Figarillo

Case 0:18-cv-60055-WPD Document 1 Entered on FLSD Docket 01/10/2018 Page 1 of 26
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 0:18-cv-60055
ALTADIS U.S.A. INC. and

CUBAN CIGAR BRANDS B.V.,
Plaintiffs,
-against-
FIGARO CIGARS 1943 LLC and

WINFORD H. FIGARO,
Defendants.
________________________________________/
COMPLAINT
Plaintiffs, Altadis U.S.A. Inc. (“Altadis”) and Cuban Cigar Brands B.V. (“CCB”)
(collectively “Plaintiffs”), by and through their undersigned attorneys, for their Complaint
against Defendants, Figaro Cigars 1943 LLC (“Figaro Cigars”) and Winford H. Figaro
(“Figaro”) (collectively, “Defendants”), respectfully allege as follows:
NATURE OF ACTION
1. It is often said that “imitation is the sincerest form of flattery.” Here, Defendants
have used the serial imitation of Plaintiffs’ valuable cigar trademarks and trade dress as part of a
plan to unfairly compete with Plaintiffs, in violation of the Lanham Act and state law.
2. More particularly, Altadis and CCB own valuable rights in a famous fleur de lis
design trademark (the “Fleur de Lis Design trademark”) that is the symbol of their
MONTECRISTO line of cigars, as depicted on the following MONTECRISTO cigar bands:

3. The Fleur de Lis Design trademark has become synonymous with, and an
identifier of, all of the cigars sold by Plaintiffs under their famous MONTECRISTO cigar brand.
The Fleur de Lis Design trademark has been used widely and continuously for many years in
connection with MONTECRISTO brand cigars and a host of ancillary goods.
4. Defendants have blatantly and willfully infringed upon Plaintiffs’ rights in the
Fleur de Lis Design trademark by adopting for use in connection with their cigars the trademarks
and trade dress depicted below (the “Infringing Fleur de Lis Design trademark”):
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5. Indeed, Defendants’ Infringing Fleur de Lis Design trademark is a colorable
imitation, if not an exact copy, of Plaintiffs’ federally registered Fleur de Lis Design trademark,
such that Defendants’ use thereof constitutes trademark counterfeiting.
6. Defendants have also filed U.S. Trademark Application Serial No. 86/564,660 for
the mark “FIGARILLOS and Design”, which mark incorporates the Infringing Fleur de Lis
Design trademark.
7. All of Defendants’ activities have been conducted in an effort to trade on the
goodwill associated with Plaintiffs’ trademark and trade dress rights. By these actions,
Defendants are liable for trademark infringement, trademark counterfeiting, false designation of
origin and unfair competition, and federal trademark dilution in violation of the Lanham Act of
1946, as amended, 15 U.S.C. §1051, et seq.; for deceptive and unfair trade practices pursuant to
the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. §§ 501.201 et seq.; and for
unfair competition under the common law of the State of Florida. By this action, Plaintiffs also
seek cancellation of any registration that may issue with respect to U.S. Trademark Application
Serial No. 86/564,660 pursuant to 15 U.S.C. § 1119. Plaintiffs have no adequate remedy at law.
THE PARTIES
8. Plaintiff Altadis is a corporation organized and existing under the laws of the
State of Delaware, having its principal place of business at 5900 North Andrews Avenue, Ste.
600, Fort Lauderdale, Florida 33309.
9. Plaintiff CCB is a private limited company organized and existing under the laws
of Curacao, having an office at 5900 North Andrews Avenue, Ste. 600, Fort Lauderdale, Florida
33309. Plaintiff CCB is a wholly-owned subsidiary of Plaintiff Altadis.
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10. Upon information and belief, Defendant Figaro Cigars is a limited liability
company organized and existing under the laws of the State of Florida, having its principal place
of business at 557 SE 37th Terrace, Homestead, Florida 33033. Upon information and belief,
Defendant Figaro Cigars distributes, markets, advertises, offers for sale and sells infringing cigar
products in the State of Florida and elsewhere.
11. Upon information and belief, Defendant Figaro is the owner and CEO of
Defendant Figaro Cigars. Upon information and belief, Defendant Figaro is a resident of the
State of Florida with an address of 557 SE 37th Terrace, Homestead, Florida 33033. Upon
information and belief, Defendant Figaro has personally directed, controlled, ratified,
participated in and/or been the moving force behind the infringing activities of Defendant Figaro
Cigars, and has personally committed the tortious acts that form the subject matter of this
Complaint.
JURISDICTION AND VENUE
12. This Court has jurisdiction over the subject matter of this action pursuant to 28
U.S.C. § 1331 (federal question), 15 U.S.C. § 1121 (actions arising under the Lanham Act), 28
U.S.C. §1338(a) (acts of Congress relating to trademarks), 28 U.S.C. § 1338(b) (pendant unfair
competition claims) and 28 U.S.C. § 1367 (supplemental jurisdiction over state claims).
13. This Court has personal jurisdiction over Defendants Figaro Cigars and Figaro by
virtue of the fact that they reside in the State of Florida, have transacted business within the State of
Florida on a regular and consistent basis, have infringed Plaintiffs’ trademarks and trade dress
within the State, and have infringed Plaintiffs’ trademarks and trade dress without the State causing
injury to property within the State.
14. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c).
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FACTS
I. PLAINTIFFS’ LONGSTANDING AND VALUABLE TRADEMARK RIGHTS
A. Plaintiffs’ Famous MONTECRISTO Cigar Brand
15. Plaintiff CCB is the owner of the trademarks and trade dress associated with
MONTECRISTO brand cigars in the United States (collectively the “MONTECRISTO
trademark”).
16. The MONTECRISTO trademark was developed and first used by Plaintiff CCB’s
predecessor, Menendez Garcia y Compania Limitada (“M&G”), a Cuban limited liability company.
Upon information and belief, M&G commenced use of the MONTECRISTO trademark in the
United States at least as early as July 25, 1935 in connection with premium cigars and used the
MONTECRISTO trademark in the United States in connection with premium cigars for many
decades prior to 1960 (when their use was involuntarily suspended due to the Cuban revolution).
From their inception, M&G’s MONTECRISTO cigars were considered among the finest premium
cigars in the world.
17. CCB is the successor-in-interest to M&G, having purchased M&G’s U.S. rights in
the MONTECRISTO trademark in 1976 and having shortly thereafter reintroduced
MONTECRISTO brand cigars into the U.S. market.
18. Genuine MONTECRISTO cigars are manufactured in the Dominican Republic,
