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Plaintiff,
Defendants.
____________________________________/
through its undersigned counsel, hereby files this Complaint against Defendant AGIO
(“Royal”) for the willful trademark infringement of Plaintiff’s registered trademarks, and in
1. Plaintiff brings this action for violation of its rights under the Lanham Act, 15
THE PARTIES
3. Agio is, upon information and belief, a corporation organized under the laws of
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4. Royal is, upon information and belief, a Florida corporation with a principal address
5. This is an action arising under the Trademark Act, 15 U.S.C. Sections 1114, 1115
6. This Court has subject matter jurisdiction over these claims pursuant to 15 U.S.C.
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
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
10. Plaintiff has continuously and exclusively used the “DUO” trademark in connection
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.
Internet publication, ran a story announcing the introduction of a new line of cigars by Royal under
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.
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,
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-
Defendants chose the name “DUETO” with the knowledge and intent that it is the same or
26. The Plaintiff and Defendants’ products are similar, identical, or at least reasonably
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
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
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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.
COUNT I
FEDERAL TRADEMARK INFRINGEMENT
34. Plaintiff owns valid United States Incontestable Trademark Registration No.
35. Plaintiff has prior rights to the “DUO” Mark in connection with cigars/tobacco
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
COUNT II
FEDERAL UNFAIR COMPETITION
39. Plaintiff owns the “DUO” mark and has made continuous and exclusive use of the
40. Plaintiff has prior rights to the “DUO” mark in connection with cigars/tobacco
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
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COUNT III
COMMON LAW TRADEMARK INFRINGEMENT
44. Plaintiff owns the “DUO” mark and has made continuous and exclusive use of the
45. Plaintiff has prior rights to the “DUO” mark in connection with cigars/tobacco
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
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:
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