Show Temp - pl-13

Case 2:23-cv-02381-JP Document 1 Filed 06/21/23 Page 1 of 157
UNITED STATES DISTRICT COURT FOR THE

EASTERN DISTRICT OF PENNSYLVANIA
TINDER BOX INTERNATIONAL, LTD., :

:
:
Plaintiff, :
:
v. : CIVIL ACTION
: NO. 2:23-cv-02381
WALDORF CIGAR BAR AND :
LOUNGE, LLC; MANJOTH RAJ SINGH; :
and SUMIT GUPTA :
:
Defendants. :
INTRODUCTION
1. Tinder Box International, Ltd. is the national franchisor of Tinder Box® franchises,
which offer retail stores and carts specializing in the sale of “Tinder Box” private label tobacco
products and accessories. Defendants are former franchisees who are subject to post-term
obligations pursuant to their Franchise Agreement and continue to operate a business that
competes with Plaintiff and its franchisees. Defendants also continue to use Plaintiff’s
trademarks after the expiration of their Franchise Agreement and continue to use Plaintiff’s
business system and bargained for location to market and run a competing business. Tinder
Box International, Ltd. commences this action to enforce its rights and protect its valuable
trademarks by seeking an injunction that enjoins Defendants from operating a competing
business and using Tinder Box’s trademarks in the operation of a competing business.
PARTIES
2. Plaintiff, Tinder Box International, Ltd. (“Plaintiff” or “TBI”) is a California
corporation with its principal place of business located at 391 W. Lancaster Avenue,
Haverford, Pennsylvania 19041.
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3. At all times referred to herein, TBI has engaged in business as a national franchisor
of Tinder Box franchises, which offer retail stores and carts specializing in the sale of “Tinder
Box” private label tobacco products and accessories under the mark “The Tinder Box.”
4. Defendant, Waldorf Cigar Bar and Lounge, LLC (“Waldorf”), is a Maryland
Limited Liability Company with its principal place of business located at 2754 Crain Highway,
Waldorf, Maryland 20601. (the “Premises”).
5. Defendant, Manjoth Raj Singh (“Singh”), is a citizen and resident of New Castle
County, Delaware with an address of 13 Pheasants Ridge North, Wilmington, Delaware 19087.
6. Defendant, Sumit Gupta (“Gupta”), is a citizen and resident of New Castle County,
Delaware with an address of 120 Juneberry Court, Hockessin, Delaware 19707. Collectively,
Waldorf, Singh, and Gupta are “Defendants.”
7. Defendants operated their Tinder Box franchise at the Premises and within the area
extending from St. Charles (a) ten miles south and east, (b) west to the Potomac River, and (c)
north to Route 244, North of Alexandra as depicted in Exhibit A of the Franchise Agreement
(the “Franchisee Territory”). Defendants continue to operate a competing business at the same
location and within the same territory that the Defendants operated the Franchised Business,
selling the same product offerings, with the same employees, and mostly the same customers.
JURISDICTION AND VENUE
8. The Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338
in that Plaintiff’s claims against Defendants are based upon trademark and trade dress
infringement under the Lanham Act, 15 U.S.C. § 1501, et seq.
9. The Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338
in that Plaintiff’s claims against Defendants are based upon trademark and trade dress
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infringement under the Lanham Act, 15 U.S.C. § 1501, et seq.
10. The Court also has diversity jurisdiction pursuant to 28 U.S.C. § 1332 in that
Plaintiff’s amount in controversy for claims involving breach of contract and trademark
infringement against Defendants exceed the sum or value of $75,000 and is between citizens
of different States as evidenced by the parties in this case pursuant to 28 U.S.C. § 1332 (a).
11. Purusant to Section 15(C) of the Franchise Agreement, the parties agreed that the
proper Venue for any action arising out of or under this agreement shall be brought in the
Federal Court of the United States District Court for the Eastern District of Pennsylvania.
12. Choice of Law for this action shall be governed by, interpreted and construed under
the law of the state in which TBI’s principal place of business is located. Franchisor’s principal
place of business is located in Haverford, Pennsylvania.