Nicaragua and Honduras for Altadis. Altadis imports, promotes and distributes genuine
MONTECRISTO cigars in the United States.
19. Since the inception of its use, the MONTECRISTO trademark has been used by
Plaintiffs and their predecessors-in-interest only in connection with the finest quality premium
cigars and licensed merchandise. Plaintiffs’ MONTECRISTO cigars are considered to be among
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the finest premium cigars available in the United States. They are sold throughout the United
States, including in the State of Florida. Plaintiffs’ MONTECRISTO cigars have been extensively
advertised, are among the most prestigious cigar brands available in the United States, are highly
coveted by cigar aficionados and are used by the media as a symbol of luxury and excellence.
20. Plaintiffs are actively engaged in the commercial exploitation of ancillary
MONTECRISTO goods and services.
B. Plaintiffs’ Famous Fleur De Lis Design Trademarks
21. Since 1935, Plaintiffs and their predecessors-in-interest have prominently featured
the Fleur de Lis Design trademark as the centerpiece of the highly distinctive and famous
MONTECRISTO cigar brand.
22. Plaintiff CCB’s Fleur de Lis Design trademark that has been used in connection
with MONTECRISTO brand cigars since 1935 is depicted below:
23. With respect to the Fleur De Lis Design trademark, CCB is the owner of:
(a) The Fleur de Lis Design trademark and U.S. Trademark Registration
Number 3,805,893 for “cigars, little cigars, roll-your-own tobacco, pipe tobacco,
smokeless tobacco, ashtrays, cigar boxes, cigar cutters, cigar cases, cigar holders, lighters
for smokers, tobacco pipes, tobacco pouches, tobacco tins, match boxes and cigar tubes”
in Int’l Class 34 on the Principal Register. This registration is incontestable pursuant to
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15 U.S.C. § 1065. (A copy of the trademark registration certificate for this mark is
attached hereto as Exhibit A and is incorporated herein by reference);
(b) The Crossed Swords and Fleur de Lis Design trademark and U.S.
Trademark Registration Number 1,459,466 for “cigars” in Int’l Class 34 on the Principal
Register. This registration is incontestable pursuant to 15 U.S.C. § 1065. (A copy of the
trademark registration certificate for this mark is attached hereto as Exhibit B and is
incorporated herein by reference);
(c) The MONTE CRISTO Crossed Swords and Fleur de Lis Design
trademark and U.S. Trademark Registration Number 332,324 for “cigars” in Int’l Class
34 on the Principal Register. (A copy of the trademark registration certificate for this
mark is attached hereto as Exhibit C and is incorporated herein by reference); and
(d) The Montecristo Cigar Band Logo trademark and U.S. Trademark
Application Serial No. 87/164,826 for “cigars” in Int’l Class 34 on the Principal Register.
(A copy of a printout from the U.S. PTO’s TSDR database evidencing this mark is
attached hereto as Exhibit D and is incorporated herein by reference).
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24. The Fleur de Lis Design trademark is the focal point of the famous MONTECRISTO
brand:
25. From the extensive and long-term use of the Fleur de Lis Design trademark, it has
become synonymous with, and an identifier of, Plaintiff CCB’s MONTECRISTO trademarks
and Plaintiff Altadis’ MONTECRISTO products. This is particularly true as a result of the
continued use of the Fleur de Lis Design trademark as a separate and distinct element, as shown
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on, among other things, Plaintiffs’ cigar boxes, cigar bands and cigar tubes. Some examples
demonstrating use of the Fleur de Lis Design trademark are depicted below:
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C. Plaintiffs’ Valuable Trademark and Trade Dress Rights
26. Plaintiffs’ Fleur de Lis Design trademark is famous. It is widely recognized by the
trade and the public and has built up extensive goodwill.
27. Plaintiffs’ Fleur de Lis Design trademark is inherently distinctive to the public and
serves primarily as a designator of origin of Plaintiffs’ products.
28. As a result of the widespread use and display of Plaintiffs’ Fleur de Lis Design
trademark as used in connection with cigars and licensed goods and services: (a) the public and the
trade use the Fleur de Lis Design trademark to identify and refer to Plaintiffs and their brands; (b)
cigars and licensed goods and services marked with the Fleur de Lis Design trademark are
recognized by the trade and the public as high quality goods and services emanating from a single
source; and (c) the Fleur de Lis Design trademark has built up secondary meaning and extensive
goodwill.
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II. DEFENDANTS’ INFRINGING ACTIVITIES
29. Upon information and belief, Defendants are engaged in the manufacture,
importation, distribution, offering for sale and/or sale of cigars that infringe on Plaintiffs’
valuable trademark and trade dress rights. Indeed, it appears that Defendants have engaged in
conduct that is believed to reflect a purposeful intent to trade on the goodwill and business
reputation of Plaintiffs, their famous trademarks and trade dress.
30. Upon information and belief, Defendant Figaro owns and controls Defendant
Figaro Cigars, the distributor of cigars that are sold in the State of Florida and elsewhere under
the brand names FIGARO and FIGARILLOS.
31. Defendants utilize the Infringing Fleur de Lis Design trademark in connection
