Shijin Vapor LLC v. Bolt USA, LLC

Background

Shijin manufactures e-liquids for electronic cigarettes, vaporizers, and similar products. Some Shijin products used the name “Bolt.” Bolt also manufactures e-liquids and uses a similar “Bolt” mark. In April 2020, Bolt filed trademark applications for the word “Bolt” and a stylized “Bolt” logo. In May 2020, Bolt sent a cease-and-desist letter to VaporDNA, a third-party distributor that sold some of Shijin’s Bolt-marked products. Shijin alleged that VaporDNA ended its business relationship with Shijin concerning those products.

Shijin asserted four claims: declaratory relief concerning which party was the senior user of the “Bolt” mark and whether Bolt’s trademark applications were fraudulent; intentional interference with contractual relations; intentional interference with prospective economic relations; and violation of California Business and Professions Code section 17200. Bolt asserted three counterclaims: false designation or unfair competition under the Lanham Act, common-law trademark infringement and unfair competition, and violation of section 17200.

Both parties moved for summary judgment, a procedure allowing judgment without a trial when the evidence shows no genuine dispute over a fact that could affect the result. Shijin sought judgment on all three of Bolt’s counterclaims. Bolt sought judgment on Shijin’s second, third, and fourth claims.

Shijin’s Motion

The court denied Shijin’s motion in full. The parties presented conflicting evidence about when each first used the “Bolt” mark. Both claimed first use during a narrow period in early 2020, and neither presented definitive evidence overcoming the other’s showing. Because the first-use date was a material fact for all three of Bolt’s counterclaims, the court ruled that summary judgment was unavailable on those claims.

Bolt’s Motion

The court granted Bolt’s motion on Shijin’s claim for intentional interference with contractual relations. Shijin had to show, among other things, that a contract existed between Shijin and VaporDNA when Bolt sent the cease-and-desist letter. Shijin submitted a declaration describing an alleged oral agreement and identified invoices from November 2017 and April 2020. The court found the declaration broad and conclusory and concluded that the two invoices, more than two years apart, did not create a genuine factual dispute about an ongoing contract at the relevant time.

The court also granted Bolt’s motion on Shijin’s claim for intentional interference with prospective economic relations. Shijin argued that Bolt’s alleged misrepresentation of its first-use date to the Patent and Trademark Office was the required wrongful conduct. Relying on the cited authority, the court held that an inaccurate first-use date does not invalidate a trademark if the mark was in use when the application was filed. The court therefore concluded that the alleged statements were not wrongful for purposes of this claim.

The court granted Bolt’s motion on Shijin’s section 17200 claim. Bolt argued that the claim depended on the two interference claims. Although Shijin disputed that characterization, it identified no additional conduct for the court to consider. Because the court granted judgment on the two interference claims and Shijin identified no adequately alleged additional conduct, the court granted judgment on the section 17200 claim.

Disposition

The court denied Shijin’s motion for summary judgment and granted Bolt’s motion for partial summary judgment. The remaining claims are Shijin’s declaratory-relief claim concerning use of the “Bolt” mark and Bolt’s three trademark-related counterclaims. The parties were re-referred to Magistrate Judge Hixson for a further settlement conference.