyzing the case law, the Court held that when a notice letter informs a defendant of the intention
to file suit, a filing date, and/or specific forum for the filing of the suit, the courts have found, in the
exercise of discretion, in favor of the second-filed action." J. Lyons & Co. v. Republic of Tea, Inc., 892
F. Supp. 486, 491 (S.D.N.Y. 1995). See, e.g., AFA Dispensing Grp. B.V. v. Anheuser-Busch, Inc., 740 F.
Supp. 2d 465, 470 (S.D.N.Y. 2010) (anticipatory filing found where notice letter stated that defendant
"has until 5PM EDT Friday July 16 to unequivocally confirm its commitment to perform under our
Agreement or it will face an injunction motion," and where the first claim was filed on the date on which
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plaintiff intended to petition for relief); CGI Solutions, LLC v. Sailtime Licensing Grp., LLC, No. 05-cv4120, 2005 U.S. Dist. LEXIS 28878, 2005 WL 3097533, at *3-4 (S.D.N.Y. Nov. 17, 2005) (although
notice letter did not outright announce that it would be filing suit by a particular date, a notice letter
stating that the party may file a lawsuit seeking injunctive relief and civil damages for breach of contract,
conversion, theft of trade secrets, copyright infringement, unfair competition or other causes of action
sufficiently intimated its resolve to bring a lawsuit and sufficiently notified Plaintiffs of its resolve to
sue); Chicago Ins. Co. v. Holzer, No. 00-cv-1062, 2000 U.S. Dist. LEXIS 8327, 2000 WL 777907, at *3
(S.D.N.Y. June 16, 2000) (first-filed suit was an anticipatory filing when the notice letter stated a specific
jurisdiction and gave a 48-hour deadline); Mondo, Inc. v. Spitz, No. 97-cv-4822, 1998 U.S. Dist. LEXIS
369, 1998 WL 17744 (S.D.N.Y. Jan. 16, 1998) (first-filed suit was anticipatory when notice letter stated a
specific venue).
In the instant action, two letters dated July 21, 2015 and July 26, 2015 gave notice to Corp. that
litigation with be forthcoming by the Plaintiffs. See Exhibits A, B and C To the Affidavit of Christopher
Brown dated December 28, 2015. Plaintiffs filed the instant litigation on August 14, 2015, just four (4)
days after Corp. filed an action in Tennessee. Corp.s filing was clearly anticipatory. For a legal action
to be anticipatory, it must be filed in response to a direct threat of litigation that gives specific warnings
relating to subsequent legal action. Employers Ins. Of Wassau, 522 F.3d at 276. In Wassau, the Court
held that when a notice letter informs a defendant of the intention to file suit, a filing date, and/or
specific forum for the filing of the suit, the courts have found, in the exercise of discretion, in favor of the
second-filed action." J. Lyons & Co., 892 F. Supp. at 491. For this reason, the Plaintiffs action should
not be dismissed by the Court
9. The Balance Of Conveniences
The First-Filed Rule can also be abrogated where the balance of conveniences decidedly tilts to
the second-filed action. The factors applied in this analysis are derived from and identical to the factors

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considered on a motion to transfer venue under 28 U.S.C. 1404(a): (1) plaintiffs choice of forum, (2)
convenience of the witnesses, (3) location of relevant documents and ease to sources of proof, (4)
convenience of the parties, (5) locus of the operative facts, (6) availability of process to compel the
attendance of unwilling witnesses and (7) relative means of the parties. See Sead Pepic, Lifeguard
Master, LLC v. The Lifeguard Store, Inc., 12-cv-3171 (S.D.N.Y 2012).
The facts of this case establish that defendant Metro is a New York Company. Corp. is a
publicly traded in the State of New York. Corp has contracts enter with at least one New York Company.
Corp has held marketing events in New York City. Defendant Kimmel in his affidavit dated October
2015 alleged that he sold product in the State of New York in 2013 despite the fact that he cannot locate
any evidence of any sales in 2013. Plaintiff Breathe also has availed itself of the laws of New York by
selling product in New York. There is no doubt that all of the defendants have availed themselves of the
laws of State of New York. There is substantial connection to the State of New York and this Court
clearly has jurisdiction over this matter.
Furthermore, as Breathe and Glover has no connection to the State of Tennessee the first-filed
action in Tennessee has no jurisdiction. Hence, the second-filed action must proceed. For this reason,
this Court cannot dismiss, stay or transfer this action to Tennessee.
10. Joshua Kimmel As A Defendant
Kimmel is personally a defendant for his actions in regards to his use of the breathe mark that violates
the Plaintiffs use. Kimmel alleges his used the breathe mark personally from May 2013 through
October 2013. Glover and Breathe claim ownership of the mark during a substantially similar period of
time. Hence, Kimmel is a defendant for his direct activity in selling and marketing product bearing the
logo breateh, not as a director of any entity. There is no attempt to pierce the corporate veil.

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C. CONCLUSION
For the reasons stated above, this Court must deny Defendants Motion to Dismiss, Stay
Or Transfer this action to Tennessee. The Defendants evidence fails to establish analogous use,
Tennessee does not have jurisdiction over the Plaintiffs and the Plaintiffs Complaint is factually
sufficient to sustain several causes of actions against the Defendants.

BREATHE LLC AND TYLER GLOVER

By Their Attorneys,

December 28, 2015

____________________________
Christopher L. Brown
New York Bar 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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