with FIGARO and FIGARILLOS cigars. The Infringing Fleur de Lis Design trademark is used
in the same manner that Plaintiffs and their predecessors have used the Fleur de Lis Design
trademark for more than 80 years. As the following depiction reflects, Defendants have adopted
a fleur de lis as the primary design element in connection with their FIGARO and FIGARILLOS
cigars:
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32. Defendants’ actions are particularly objectionable because they have been taken
in connection with seemingly all of their cigar brands and as part of an effort to associate the
fleur de lis, per se, as their “house mark.”
33. As part of Defendants’ concerted effort to use a fleur de lis design as a “house
mark” and to also greatly expand the use of the fleur de lis, it is noted that the fleur de lis design
now appears throughout Defendants’ Internet website located at www.figarocigars.com.
34. Defendants’ actions are all the more objectionable because they selected trade
dress layouts and color schemes that copied the trade dress layouts and color schemes long used
by Plaintiffs and their predecessors in connection with their famous cigar brands.
35. For example, Plaintiffs’ cigar bands display their prominent and distinctive fleur
de lis design in the center of the band. Likewise, Defendants’ cigar bands display their
prominent and infringing fleur de lis design in the center of the band:
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36. Defendants’ use of the color gold to the display the fleur de lis on its Internet
website is evidently a further attempt by them to create a false association with and/or an attempt
to create in the minds of consumers an association to Plaintiffs and their renowned
MONTECRISTO brand, since gold is one of the signature colors of Plaintiffs’ MONTECRISTO
packaging.
37. Notably, the stylization of Defendants’ cigar packaging is patterned after
Plaintiffs’ MONTECRISTO cigar bands. On MONTECRISTO cigar bands, Plaintiffs’ Fleur de
Lis Design trademark appears surrounded by two concentric circles. Likewise, on Defendants’
cigar packaging, Defendants’ Infringing Fleur de Lis Design appears within a shield design
having an overall circular appearance surrounded by a double-line border, reminiscent of
MONTECRISTO cigar bands:
38. Plaintiffs have not authorized any of the Defendants to use any of their
trademarks or trade dress as alleged in the Complaint.
39. Defendants have recklessly, willfully and intentionally violated Plaintiffs’ rights
with the deliberate intention of trading on the valuable goodwill and reputation established by
Plaintiffs by adopting for use in connection with cigars: (1) the Infringing Fleur de Lis Design
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trademark; and (2) confusingly similar trade dress layouts and color schemes for use on cigar
bands and boxes.
40. Defendants’ goods are exactly the same as the goods provided by Plaintiffs
(namely, cigars), and therefore such goods travel and/or are promoted through the same channels
of trade for sale to, and use by, the same class of purchasers.
41. Defendants’ use of: (1) the Infringing Fleur de Lis Design trademark; and (2)
confusingly similar trade dress layouts and color schemes; on cigar bands and boxes, constitutes
infringement of Plaintiffs’ trademark and trade dress rights in that it is likely to cause confusion,
mistake or deception as to the source of origin of Defendants’ products in that the public, the
trade and others are likely to believe that Defendants’ products are provided by, sponsored by,
approved by, licensed by, affiliated with or in some other way legitimately connected to
Plaintiffs, their branded cigars and/or licensed products including, without limitation, that they
may be a line extension of Plaintiffs’ brands.
42. Defendants’ continued use of: (1) the Infringing Fleur de Lis Design trademark;
and (2) confusingly similar trade dress layouts and color schemes; on cigar bands and boxes as
alleged, is likely to dilute the distinctiveness of Plaintiffs’ trademarks and trade dress, thus
hampering efforts by Plaintiffs to continue to protect the outstanding reputation of their premium
cigar brands, resulting in loss of sales of genuine products and thwarting Plaintiffs’ considerable
efforts and expenditures to promote their genuine products and to license their trademarks, all to
Plaintiffs’ irreparable harm.
43. When Plaintiffs became aware of Defendants’ use of the Infringing Fleur de Lis
Design trademark and the “FIGARILLOS and Design” trademark application, Plaintiffs sent a
letter to Defendants, on September 15, 2015, demanding that Defendants immediately cease and
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desist from all use of the Infringing Fleur de Lis Design trademark. (A copy of Plaintiffs’
September 15, 2015 letter is attached hereto as Exhibit E and is incorporated herein by
reference).
44. When Defendants did not comply with Plaintiffs’ demands, Plaintiffs filed a
Notice of Opposition on December 2, 2015 before the U.S. Patent and Trademark Office’s
Trademark Trial and Appeal Board against U.S. Trademark Application Serial No. 86/564,660.
The Opposition remains pending.
45. Defendants’ U.S. Trademark Application Serial No. 86/564,660 for the
“FIGARILLOS and Design” mark has been cited against and is blocking Plaintiffs’ U.S.
Trademark Application Serial No. 87/164,826 for its Montecristo Cigar Band Logo, which has
been in use in commerce on MONTECRISTO cigars for decades:
First Cause of Action
DIRECT AND CONTRIBUTORY

INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS
46. Plaintiffs repeat and re-allege each and every allegation of paragraphs 1 through
45 as though fully set forth herein.
47. This is a claim by Plaintiffs for direct and contributory infringement of federally
registered trademarks arising under Section 32 of the Lanham Act, 15 U.S.C. §1114.
48. Defendants’ activities, as alleged, constitute direct and/or contributory
infringement of Plaintiff CCB’s federally registered Fleur de Lis Design trademark in violation
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of Section 32 of the Lanham Act, 15 U.S.C. §1114, all to the substantial and irreparable injury of
the public and of CCB’s business reputation and goodwill.
49. By such wrongful acts, Defendants have caused and, unless restrained by the
Court, will continue to cause serious irreparable injury and damage to Plaintiff CCB and to the
goodwill associated with its registered marks, including diversion of customers from them, lost
sales and lost profits, and Defendants will be unjustly enriched. CCB has no adequate remedy at
law.
Second Cause of Action
TRADEMARK COUNTERFEITING
OF FEDERALLY REGISTERED TRADEMARKS
45 and 47 through 49 as though fully set forth herein.
51. This is a claim by Plaintiffs for trademark counterfeiting of federally registered
trademarks arising under Section 32 of the Lanham Act, 15 U.S.C. §1114(b).
52. Upon information and belief, Defendants have intentionally and knowingly used a
colorable imitation of Plaintiffs’ federally registered Fleur de Lis Design trademark in
connection with the exact same goods as Plaintiffs, namely, cigars.
53. Defendants’ activities, as alleged, constitute counterfeiting of Plaintiff CCB’s
federally registered Fleur de Lis Design trademark in violation of Section 32 of the Lanham Act,
15 U.S.C. §1114(b), all to the substantial and irreparable injury of the public and of CCB’s
business reputation and goodwill.
Court, will continue to cause serious irreparable injury and damage to Plaintiff CCB and to the
goodwill associated with its registered marks, including diversion of customers from them, lost
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sales and lost profits, and Defendants will be unjustly enriched. CCB has no adequate remedy at
law.
Third Cause of Action
TRADEMARK INFRINGEMENT, TRADE DRESS