TBI’S TRADEMARKS
13. TBI is the licensor of trademarks registered at the United States Patent and
Trademark Office on the Principal Register, including the following (the “Marks”):
14. TBI a unique and distinctive system relating to the establishment and operation of
retail stores and carts specializing in the sale of “Tinder Box” private label tobacco products
and accessories that include the Marks, know-how relating to “Tinder Box” products and
services, advertising, marketing, sales techniques, and training programs (the “System”).
15. TBI and franchisees are licensed to use the Marks to operate under Tinder Box’s
System pursuant to the terms and conditions of the Franchise Agreement entered into by each
franchisee. TBI’s franchisees are also licensed to use Tinder Box’s procedures, standards, and
specifications for operation, all of which are disclosed to Tinder Box franchisees in confidence.
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BACKGROUND
16. On February 12, 1998, TBI and Jeffrey Lustig (“Lustig”) executed a Franchise
Agreement, pursuant to which Lustig and his company, Von Lustig, LLC, obtained the right
and undertook the obligation to operate a Tinder Box franchise (the “Franchised Business”)
for an initial term of ten (10) years with the option to renew for three (3) additional consecutive
terms for five (5) years in the Franchise Territory (the “Franchise Agreement”). A true and
correct copy of the Franchise Agreement is attached as “Exhibit A.”
17. On December 7, 2014, TBI and Defendants entered into a Consent to Transfer and
Release Agreement (the “CTRA”), pursuant to which the Franchise Agreement was assigned
by Lustig and his company Von Lusting, LLC to Defendants. Defendants assumed all of the
obligations, assignments, commitments, duties, and liabilities under the Franchise Agreement.
Specifically, Defendants acquired the right and undertook the obligation to own and operate
the Franchised Business located at the Premises. A true and correct copy of the CTRA is
attached as “Exhibit B.”
18. On December 7, 2014, Defendants entered into a Personal Guaranty of the
Franchised Business, pursuant to which they agreed to be personally bound by and personally
liable for all of the covenants, duties, obligations, and liabilities in connection with the
Franchised Business under the Franchise Agreement (the “Guaranty”). A true and correct copy
of Guaranty is attached as “Exhibit C.”
19. On February 7, 2018, TBI sent a letter acknowledging a renewal of the Franchise
Agreement for an additional term of five (5) years, and further acknowledge that the expiration
date for the Franchise Agreement would thereinafter be February 11, 2023 (the “Notice of
Renewal”). A true and correct copy of the Notice of Renewal is attached as “Exhibit D.”
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FRANCHISE AGREEMENT
20. Defendants have agreed to abide by and comply with the non-compete provision,
pursuant to Section 18 (C) of the Franchise Agreement.
21. In relevant part, the non-compete provision reads:
Franchisee covenants that, except as otherwise approved in writing

by Franchisor, Franchisee shall not, for a continuous uninterrupted
period commencing upon the expiration or termination of this
Agreement (regardless of the cause for termination) and continuing
for one (1) year thereafter, either directly or indirectly, for itself, or
through, on behalf of, or in conjunction with any person, persons,
partnership, or corporation, own, maintain, operate, engage in,
provide assistance to, or have any interest in any business which
offers goods or services which are the same as or similar to any of
the goods and services offered by Franchisee or by other stores
under the System, including but not limited to tobacco products,
coffee/espresso products, pipes, smokers’ accessories and supplies,
gifts and collectibles, or any of such products, and which business
is, or is intended to be, located within a twenty-five (25) mile radius
of the Approved Location, or otherwise engage in unfair
competition with Franchisor.
See “Exhibit A” at § 18 (C).
22. In addition, Defendants have agreed to abide by and comply with the post term
obligations upon expiration, pursuant to Section 17 of the Franchise Agreement.
