Amended Complaint Corona V. Cigars Int'l

UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA ORLANDO DIVISION CORONA CIGAR COMPANY, a Florida corporation,

Case No. 6:09-cv-747-Orl-35KRS

Plaintiff, v. CIGARS INTERNATIONAL, INC., KEITH MEIER, SWEDISH MATCH, AB, QUALITY IMPORTERS TRADING CO., INC.,

JURY TRIAL REQUESTED INJUNCTIVE RELIEF SOUGHT

Defendants. ______________________________/ AMENDED COMPLAINT FOR WILLFUL TRADEMARK INFRINGEMENT Plaintiff Corona Cigar Company (“Corona Cigar”), for its complaint against Defendants Cigars International, Inc.; Keith Meier; Swedish Match, AB; and Quality Importers Trading Co., Inc. (collectively, “Defendants”), states the following: PARTIES 1.

Plaintiff Corona Cigar is a Florida corporation with its principal place of business

at 7792 West Sand Lake Road, Orlando, Florida 32819. Corona Cigar is engaged in the business of promoting and selling cigars and related products. 2.

The first named defendant, Cigars International, Inc. (“Cigars International”), is,

upon information and belief, a Delaware corporation with an address at 6771 Chrisphalt Drive, Bath, Pennsylvania 18014.

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3.

The second named defendant, Keith Meier, is, upon information and belief, a

resident of Pennsylvania and the President of Cigars International, who as such directs and controls the actions of Cigars International and directly benefits financially therefrom. 4.

The third named defendant, Swedish Match, AB (“Swedish Match”), is, upon

information and belief, a Swedish corporation with a principal place of business at SE-118 85 Stockholm, Sweden. Upon further information and belief, Swedish Match wholly owns Cigars International and directs and controls its actions, from which it directly benefits financially. 5.

The fourth named defendant, Quality Importers Trading Co., Inc. (“Quality

Importers”), is, upon information and belief, a Florida corporation with an address at 20871 Johnson Street, Suite 113, Pembroke Pines, Florida 33029. JURISDICTION AND VENUE 6.

This Court has exclusive original jurisdiction over these claims pursuant to 28

U.S.C. §§ 1331 and 1338 in that these claims arise under the Lanham Act 15 U.S.C. §§ 1051 et seq., and has pendant jurisdiction under §1367(a) over the related state law claim. 7.

Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b) because a

substantial part of the events giving rise to the claims herein alleged occurred in this judicial district, and, upon information and belief, because Defendants conduct business in and otherwise have substantial contacts with the State of Florida such that they are amenable to service of process pursuant to the Florida long arm statute and Rule 4 of the Federal Rules of Civil Procedure.

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FACTS COMMON TO ALL COUNTS A.

Corona Cigar and its INTENSA Trademark and Trade Dress

8.

Since 1996, Corona Cigar has marketed and sold cigars and related products both

on-line and through its Central Florida retail stores, which it has endeavored to make “the ultimate cigar experience.” In addition to being stocked with millions of cigars, these stores are a meeting place for all those wishing to find a kindred spirit who enjoys a good cigar. 9.

Corona Cigar sells cigars manufactured by others as well as its own brands of

cigars, one of which is its INTENSA brand, which is the subject of Corona Cigar’s incontestable U.S. Trademark Registration No. 2,775,839 (the “Corona Cigar Mark”). Corona Cigar has used this particular mark in commerce since at least as early as February of 2000. It filed for its federal registration on December 3, 2002, and the registration was granted on October 21, 2003. A true and correct copy of the registration certificate is attached hereto as Exhibit A. 10.

Corona Cigar’s INTENSA cigars are hand-made in Honduras using an

international blend of tobaccos from Nicaragua, Honduras and Indonesia contained in a rustic Habano wrapper, all creating a spicy taste with nutty undertones. They are sold via Corona Cigar’s retail stores as well as, from time to time, on-line on Corona Cigar’s website <www.coronacigar.com>. Consumers tout them as an affordable full-bodied cigar with a taste suited for experienced cigar connoisseurs. 11.