INFRINGEMENT AND FALSE DESIGNATION OF ORIGIN
45, 47 through 49 and 51 through 54 as though fully set forth herein.
56. This is a claim by Plaintiffs for trademark and trade dress infringement and false
designation of origin arising under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a).
57. Defendants’ activities, as alleged, constitute infringement and/or contributory
infringement of Plaintiffs’ Fleur de Lis Design trademark and related trade dress, and direct and
contributory false designation of origin, false representation and false description, all to the
substantial and irreparable injury of the public and of Plaintiffs’ business reputations and
goodwill.
Court, will continue to cause serious irreparable injury and damage to Plaintiffs and to the
goodwill associated with Plaintiffs’ Fleur de Lis Design trademark and related trade dress,
including diversion of customers from Plaintiffs, lost sales and lost profits, and Defendants will
be unjustly enriched. Plaintiffs have no adequate remedy at law.
Fourth Cause of Action
FEDERAL TRADEMARK DILUTION
45, 47 through 49, 51 through 54 and 56 through 58 as though fully set forth herein.
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60. This is a claim for dilution of Plaintiff CCB’s Fleur de Lis Design trademark
arising under Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).
61. Plaintiff CCB’s Fleur de Lis Design trademark is famous and had become famous
prior to Defendants’ first use of their Infringing Fleur de Lis Design trademark.
62. Upon information and belief, Defendants’ unauthorized use of Plaintiff CCB’s
Fleur de Lis Design trademark dilutes Plaintiff CCB’s Fleur de Lis Design trademark by
tarnishing, blurring, weakening and/or diluting the distinctive quality of said trademark.
63. Upon information and belief, Defendants’ dilution of the famous Fleur de Lis
Design trademark has been reckless and/or willful.
Court, will continue to cause serious irreparable injury and damage to Plaintiffs and to the
goodwill associated with the Fleur de Lis Design trademark, including dilution of the mark,
diversion of customers from Plaintiffs, lost sales and lost profits, and Defendants will be unjustly
enriched. Plaintiffs have no adequate remedy at law.
Fifth Cause of Action
FEDERAL UNFAIR COMPETITION
45, 47 through 49, 51 through 54, 56 through 58 and 60 through 64 as though fully set forth
herein.
66. Through their unauthorized use of trademarks and trade dress virtually identical to
trademarks and trade dress owned by Plaintiffs, Defendants have engaged in acts of unfair
competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), et. seq.
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67. As a direct and proximate result of the foregoing acts of Defendants, Plaintiffs
have been damaged and have suffered and will continue to suffer immediate and irreparable
harm. Unless restrained by the Court, Defendants will continue to cause irreparable injury and
damage to Plaintiffs and to the goodwill associated with the Plaintiffs’ trademark and trade dress
rights. Plaintiffs have no adequate remedy at law.
Sixth Cause of Action
DECEPTIVE AND UNFAIR TRADE PRACTICES
45, 47 through 49, 51 through 54, 56 through 58, 60 through 64 and 66 through 67 as though
fully set forth herein.
69. Defendants have engaged in actual deceptive practices and/or have unfairly and
unconscionably competed with Plaintiffs with respect to their efforts to utilize Plaintiffs’
distinctive and famous Fleur de Lis Design trademark, in a manner that is likely to confuse and
injure consumers.
70. Defendants’ aforementioned acts constitute unfair or deceptive acts or practices in
violation of the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. §§501.201 et seq.
71. Plaintiffs are being irreparably harmed and will continue to be irreparably harmed
unless Defendants are enjoined from using Plaintiffs’ Fleur de Lis Design trademark.
72. Pursuant to Fla. Stat. §501.207(1)(a), Plaintiffs seek a declaratory judgment that
Defendants’ aforementioned acts constitute deceptive and unfair trade practices.
73. Pursuant to Fla. Stat. §501.207(1)(b), Plaintiffs seek an injunction prohibiting
Defendants from using Plaintiffs’ Fleur de Lis Design trademark.
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Seventh Cause of Action
COMMON LAW UNFAIR COMPETITION
45, 47 through 49, 51 through 54, 56 through 58, 60 through 64, 66 through 67 and 69 through
73 as though fully set forth herein.
75. Defendants’ aforementioned acts constitute unfair competition under the common
law.
76. Plaintiffs have been damaged by Defendants’ aforementioned acts.
Eighth Cause of Action
DECLARATORY JUDGMENT FOR