23. In relevant part, the post-term obligations upon expiration are as follows:
• Immediately and permanently cease use of any confidential methods,
procedures and techniques associated with the System, Proprietary Marks, and
distinctive forms, slogans, signs, symbols, and devices associated with the System,
in any manner or for any purpose, pursuant to Section 17(B) of the Franchise
Agreement;
• Assign to TBI any interest which Defendants have in any lease or sublease
for the premises of the Franchised Business, as well as its rights to the telephone
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numbers used by the Franchised Business; pursuant to Section 17(C) of the
Franchise Agreement;
• Deliver to TBI all manuals, including the Manual, and all other records,
correspondence, and instructions containing confidential information or
information relating to the operation of the Franchised Business, all of which are
acknowledged to be the property of the TBI, with Defendants to retain no copy or
record of the foregoing, pursuant to Section 17(D) of the Franchise Agreement
• Comply with the covenants contained in Section 18(C) of the Franchise
Agreement, pursuant to Section 17(J) of the Franchise Agreement.
See “Exhibit A” at § 17.
24. Lastly, pursuant to Section 18(G) of the Franchise Agreement, “in the event that
Franchisee violates any covenant contained in Section 18, Franchisee must pay Franchisor
liquidated damages for each month or part thereof during which such violation occurs in an
amount equal to the greater of $1,000 or 6% of the Franchisee’s Gross Sales during the full
calendar month immediately preceding the date of the termination or expiration of this
Agreement, or 5% of the Franchisee’s Gross Sales during the full twelve consecutive month
period immediately preceding the date of the termination or expiration of this Agreement.”
ROYALTIES
25. Purusant to Section V(B) of the Franchise Agreement, Defendants are required to
pay TBI a monthly Royalty in the amount equal to the percentage of the Franchisee’s Gross
Sales, as defined in Section V(E) of the Franchise Agreement, which is indicated in Section
I(G)(2) of the Franchise Agreement.
26. Purusant to Section I(G)(2) of the Franchise Agreement, Defendants are required
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to pay a monthly Royalty of 4% of the Franchisee’s Gross Sales.
27. Purusant to Section 5(E) of the Franchise Agreement, Gross Sales is defined as “all
revenue derived from Franchisee from the sale of all services and products and all other income
of every kind and nature related in any way to the Franchised Business, whether for cash or
credit (and regardless of collection in the case of credit) and whether or not such sales are made
at or by the Store, including but not limited to catalog or mail order sales, internet sales (or the
like), sales to restaurants, clubs, hotels and alike, and corporate gifts; provided, however, that
Franchisee may deduct any sales taxes or other taxes collected from customers by Franchisee
and paid directly to the appropriate taxing authority from its Gross Sales for the month in which
such taxes were paid by Franchisee, provided that Franchisee provides Franchisor with copies
of tax reports and vendor invoices evidencing all such payments by Franchisee together with
any reports or states required with respect to such month under Section XII.B. hereof.”
28. As of the date of this Compliant, Defendants have failed to pay their monthly
Royalty of 4% of Gross Sales for the month of February, starting on February 1, 2023, and
ending on February 11, 2023, the expiration of their Franchise Agreement.
EXPIRATION OF FRANCHISE AGREEMENT
29. On January 18, 2023, TBI sent a letter to Defendants regarding the upcoming
expiration of the Franchise Agreement, the potential for renewal subject to several conditions
under 3(B) of the Franchise Agreement, and the explanation of post-term obligations in the
event Defendants determined not to renew their Franchise Agreement (the “Notice of
Expiration”). TBI did not receive a response by the requested date of January 23, 2023. A true
and correct copy of the Notice of Expiration is attached as “Exhibit E.”
30. Defendants Franchise Agreement expired on February 11, 2023.
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31. On March 2, 2023, Defendants and their legal counsel responded confirming receipt
of the January 18, 2023, letter acknowledging the expiration of the Franchise Agreement and
expressed their intent not to renew the Franchise Agreement (the “Notice of Non-Renewal”).
Defendants agreed to remove any and all signage, logos, trademarks, or other references to
TBI. Defendants also agreed to timely pay any remaining royalties or fees pursuant to the
Franchise Agreement. A true and correct copy of the Notice of Non-Renewal is attached as
“Exhibit F.”
32. TBI offered Defendants the option to renew the Franchise Agreement, as indicated
in “Exhibit E”, but Defendants refused to renew the Franchise Agreement.
