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Case 1:18-cv-24708-DPG Document 1 Entered on FLSD Docket 11/09/2018 Page 1 of 7

IN THE UNITED STATES DISTRICT COURT


FOR THE SOUTHERN DISTRICT OF FLORIDA

GUANTANAMERA CIGAR COMPANY


A Florida Corporation,

Plaintiff,

v. Case No.: TBD

AGIO SIGARENFABRIEKEN, N.V.


A Foreign Corporation,
ROYAL AGIO CIGARS, U.S.A.
A Florida Corporation,

Defendants.
____________________________________/

COMPLAINT FOR TRADEMARK INFRINGEMENT

Plaintiff GUANTANAMERA CIGAR COMPANY, (“Plaintiff” or “GCC”), by and

through its undersigned counsel, hereby files this Complaint against Defendant AGIO

SIGARENFABRIEKEN, N.V., (“Agio”), and Defendant ROYAL AGIO CIGARS, U.S.A.

(“Royal”) for the willful trademark infringement of Plaintiff’s registered trademarks, and in

support thereof says as follows:

NATURE OF THE ACTION

1. Plaintiff brings this action for violation of its rights under the Lanham Act, 15

U.S.C. Sections 1114 & 1125(a), and the Common Law.

THE PARTIES

2. Plaintiff is a Florida corporation operating a wholesale and retail establishment at

1465 S.W. 8th Street, Miami, Florida 33135.

3. Agio is, upon information and belief, a corporation organized under the laws of

the Netherlands having an address of Wolverstraat 23, 5525 AR Duizel, Netherlands.

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4. Royal is, upon information and belief, a Florida corporation with a principal address

of 1812 44th Avenue, Bradenton, Florida 34203.

JURISDICTION AND VENUE

5. This is an action arising under the Trademark Act, 15 U.S.C. Sections 1114, 1115

& 1125(a), and the Common Law.

6. This Court has subject matter jurisdiction over these claims pursuant to 15 U.S.C.

Section 1121, and 28 U.S.C. Sections 1331, 1338(a) and 1338(b).

7. Venue is proper in this District under 28 U.S.C. Section 1391(b)(2) and (c)(2)

because the events giving rise to the claims occurred in this District, namely, Defendants

infringed upon Plaintiff’s trademarks in this District.

BACKGROUND FACTS

8. Plaintiff has been involved in the United States cigar industry since 1997.

9. In 2008, Plaintiff began producing, marketing, and selling cigars bearing the

“DUO” trademark in United States commerce.

10. Plaintiff has continuously and exclusively used the “DUO” trademark in connection

with the sale of cigars since at lease July 16, 2018.

11. Plaintiff is the owner of Incontestable United States Trademark Registation No.

3,664,534 for “DUO” for use in connection with cigars. See Exhibit A.

12. Plaintiff’s trademark registration for “DUO” is live, subsiting, and enforceable by

Plaintiff.

13. On April 24, 2018, Agio filed Trademark Application No. 87/891,658 for

“DUETO” based on an alleged intent to use the same in connection with “tobacco, cigars;

cigarillos”.

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14. Agio’s trademark application was published for opposition on October 2, 2018.

15. On or about October 15, 2018, www.halfwheel.com, a prominent cigar industry

Internet publication, ran a story announcing the introduction of a new line of cigars by Royal under

the name “DUETO”. See Exhibit B.

16. On October 16, 2018 GCC filed an extension of time to oppose Agio’s trademark

application.

17. Also on October 16, 2018, GCC sent a cease and desist letter to counsel for both

Agio and Royal informing them of GCC’s prior trademark rights in its Inontestable Trademark

Registration for “DUO” for use in connection with cigars. See Exhibit C.

18. Upon information and belief, Agio is the parent or related company of Royal.

19. Upon information and belief, Agio and Royal are in an actual or apparent

partnership in connection with use of the infringing “DUETO” trademark in connection with

cigars.

20. Upon information and belief, Agio controls or directs the infringing conduct of

Royal in connection with use of the infringing “DUETO” trademark in connection with cigars.

21. There is a strong likelihood of consumer confusion stemming from Defendants’

unauthorized and willful infringement of Plaintiff’s registered “DUO” trademark.

22. The Defendants’ cigar and related products offered under the infringing

“DUETO” mark are related to the cigar products offered by Plaintiff under the registered “DUO”

Mark.