CANCELLATION OF FEDERAL TRADEMARK REGISTRATION
45, 47 through 49, 51 through 54, 56 through 58, 60 through 64, 66 through 67, 69 through 73
and 75 through 76 as though fully set forth herein.
78. Defendants are the record owners of U.S. Trademark Application Serial No.
86/564,660 for the mark “FIGARILLOS and Design” for use in connection with “Tobacco,
cigars and cigarettes” in International Class 34.
79. Plaintiffs believe they will be damaged by U.S. Trademark Application Serial No.
86/564,660 because it incorporates the Infringing Fleur de Lis Design trademark complained of
herein, which is confusingly similar in appearance and commercial impression to Plaintiff CCB’s
registered and famous Fleur de Lis Design trademark.
80. Plaintiffs’ goods are the same as the goods covered by U.S. Trademark
Application Serial No. 86/564,660, and such goods would travel and/or be promoted through the
same channels of trade for sale to, and use by, the same class of purchasers.
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81. Defendants’ use of the “FIGARILLOS and Design” trademark is likely to cause
confusion, mistake or deception as to the source of origin of Defendants’ goods in that the
public, the trade and others are likely to believe that Defendants’ products are provided by,
sponsored by, approved by, licensed by, affiliated with or in some other way legitimately
connected to Plaintiffs’ MONTECRISTO brand cigars and/or licensed products, which bear
CCB’s registered and famous Fleur de Lis Design trademark.
82. Defendants’ use of the “FIGARILLOS and Design” trademark will cause dilution
of the distinctive quality of CCB’s famous Fleur de Lis Design trademark.
83. In addition, U.S. Trademark Application Serial No. 86/564,660, which
incorporates the Infringing Fleur de Lis Design trademark complained of herein, has been cited
against and is blocking Plaintiffs’ U.S. Trademark Application Serial No. 87/164,826, which
incorporates Plaintiffs’ Fleur de Lis Design trademark, causing injury and damage to Plaintiffs.
84. Accordingly, in the event that U.S. Trademark Application Serial No. 86/564,660
proceeds to registration, Plaintiffs seek an order, pursuant to 15 U.S.C. § 1119, directing the
Commissioner of Patents and Trademarks to cancel such registration on grounds of likelihood of
confusion and/or dilution.
85. An actual and justiciable controversy exists between the parties.
86. Plaintiffs have no adequate remedy at law.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray:
1. That the Court issue a permanent injunction restraining Defendants, their agents,
servants, employees, successors and assigns and all others in concert and privity with them from:
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(a) Directly or indirectly exporting from any other country to the United States,
importing into the United States, transshipping through the United States and/or causing,
aiding, abetting or contributing to the exportation from any other country to the United
States or to the importation into the United States or to the transshipment through the United
States of:
i. Any tobacco products, tobacco packaging and/or tobacco related
products, including cigar packaging and cigar-related products, that are packaged or labeled
in a manner that makes any use as a trademark of any designation, trademark or trade dress
that is identical or confusingly similar to Plaintiffs’ Fleur de Lis Design trademark as set
forth in the Complaint; and
ii. Any promotional materials or other items that are labeled with or
contain facsimiles of Plaintiffs’ Fleur de Lis Design trademark as set forth in the Complaint;
(b) Directly or indirectly manufacturing, using, purchasing, possessing, offering
to sell, advertising, promoting, marketing, transporting, distributing, selling or otherwise
disposing of and/or causing, aiding, abetting or contributing to the manufacture, use,
purchase, possession, offer for sale, advertisement, promotion, marketing, transportation,
distribution, sale or other disposition in the United States of:
i. Any tobacco products, tobacco packaging or tobacco-related
products, including cigar packaging and cigar-related products, that are packaged or labeled
in a manner that makes use of Plaintiffs’ Fleur de Lis Design trademark as set forth in the
Complaint; and
ii. Any promotional materials or other items that are labeled with or
contain Plaintiffs’ Fleur de Lis Design trademark as set forth in the Complaint; and
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(c) Directly or indirectly infringing Plaintiffs’ Fleur de Lis Design trademark as
set forth in the Complaint; and
(d) Unfairly competing with Plaintiffs;
2. That the Court issue a judgment that Defendants’ acts constitute direct and/or
contributory infringement of Plaintiff CCB’s federally registered Fleur de Lis Design trademark
in violation of Section 32 of the Lanham Act, 15 U.S.C. §1114;
3. That the Court issue a judgment that Defendants’ acts constitute counterfeiting of
Plaintiff CCB’s federally registered Fleur de Lis Design trademark in violation of Section 32 of
the Lanham Act, 15 U.S.C. §1114(b);
4. That the Court issue a judgment that Defendants’ acts constitute trademark and
trade dress infringement and false designation of origin in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. §1125(a);
5. That the Court issue a judgment that Defendants’ acts caused dilution of Plaintiff
CCB’s Fleur de Lis Design trademark in violation of Section 43(c) of the Lanham Act, 15 U.S.C.
§1125(c);
6. That the Court issue a judgment that Defendants have engaged in acts of unfair
competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), et. seq;
7. That the Court issue a declaratory judgment that Defendants’ acts constitute
deceptive and unfair trade practices in violation of the Florida Deceptive and Unfair Trade
Practices Act (Fla. Stat. §501.207(1)(a));
8. That, in the event that U.S. Trademark Application Serial No. 86/564,660
proceeds to registration, the Court issue a declaratory judgment, pursuant to 15 U.S.C. § 1119,
directing the Commissioner of Patents and Trademarks to cancel such registration;
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9. That Defendants be required to deliver to Plaintiffs for destruction all products,
advertising and other promotional materials and other things possessed, used, distributed and/or
available for sale by Defendants, or on their behalf, which have utilized the Infringing Fleur de Lis
Design trademark as set forth in the Complaint;
10. That Defendants, jointly and severally, be required to account to and compensate
Plaintiffs for Defendants’ profits and the actual damages suffered by Plaintiffs as a result of
Defendants’ acts of trademark and trade dress infringement, false designation of origin and unfair
competition in an amount to be proven at trial;
11. That Plaintiffs’ recoveries be trebled and prejudgment interest be awarded, pursuant
to Section 35 of the Lanham Act (15 U.S.C. §1117);
12. That at Plaintiffs’ election before final judgment, that the Court award statutory
damages pursuant to Section 35 of the Lanham Act (15 U.S.C. §1117(c));
13. That Defendants, jointly and severally, be required to pay compensatory and
punitive damages for their acts of unfair trade practices to the maximum extent permitted by law
in an amount to be proven at trial;
14. That Defendants, jointly and severally, be compelled to pay Plaintiffs’ attorneys’
fees, together with costs of this suit, pursuant to Section 35 of the Lanham Act (15 U.S.C. §1117)
and the Florida Deceptive and Unfair Trade Practices Act (Fla. Stat. § 501.2105);
15. That pre-judgment and post-judgment interest be awarded to the maximum extent
provided by law; and
16. That Plaintiffs obtain such other and further relief as this Court may deem just
and proper.
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DEMAND FOR TRIAL BY JURY
Plaintiffs demand trial by jury for all issues so triable as a matter of law.
Dated: January 10, 2018
Respectfully submitted,
GRIMES LLC
/s/ Charles W. Grimes