33. On March 7, 2023, TBI subsequently responded to Defendants demanding
compliance with the non-compete and warning the continued operation of the Competing
Business in connection with their former Franchised Business, unauthorized use of Tinder
Box’s trademarks, and failure to comply with their post-term obligations was a violation of the
Franchise Agreement (the “Cease-and-Desist”). A true and correct copy of the Cease-and-
Desist is attached as “Exhibit G.”
34. Defendants continued to commit trademark infringement with the unauthorized use
of Tinder Box’s trademarks after Defendants received the Cease-and-Desist.
DEFENDANTS’ OPERATION OF THE COMPETING BUSINESS AND

USE OF TINDER BOX’S TRADEMARKS IN THE COMPETING BUSINESS
35. Plaintiff has become aware that Defendants were still operating their Franchised
Business after the expiration of their Franchise Agreement and continue to operate a competing
business under the confusingly similar name “The Box” (the “Competing Business”).
36. The Competing Business operates at the same location and within the same territory
that the Defendants operated the Franchised Business, selling the same product offerings,
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including Plaintiff’s proprietary cigars and tobacco blends, with the same employees, and
mostly the same customers.
37. The Competing Business has and continues to use Plaintiff’s trademarks in their
operations, following the expiration of the Franchise Agreement.
38. On March 17, 2023, more than a month after the expiration of the Franchise
Agreement, Defendants utilized their Facebook Page to announce that they were changing their
name to The Box. This announcement is likely to confuse consumers that TBI changed their
name to The Box. Defendants’ failure to specifically announce that they were no longer part
of The Tinder Box® System is proof of their intent to continue to trade off their former
association with Plaintiff as a franchisee and Plaintiff’s Marks. As of the date of this
Complaint, Defendants are still referring to themselves as “Tinder Box” when they answer the
phones for the Competing Business, and they refer to themselves as “formerly Tinder Box” on
their Facebook Page.
39. Defendants have maintained the same Facebook Page with status updates and
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photographs from their time as a Franchised Business. Defendants’ failure to change their
Facebook Page is likely to confuse consumers into thinking that Defendants are still associated
with The Tinder Box® System. This is further evidence of Defendants’ intent to trade off their
former association with Plaintiff as a franchisee and Plaintiff’s Marks.
40. The Facebook Page was formerly titled The Tinder Box Waldorf MD and is now
titled The Box Waldorf MD. The Facebook Page is likely to cause confusion among consumers
looking for Tinder Box because Defendants are using Tinder Box’s Marks to re-direct
consumer to the Competing Business, including an updated cover photo with the Competing
Business name and logo merely placed over the Franchised Business outdoor sign:
41. Moreover, following the expiration of the Franchise Agreement, Defendants have
and continued to use the distinctive slogans, symbols, and signage associated with the System.
For instance, Defendants merely removed the word Tinder from Tinder Box on their signage
on the outside of the store and blacked out the name Tinder from Tinder Box on their stickers,
but customers can still see the full name Tinder Box, as indicated below.
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42. Another example of the Competing Business using similar Marks that will likely
cause confusion among consumers is their new, but unofficial business name. The Competing
Business’ name, The Box, is similar to the Franchised Businesses’ name, Tinder Box. As a
former franchise, using nearly identical words in the same arrangement is likely to cause
confusion among repeat consumers who previously knew the Franchised Business as a Tinder
Box and/or prospective consumer who are currently looking for a Tinder Box.
43. Defendants are also in violation of the post-term obligations upon expiration,
pursuant to Section 17 of the Franchise Agreement.
44. Defendants have failed to cease using the confidential methods, procedures, and
techniques associated with the System, Proprietary Marks, and distinctive slogans and symbols
on the inside of the store and the signage on the outside of the store associated with the System,
pursuant to Section 17(B) of the Franchise Agreement.
45. Defendants have failed to assign their rights to the telephone numbers used by the
Franchised Business, pursuant to Section 17(D) of the Franchise Agreement.
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46. Defendants have failed to deliver all manuals and all other records, correspondence,
and instructions containing confidential information or information relating to the operation of
the Franchised Business, pursuant to Section 17(I) of the Franchise Agreement.
