VMAS Solutions LLC v. MMJ Labs LLC, 2:17-cv-00534

Background

MMJ Labs owns a registered trademark for the medical vibration device “Buzzy” (U.S. Reg. No. 3,559,172), with claimed first use in interstate commerce in October 2008.
VMAS Solutions developed a wearable device called the VMAS Device and launched it as “Buzzies” on Kickstarter in Oct–Nov 2016.
MMJ sent VMAS a cease-and-desist in Jan 2017; VMAS filed a TTAB petition to cancel MMJ’s registration; MMJ notified Kickstarter, which temporarily blocked VMAS’s campaign.
VMAS sued seeking a declaratory judgment that MMJ’s registration is invalid (claiming MMJ’s earlier use was unlawful) and tortious interference; VMAS moved for a preliminary injunction to stop MMJ from asserting the registration or making infringement claims.
Central factual/legal dispute: whether MMJ’s pre-2014 sales of Buzzy were unlawful under the FDCA (because MMJ lacked a §510(k) clearance) and, if unlawful, whether that conduct was material such that MMJ could not acquire trademark rights.
In 2014 the FDA issued a §510(k) decision classifying Buzzy as a therapeutic vibrator (Class I) and concluding MMJ had exceeded certain 510(k) exemptions, but ultimately clearing the device for marketing; MMJ corrected any compliance issues before VMAS’s first use.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether MMJ’s pre-2014 use of Buzzy was unlawful such that the registration is void ab initio	MMJ sold Buzzy without required FDA §510(k) clearance from 2008–2014, so its use was unlawful and cannot support trademark priority	MMJ later obtained FDA clearance in 2014 and the FDA classified Buzzy as a Class I device; any prior defects were corrected before VMAS’s use	Court: Even if earlier use was unlawful, MMJ corrected the issues in 2014 and thus established lawful use prior to VMAS’s first use; VMAS failed to show material unlawful use
Whether an unlawful use (if any) was material to trademark rights	VMAS: FDA’s 2014 order shows MMJ’s prior use exceeded exemptions and was therefore material, voiding priority	MMJ: Any regulatory defects were cured by the FDA clearance, creating lawful use before VMAS’s priority date	Court: Materiality lacking because MMJ remedied compliance pre-VMAS; analogous to General Mills (labeling corrected before competitor’s priority)
Whether VMAS raised serious questions on the merits to justify a preliminary injunction	VMAS: Raises declaratory judgment and tortious interference claims tied to invalidity of registration	MMJ: Registration remains valid given lawful use as of 2014; tortious interference depends on invalidity claim	Court: VMAS did not show serious questions going to the merits; preliminary injunction denied
Whether tortious interference claim supports preliminary relief independent of trademark claim	VMAS: MMJ’s communications to Kickstarter interfered with its fundraising and business expectancies	MMJ: Interference claim rises or falls with validity of registration and lawful assertion of rights	Court: Because declaratory judgment claim fails on materiality/merits, tortious interference cannot justify injunction; court did not address other Winter factors

Key Cases Cited

Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008) (standard for preliminary injunctions)
CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626 (9th Cir. 2007) (unlawful use can defeat trademark priority; materiality requirement discussed)
Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217 (9th Cir. 1996) (first use in commerce determines trademark priority)
Southern California Darts Ass’n v. Zaffina, 762 F.3d 921 (9th Cir. 2014) (clarifies that unlawful use may be immaterial or collateral and thus not bar trademark rights)