Charles W. Grimes (Bar No. 96651)
Luca Hickman
GRIMES LLC
3501 Bonita Bay Blvd.
Bonita Springs, Florida 34134
Telephone: (239) 330-9000
grimes@gandb.com
Russell D. Dize
101 Merritt 7, Suite 300
Norwalk, Connecticut 06851
Attorneys for Plaintiffs

Altadis U.S.A. Inc. and
Cuban Cigar Brands B.V.
26

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Case 0:18-cv-60055-WPD Document 1 Entered on FLSD Docket 01/10/2018 Page 1 of 26

IN THE UNITED STATES DISTRICT COURT

Case No. 0:18-cv-60055

ALTADIS U.S.A. INC. and

FIGARO CIGARS 1943 LLC and

(“Figaro”) (collectively, “Defendants”), respectfully allege as follows:

MONTECRISTO line of cigars, as depicted on the following MONTECRISTO cigar bands:

connection with MONTECRISTO brand cigars and a host of ancillary goods.

5. Indeed, Defendants’ Infringing Fleur de Lis Design trademark is a colorable

such that Defendants’ use thereof constitutes trademark counterfeiting.

7. All of Defendants’ activities have been conducted in an effort to trade on the

600, Fort Lauderdale, Florida 33309.

33309. Plaintiff CCB is a wholly-owned subsidiary of Plaintiff Altadis.

products in the State of Florida and elsewhere.

JURISDICTION AND VENUE

injury to property within the State.

I. PLAINTIFFS’ LONGSTANDING AND VALUABLE TRADEMARK RIGHTS

A. Plaintiffs’ Famous MONTECRISTO Cigar Brand

MONTECRISTO brand cigars in the United States (collectively the “MONTECRISTO

cigars in the world.

the MONTECRISTO trademark in 1976 and having shortly thereafter reintroduced

MONTECRISTO brand cigars into the U.S. market.

18. Genuine MONTECRISTO cigars are manufactured in the Dominican Republic,

MONTECRISTO cigars in the United States.

20. Plaintiffs are actively engaged in the commercial exploitation of ancillary

MONTECRISTO goods and services.

B. Plaintiffs’ Famous Fleur De Lis Design Trademarks

MONTECRISTO cigar brand.

with MONTECRISTO brand cigars since 1935 is depicted below:

in Int’l Class 34 on the Principal Register. This registration is incontestable pursuant to

attached hereto as Exhibit A and is incorporated herein by reference);

Register. This registration is incontestable pursuant to 15 U.S.C. § 1065. (A copy of the

incorporated herein by reference);

mark is attached hereto as Exhibit C and is incorporated herein by reference); and

attached hereto as Exhibit D and is incorporated herein by reference).

C. Plaintiffs’ Valuable Trademark and Trade Dress Rights

trade and the public and has built up extensive goodwill.

serves primarily as a designator of origin of Plaintiffs’ products.

II. DEFENDANTS’ INFRINGING ACTIVITIES

reputation of Plaintiffs, their famous trademarks and trade dress.

the brand names FIGARO and FIGARILLOS.

fleur de lis, per se, as their “house mark.”

now appears throughout Defendants’ Internet website located at www.figarocigars.com.

to create in the minds of consumers an association to Plaintiffs and their renowned

37. Notably, the stylization of Defendants’ cigar packaging is patterned after

Plaintiffs’ MONTECRISTO cigar bands. On MONTECRISTO cigar bands, Plaintiffs’ Fleur de

having an overall circular appearance surrounded by a double-line border, reminiscent of

MONTECRISTO cigar bands:

trademarks or trade dress as alleged in the Complaint.

bands and boxes.

may be a line extension of Plaintiffs’ brands.

Plaintiffs’ irreparable harm.

The Opposition remains pending.

been in use in commerce on MONTECRISTO cigars for decades:

First Cause of Action

DIRECT AND CONTRIBUTORY

45 as though fully set forth herein.

48. Defendants’ activities, as alleged, constitute direct and/or contributory

the public and of CCB’s business reputation and goodwill.

Second Cause of Action

45 and 47 through 49 as though fully set forth herein.

51. This is a claim by Plaintiffs for trademark counterfeiting of federally registered

trademarks arising under Section 32 of the Lanham Act, 15 U.S.C. §1114(b).