47. Defendants have failed to comply with covenants contained in Section 18(C) of the
Franchise Agreement, pursuant to Section 17(J) of the Franchise Agreement.
48. Defendants did not respond and remain in operation of the Competing Business in
violation of their contractual obligations pursuant to Sections 17(J) and 18(C) of the Franchise
Agreement.
COUNT I
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
49. Plaintiff TBI incorporates by reference the facts set forth in paragraphs 1 through
42 above as though set forth at length herein.
50. Defendants have utilized and benefited from the Marks in operation of the
Competing Business without authorization from TBI.
51. Defendants willfully intended to trade on TBI’s reputation and cause dilution of the
marks.
52. Defendants are guilt of trademark infringement pursuant to the Lanham Act, 15
U.S.C. § 1051, et seq. Defendant’s usage of the marks constitutes a false designation of origin
and is likely to cause confusion, mistake, or deception as to it being affiliated, connected, or
associated with TBI in violation of 15 U.S.C. § 1125(a). Defendants’ conduct is also a violation
of the common law of unfair competition and is an unfair trade practice under common law.
53. Defendants continued operation of the Competing Business and use of trademarks
in the Competing Business as set forth above has cause and will cause TBI irreparable injury
in that consumers are being deceived by Defendants as a result of their continued use of TBI’s
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System and Marks; TBI will have difficulty franchising Defendants’ territory areas, which
includes the area TBI exclusively granted to Defendants; business will be diverted from TBI’s
Marks; TBI’s Marks will be diluted and taken from TBI’s control; and TBI will lose profits
and revenues which, because of Defendants’ conduct, cannot be readily calculated.
54. Plaintiff TBI has no adequate remedy at law because TBI cannot be adequately
compensated for the deprivation and dilution of the consumer recognition and goodwill built
under the marks as a result of Defendants’ conduct.
55. Plaintiff TBI’s immediate and irreparable harm will continue unless Defendants are
enjoined from continuing to use the Marks.
WHEREFORE, Plaintiff Tinder Box International, Ltd. demands judgement in its favor and
against Defendants as follows:
A. A preliminary and permanent injunction enjoining Defendants from
infringing on TBI’s trademarks in any manner whatsoever not licensed under the Franchise
Agreement;
B. An accounting of and judgement for the profits to which Plaintiff TBI may
be entitled as a result of Defendants’ infringement;
C. Treble damages pursuant to 15 U.S.C. § 1117(a);
D. Punitive Damages;
E. Attorneys’ fees and costs associated with this action pursuant to the
Franchise Agreement; and
F. Such further relief as this Court deems just and proper.
COUNT II
MISAPPROPRIATION OF TRADE SECRETS
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42 as though set forth at length herein.
57. Defendants continue to make use of TBI’s System and Marks through both their
online and physical presence.
58. It is because of TBI’s resources spent in educating Defendants in the System that
Defendants have the trade knowledge to continue operating the Competing Business.
59. Defendants knowingly used and continue to use TBI’s System and Marks for
economic benefit as they have operated and continue operating the Competing Business.
60. TBI is injured by Defendants’ actions by the way of dilution of the Marks and
Defendants continued use of TBI’s System.
WHEREFORE, Plaintiff Tinder Box International, Ltd. demands judgment in its favor and
A. A preliminary and permanent injunction enjoining Defendants from
utilizing any trade secrets of Plaintiff TBI in any manner whatsoever not licensed under
the Franchise Agreement;
B. An accounting of and judgement for the profits to which Plaintiff TBI may
be entitled as a result of Defendants’ infringement;
C. Punitive Damages;
D. Attorneys’ fees and costs associated with this action pursuant to the
E. Such further relief as this Court deems just and proper.
COUNT III
BREACH OF CONTRACT – OPERATION OF THE COMPETING BUSINESS
61. Plaintiff TBI incorporates by reference the facts set forth in paragraphs 1 though 42
above as though set forth at length herein.
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62. Defendants are former franchisees, subject to their non-compete provision pursuant
to Section 18(C) of the Franchise Agreement. The Franchise Agreement has expired, it was
not renewed, and is otherwise ended.
