| Section | Link to Section |
|---|---|
| Fantasia | Does Fantasia Have The Legal Right To Use The Term "Ice"? |
| Letters From Fantasia | The Cease-And-Desist Letters From Fantasia |
A company that specializes in hookah products is threatening to sue vape shops who sell goods using the name "Ice" by sending cease-and-desist letters. Additionally, Fantasia Distribution, a California-based company, is a party to two lawsuits accusing various vape manufacturers of violating Fantasia's trademark.
Vape shop owners have spoken on social media about receiving letters from Fantasia's legal team threatening legal action if the businesses don't comply with Fantasia's demands. Although vapor boss hasn't verified the reports, several have stated that they spoke with Fantasia's attorneys and that during those discussions, offers were made to settle any further Fantasia accusations for monetary payments of $5,000 or less.
In 2020, Fantasia filed at least two lawsuits accusing various vape makers and distributors of trademark infringement, unrelated to its threatening letters. The defendants in the two cases that we are aware of are Romeo Vapors, Cool Clouds Distribution, Access Vapor, Limitless Trading Co., Pop Vapor Co., and Magellan Technology. Both cases were filed in the U.S. District Court for the Eastern District of New York. In one case, motions for summary judgment—which ask the court to make a decision without holding a trial—are approaching their deadline.
The defendants in those lawsuits are requesting that the court revoke Fantasia's trademark registrations on the grounds that the word "ice" is generic and that consumers only understand it as a flavor descriptor rather than as a "source identifier," which is a brand or trademarked name.
Does Fantasia Have The Legal Right To Use The Term "Ice"?
In 2011, Fantasia filed for a trademark for "Ice," which was later reregistered in 2014 with an expanded definition to include "Hookah tobacco; Herbal molasses; Herbs for smoking; Molasses tobacco; Smoking molasses; Shisha; Vapor stones for electronic hookahs; Electronic hookahs; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes."
Since the beginning of the commercial e-liquid industry, manufacturers have identified goods containing menthol flavoring by using phrases like "ice" and "breeze." With the commercial growth of disposable vapes in 2020—many of which utilize e-liquid that blends fruit flavors with menthol or coolants that resemble menthol—the phrase gained particular popularity as a flavor description. The resulting flavors are frequently referred to as, among other things, "strawberry ice" and "banana ice." "Ice" is typically a descriptive word added to the flavor name to indicate a cool experience rather than being a part of the brand name.
The question for the court is whether Fantasia's "Ice" trademark covers all products that utilize the word as a flavor descriptor rather than a brand. According to the company's attorneys, it does, or at the very least, these applications of the term are "confusingly similar" to the Fantasia trademark. In those instances, the judge may also determine that the trademark has been "diluted"—that is, utilized by so many businesses that it is no longer valuable as a means of identifying the brand.
Fantasia appears to have used the name "Ice" for shisha (hookah tobacco), but it's unclear if the firm used the brand for any of its own e-liquid-based vaping goods prior to deciding to sue other manufacturers in 2020 on the grounads that they were allegedly infringing on its trademark.
Although the FDA stated in a 2022 warning letter that Fantasia had received Refuse-to-File rulings in 2021 for a premarket tobacco application (PMTA) covering 31 items, the firm does appear to be producing and selling certain disposable vapes at this time. When the FDA decides not to consider an application and instead rejects it, it means that the items could face enforcement measures from the FDA. Fantasia's name is not listed on the FDA master list of goods for which PMTAs were successfully submitted prior to the submission date of September 9, 2020.
The company's legal right to defend the trademark may not be impacted by the legality of Fantasia's "Ice" products. That's a fuzzy subject, according to a lawyer acquainted with Fantasia's trademark lawsuits. The lawsuit could be decided by a judge who does not address the legality of Fantasia's vaping products, or who determines that Fantasia's legal hookah items are sufficiently similar to vaping products to potentially violate one brand's trademark.
The Cease-And-Desist Letters From Fantasia
The letters that vape shops received are signed by attorney Ash Reza and are printed on the Pacific Coast Law Group letterhead. Vaping has seen nearly identical ones, with the name of the targeted company substituted in to give the impression that the letter is exclusive to that specific company.
Based on their sales history, the letters don't seem to be directed at any specific stores. According to some store owners, they have never sold any "ice" products, therefore they don't understand why they are being threatened with legal action.
A standard Fantasia letter starts, "We represent Fantasia Distribution, Inc. and hereby demand that [recipient name] cease and desist in any additional use of the term “ICE” and any confusingly similar mark, in connection with any and all tobacco, e-cigarette, vaping, and smoking-related products, immediately." We additionally require [receiver name] to furnish this office with a thorough record of the sales of any products that are infringing.
The letter continues by asserting that Fantasia has "achieved significant market recognition, as you are aware," and that it has "invested considerable resources in the marketing of its brands."
The Fantasia letter places certain particular requirements for its recipients:
- Give up utilizing any mark that looks suspiciously like a Fantasia mark.
- Accept to assist with any inquiries into other parties using Fantasia trademarks.
- Please supply copies of all documentation related to the products' acquisition and sale, "including the names of all parties that may have manufactured, imported, exported, distributed, or purchased these products."
- "Give up all items that violate the law that you own, submit a thorough sales report, and pay the appropriate infringement fee."
- "All materials and packaging displaying the infringement marks were collected and turned in to our office for disposal."
- Keep all records and paperwork "pertaining to your acquisition and distribution of the fakes."
The Fantasia attorney requests that the recipient of the letter get in touch with his office to certify that the company would be shutting down within 15 days. Reza says, "We would prefer to settle this matter peacefully and without the need for additional legal action." "I will assume that you intend to continue infringing my client's trademark and engaging in unfair and deceptive trade practices despite our demands if I do not hear from you within such time."
The lawyers we spoke with said that there is no legal significance to the threatening letters. There is no court order supporting any of the requests made by the Fantasia lawyer. Therefore, the only actual risk is that Fantasia may file a lawsuit against certain retailers. Although the corporation has the option to do so, it is likely to hold off on filing any new lawsuits until after its current ones have concluded.
They're using these [trademark] registrations to extort settlements out of small retailers that don't have the resources to fight it." Another attorney informed us that, in his opinion, Fantasia is attempting to get tiny companies to make hasty payments because of concern that a judge in one of the New York lawsuits may invalidate the company's trademark registrations.
The attorneys we spoke with advise small businesses receiving these letters to first seek legal advice before acting, and most definitely not to provide any information about the goods they sell or have previously sold to other parties.