The label on Corona Cigar’s INTENSA cigars – the cigar ring – displays a

vibrant, colorful and distinctive design of warm red, gold and black with the word INTENSA in stark white for contrast. The design includes a crown above the word INTENSA, both of which are centered in a circular design bordered in gold. The “I” in INTENSA is larger than the remaining letters, and all the letters are in a capitalized serif type style. 3

12.

The design on the INTENSA cigar boxes includes the word INTENSA in the

style described above within a black square outlined in gold, with gold lines radiating outward from the center, all on a red background bordered in black (the foregoing characteristics of the Corona Cigar Mark as contained on the cigars and cigar boxes are referred to herein as the “Corona Cigar Trade Dress”):

(Additional pictures of Corona Cigar Trade Dress are attached hereto as Exhibit B.) 13.

Since at least 2000, Corona Cigar has made a substantial investment in designing,

developing and marketing its distinctive Corona Cigar Trade Dress, such that the Corona Cigar Trade Dress has acquired secondary meaning among consumers and the public.

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B.

Infringing Actions by Defendants

14.

Cigars International, a wholly owned subsidiary of Swedish Match, is a direct

competitor of Corona Cigar, promoting and selling cigars and related products on-line. 15.

On July 16, 2007, over seven years after Corona Cigar began selling its

INTENSA cigars throughout the United States, Cigars International filed U.S. Trademark Application Serial No. 77/230,331 for the mark INTENSO based on its alleged intent to use the mark in connection with cigars, cigar cases and cutters, ashtrays and humidors. The President of Cigars International, Keith Meier, signed the application, declaring under penalty of perjury that to the best of his knowledge and belief, Cigars International was entitled to use the mark INTENSO, and that no other person or business had the right to use the mark in commerce, either in the identical form or in such near resemblance thereto so as to be likely to cause confusion. A true and correct copy of the status report from the United States Patent and Trademark Office (“USPTO”) for the INTENSO application and the application itself are attached hereto as Exhibit C. 16.

On October 20, 2007, the USPTO Examining Attorney assigned to Cigars

International’s INTENSO application issued an Office Action refusing registration on the grounds of, among other reasons, a likelihood of confusion with Corona Cigar’s prior registration for INTENSA for cigars. A true and correct copy of the Office Action, without its attachments, is attached hereto as Exhibit D. Cigars International never responded to this Office Action, and as a result, the INTENSO application was subsequently abandoned. 17.

On October 24, 2007, four days after the Office Action was issued, Cigars

International filed a new trademark application (Serial No. 77/311,742) for the mark CUAVANA INTENSO. This application was based on Cigars International’s alleged intent to use 5

this new mark in connection with the identical goods specified in its original INTENSO application. Keith Meier signed the new application as well, again declaring under penalty of perjury that Cigars International had the right to use the mark in commerce, and that no one else had the right to use the same or a confusingly similar mark on similar goods. A true and correct copy of Cigar International’s application for this mark is attached hereto as Exhibit E. 18.

Upon information and belief, rather than use the mark specified in the second

application, Cigars International soon began offering its products under the mark INTENSO, with the words CU-AVANA visible only upon a very close inspection (the “Cigars International Mark”). Like the Corona Cigar Mark, the products bearing the Cigars International Mark have a warm red, gold and black design with the word INTENSO in bright white.

The “I” in

INTENSO is bigger than the majority of the remaining letters, and all letters are capitalized and in a serif style of type. On the cigar rings, a small red crown-like design over the word INTENSO contains the barely legible words CU-AVANA, and the entire design is rimmed in gold:

19.

On the Cigars International cigar boxes and humidors, the word INTENSO is

emphasized by gold lines with a red or black background, and there is a circular shape in gold around the word INTENSO. On the lids of the humidors, which prominently feature the word INTENSO, the words CU-AVANA do not appear at all. The word INTENSO is centered 6

within a black diamond outlined in gold with gold lines radiating outward from the diamond to a square gold border (the foregoing characteristics of the Cigars International products are referred to herein as the “Cigars International Trade Dress”):

(Additional pictures of Cigars International Trade Dress are attached hereto as Exhibit F.) 20.

Because of the similarities between the marks themselves and their respective

presentations on the products and packaging, the Cigars International Mark and Trade Dress are confusingly similar to the Corona Cigar Mark and Trade Dress. 21.