23. The Defendants’ infringing “DUETO” mark is similar in sight, sound, appearance,

and meaning to Plaintiff’s registered “DUO” mark.

24. Upon information and belief, Boris Wintermans is the President of Royal.

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25. On or about August 3, 2018, Mr. Wintermans, acting for Royal, gave an interview

to Cigar Snob Magazine wherein he specifically stated that “‘DUETO’ is for ‘duo’”. See

https://soundcloud.com/user-680494417/0046-boris-wintermans-on-balmoral-cigars-brazilian-

tobacco-and-ernesto-perez-carrillo (at approximately 29:00 to 29:20). It is therefore clear that

Defendants chose the name “DUETO” with the knowledge and intent that it is the same or

confusingly similar as “DUO”.

26. The Plaintiff and Defendants’ products are similar, identical, or at least reasonably

related tobacco products.

27. The Plaintiff’s and Defendants’ products are both classified in International Class

34 (classifying tobacco products) by the United States Patent and Trademark Office.

28. Plaintiff and Defendants’ trade channels and customers are similar, and in many

cases identical.

29. Upon information and belief, Defendants’ infringing goods are available for sale

in the Southern District of Florida.

30. Defendants’ infringing goods bearing the “DUETO” trademark are available for

sale to consumer in the Southern District of Florida through a number of retailers, including, but

not limited to Neptune Cigar:

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31. Defendants are aware of Plaintiff’s superior trademark rights, and are infringing

on Plaintiff’s trademark rights despite its awareness of Plaintiff’s superior trademark rights.

32. Plaintiff is being irreparably harmed by Defendants’ infringing activities.

COUNT I
FEDERAL TRADEMARK INFRINGEMENT

33. Plaintiff realleges paragraphs 1-32 as if specifically recited herein.

34. Plaintiff owns valid United States Incontestable Trademark Registration No.

3,664,534 for “DUO” for use in connection with cigars.

35. Plaintiff has prior rights to the “DUO” Mark in connection with cigars/tobacco

products and related goods.

36. Defendants adopted a mark that is the same or confusingly similar to Plaintiff’s

“DUO” mark such that consumers would likely confuse the two marks and the source or

sponsorship of the goods sold thereunder.

37. The harm to Plaintiff is irreparable.

COUNT II
FEDERAL UNFAIR COMPETITION

38. Plaintiff realleges paragraphs 1-32 as if specifically recited herein.

39. Plaintiff owns the “DUO” mark and has made continuous and exclusive use of the

“DUO” mark in United States commerce since 2008.

40. Plaintiff has prior rights to the “DUO” mark in connection with cigars/tobacco

products and related goods.

41. Defendants adopted a mark that is the same or confusingly similar to Plaintiff’s

“DUO” mark such that consumers would likely confuse the two marks and the source or

sponsorship of the goods sold thereunder.

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42. The harm to Plaintiff is irreparable.

COUNT III
COMMON LAW TRADEMARK INFRINGEMENT

43. Plaintiff realleges paragraphs 1-32 as if specifically recited herein.

44. Plaintiff owns the “DUO” mark and has made continuous and exclusive use of the

“DUO” mark in Florida and United States commerce since 2008.

45. Plaintiff has prior rights to the “DUO” mark in connection with cigars/tobacco

products and related goods.

46. Defendants adopted a mark that is the same or confusingly similar to Plaintiff’s

“DUO” mark such that consumers would likely confuse the two marks and the source or

sponsorship of the goods sold thereunder.

WHEREFORE, Plaintiff respectfully requests that the Court enter judgment in their favor

and against the Defendant for Federal Trademark Infringement, Federal Unfair Competition, and

under the Common Law and award damages, plus prejudgment interest, post judgment interest,

and any other relief the Court deems just and proper, including, but not limited to:

a) Compensatory damages or statutory damages;

b) A temporary and permanent injunction;

c) All costs and reasonable attorneys’ fees;

d) Other remedies that the Court may award.

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Dated: November 9, 2018


Respectfully submitted,

By: s/ Gustavo Sardiña


Frank Herrera
FL Bar No. 494801
fherrera@hnewmedia.com
Gustavo Sardiña
FL Bar No. 31162
g.sardina@hnewmedia.com
H NEW MEDIA LAW
1110 Brickell Avenue, Suite 506
Miami, Florida 33131
Tel.: (561) 841-6380

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