Upon information and belief, Cigars International sells its cigars and related

products through online website <www.cigar.com>, retail stores via third parties, and catalogs which are mailed to consumers in the state of Florida. Moreover, the cigars sold under the Cigars International Mark are also touted as full-bodied, and thus would appeal to the same consumers as the Corona Cigar INTENSA cigars. 22.

Upon information and belief, Cigars International engaged the Florida company

Quality Importers to design, manufacture and sell humidors with the Cigars International Mark. 23. humidor,

Upon information and belief, Quality Importers designed the Cigars International and

manufactures

and

sells 7

these

humidors

via

its

website

<www.qualityimporters.com> and catalogs. True and correct copies of the Cigars International humidor’s instruction manual and Quality Importer’s webpage are attached hereto as Exhibit G. 24.

In light of the confusing similarities between the Corona Cigars Mark and Trade

Dress and the Cigars International Mark and Trade Dress, Corona Cigars contacted Keith Meier by e-mail shortly after Cigars International’s products were introduced on the market. Corona Cigar’s President advised Keith Meier that Corona Cigar had a registered trademark for the mark INTENSA, and he expressed his concern over Cigars International’s unauthorized use of a virtually identical mark. A true and correct copy of the e-mail message is attached hereto as Exhibit H. 25.

Despite having been informed both by the USPTO and Corona Cigars that there

was a likelihood of confusion between the Corona Cigar Mark and the Cigars International Mark, Cigars International refused and continues to refuse to cease using the mark. Accordingly, Corona Cigar’s counsel wrote Cigars International and Swedish Match on April 13, 2009, demanding that they cease using the infringing Cigars International Mark. A true and correct copy of this letter is attached hereto as Exhibit I. 26.

Cigars International and Swedish Match refused to discontinue their infringement,

and continue to promote and sell cigars and other products bearing the infringing mark design, causing a likelihood of confusion among consumers. COUNT I Infringement of Federally Registered Trademark by Defendants Pursuant to 15 U.S.C. § 1114 27.

Corona Cigar restates the allegations in Paragraphs 1 through 26, which are

incorporated herein by this reference.

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28.

The Cigars International Mark is confusingly similar to the Corona Cigar Mark.

The Cigars International Mark is likely to deceive, confuse and mislead purchasers and prospective purchasers into believing that the products sold by Defendants are manufactured or authorized by or are in some manner associated with Corona Cigar. 29.

Both the Cigars International Mark and the Corona Cigar Mark are used on very

similar if not identical goods, which are marketed to the same consumers using the same channels of trade and methods of advertising. 30.

Upon information and belief, Defendants consciously and deliberately seek to

capitalize on the goodwill and product quality associated with the Corona Cigar Mark, and intend to capitalize upon and profit by the consumer confusion created by Defendants’ actions. As such, this is an exceptional case of trademark infringement. 31.

Upon information and belief, Swedish Match has the power and capacity to

control Defendants’ actions and their adoption and use of the Cigars International Mark, and knows or should know that the Cigars International Mark infringes Corona Cigar’s INTENSA trademark rights, and benefits directly from Defendants’ infringing actions. 32.

Upon information and belief, Keith Meier, the President of Cigars International,

has the power and capacity to control Defendants’ actions and knows or should know that the Cigars International Mark infringes Corona Cigar’s INTENSA trademark rights, and he benefits directly from Cigars International’s infringing actions. Upon further information and belief, Keith Meier intentionally induced Defendants to infringe the Corona Cigar Mark and personally authorized and approved the Defendants’ infringing acts. 33.

Corona Cigar requested in writing that Defendants cease their infringing activity,

to no avail. 9

34.

Unless enjoined, Defendants’ continued infringement will cause irreparable injury

to Corona Cigar. Corona Cigar has no adequate remedy at law. 35.

Defendants’ conduct as described in the previous paragraphs constitutes

trademark infringement of a federally registered mark in violation of 15 U.S.C. § 1114. 36.

Corona Cigar has been harmed by Defendants’ conduct as alleged above in an

amount not yet known. COUNT II Federal Unfair Competition as to Trade Dress Pursuant to 15 U.S.C. §1125(a) 37.

Corona Cigar restates the allegations in Paragraphs 1 through 36, which are

incorporated herein by this reference. 38.

The Corona Cigar Trade Dress enjoys a substantial degree of success, and has

achieved secondary meaning in the eyes of the public. 39.

The Cigars International Trade Dress is confusingly similar to and infringes the

Corona Cigar Trade Dress. The Cigars International Trade Dress is likely to deceive, confuse and mislead purchasers and prospective purchasers into believing that the products sold by Defendants are manufactured or authorized by or are in some manner associated with Corona Cigar. 40.

Both the Cigars International Trade Dress and the Corona Cigar Trade Dress are

used on very similar if not identical goods, which are marketed to the same consumers using the same channels and methods of advertising. 41.

Upon information and belief, Defendants knowingly adopted and use a virtual

copy of the Corona Cigar Trade Dress in order to trade off of Corona Cigar’s goodwill and

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established reputation and pass off Defendants’ goods for those of Corona Cigar. As such, this is an exceptional case of trade dress infringement. 42.

Upon information and belief, Swedish Match has the power and capacity to

control Defendants’ actions and their use of the Cigars International Trade Dress, and knows or should know that the Cigars International Trade Dress infringes the Corona Cigar Trade Dress, and benefits directly from Defendants’ infringing actions. 43.

Upon information and belief, Keith Meier, the President of Cigars International,

has the power and capacity to control Defendants’ actions and knows or should know that the Cigars International Trade Dress infringes the Corona Cigar Trade Dress, and he benefits directly from Cigars International’s infringing actions. Upon further information and belief, Keith Meier intentionally induced Defendants to infringe the Corona Cigar Trade Dress and personally authorized and approved the Defendants’ infringing acts. 44.

Unless enjoined, Defendants’ continued infringement of the Corona Cigar Trade

Dress will cause irreparable injury to Corona Cigar. Corona Cigar has no adequate remedy at law. 45.

Corona Cigar has been harmed by Defendants’ conduct as alleged above in an

amount not yet known. COUNT III Unfair Competition under Florida Common Law 46.

Corona Cigar restates the allegations in Paragraphs 1 through 45, which are

incorporated herein by this reference. 47.

Defendants sell and offer for sale their products under a mark that is confusingly

similar to that of the Corona Cigar Mark, and, upon information and belief, intentionally promote 11

their products in a manner likely to deceive the consuming public as to the sponsorship, affiliation or association between Corona Cigar and Defendants. 48.

Defendants’ acts constitute unfair competition in violation of the common law of

the State of Florida. 49.

Upon information and belief, Defendants’ acts of unfair competition are willful

and wanton, as well as intentional and malicious. 50.

The injury to Corona Cigar is irreparable. An award of monetary damages alone

cannot fully compensate Corona Cigar for its injuries, and Corona Cigar lacks an adequate remedy at law. 51.

Corona Cigar has been harmed by Defendants’ conduct as alleged above in an

amount not yet known. WHEREFORE, Corona Cigar requests this Court to award the following relief in its favor against Defendants: a. A permanent injunction against the acts of trademark infringement and unfair competition by Defendants; b. An order canceling Registration No. 3,535,112 for the mark CU-AVANA INTENSO; c. Damages adequate to compensate Corona Cigar for the damage it suffered as a result of Defendants’ acts; d. An accounting and disgorgement of profits derived by Defendants; e. Treble damages and profits; f. Prejudgment interest; g. Reasonable attorney’s fees, costs and expenses of this lawsuit; 12

h. Punitive damages; i. Destruction of the infringing articles and promotional materials; and j. Such other and further relief as this Court deems just and proper. JURY TRIAL REQUEST Plaintiff Corona Cigar Company requests a trial by jury as to all matters so triable. Respectfully submitted May 6, 2009. /s/Ava K. Doppelt Ava K. Doppelt Florida Bar No: 393738 Allison R. Imber Florida Bar No: 44233 ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A. 255 South Orange Avenue, Suite 1401 Orlando, Florida 32801 Tel. (407) 841-2330 Fax: (407) 841-2343 Email: [email protected] [email protected] CERTIFICATE OF FILING I HEREBY CERTIFY that on May 6, 2009, I presented the foregoing to the Clerk of the Court for filing and uploading to the Case Management/Electronic Case Filing (“CM/ECF”) system. /s/Ava K. Doppelt

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