63. Defendants are engaged in the operation of the Competing Business within the
same territory and at the same location that the Defendants operated the Franchised Business,
selling the same product offerings, with the same employees, and mostly the same customers.
64. The acts, practices, and conduct of Defendants in the operation of the Competing
Business constitutes a material breach of the Franchise Agreement and constitutes a misuse of
confidential information, Marks, and System. Further, Defendants continued use of the
confidential information, Marks, and Systems without Franchisors approval and ability to
enforce its standards damages TBI’s goodwill.
65. Plaintiff TBI has been and will continue to be irreparably harmed by Defendants’
operation of the Competing Business.
66. Despite Plaintiff TBI’s demand to comply with the non-compete provision,
Defendants continue to operate the Competing Business.
A. A preliminary and permanent injunction enjoining Defendants for a period
of one (1) year after the date of compliance with the court order from either directly or
indirectly, for itself, or through, on behalf of, or in conjunction with any person, persons,
partnership, or corporation, own, maintain, operate, engage in, provide assistance to, or
have any interest in any business which offers goods or services which are the same as or
similar to any of the goods and services offered by Franchisor or by other stores under the
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System, including but not limited to tobacco products, coffee/espresso products, pipes,
smokers’ accessories and supplies, gifts and collectibles, or any such products, and which
business is, or is intended to be, located within a twenty-five (25) mile radius of the
Premises, or otherwise engage in unfair competition with Franchisor.
B. Partial damages in the form of liquidated damages pursuant to Section
18(G) of the Franchise Agreement because even though the irreparable harm caused by
Defendants cannot be measured accurately in a dollar amount, at least it will provide some
monetary value to Plaintiff TBI for the breach of contract and non-compete covenant.
C. Attorneys’ fees and costs associated with this action pursuant to the
D. Such further relief as this Court deems just and proper.
COUNT IV
BREACH OF CONTRACT – VIOLATION OF THE POST TERM OBLIGATIONS
42 above as though set forth at length therein.
68. Defendants are former franchisees, subject to their post-term obligations pursuant
to Section 17 of the Franchise Agreement. The Franchise Agreement has expired, it was not
renewed, and is otherwise ended.
69. Defendants have failed to comply with several of their post-term obligations
pursuant to Section 17 of the Franchise Agreement, despite numerous requests for compliance.
70. Defendants have failed to cease using the confidential methods, procedures, and
techniques associated with the System, Proprietary Marks, and distinctive slogans, symbols,
and signage associated with the System, pursuant to Section 17(B) of the Franchise Agreement.
71. Defendants have failed to assign their right to the telephone numbers used by the
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Franchised Business, pursuant to Section 17(D) of the Franchise Agreement.
72. Defendants have failed to deliver all manuals and all other records, correspondence,
and instructions containing confidential information or information relating to the operation of
the Franchised Business, pursuant to Section 17(I) of the Franchise Agreement.
73. Defendants have failed to comply with covenants contained in Section 18(C) of the
Franchise Agreement, pursuant to Section 17(J) of the Franchise Agreement.
74. The acts, practices, and conduct of Defendants in failing to comply with post-term
obligations constitute a material breach of the Franchise Agreement and constitutes a misuse
of the confidential information, Marks, and System.
75. Plaintiff TBI has been and will continue to be irreparably harmed by Defendants’
continued violation of the post-term obligations of the Franchise Agreement.
76. Despite Plaintiff TBI’s demand to comply with the post-term obligations,
Defendants have refused to do so.
A. A preliminary and permanent injunction enjoining Defendants to cease
using the System, Marks, and distinctive slogans, symbols, and signage associated with the
System; assign all telephone numbers and deliver all manuals or confidential documents to
Franchisor.
B. Attorneys’ fees and costs associated with this action pursuant to the
C. Such further relief as this Court deems just and proper.
COUNT IV
BREACH OF CONTRACT – ACCOUNTING AND UNPAID ROYALTIES
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42 above as though set forth at length therein.
78. Defendants failed to pay TBI Royalties of 4% of Gross Sales for the month of
February, starting on February 1, 2023, and ending on February 11, 2023.
79. The number of Gross Sales which Defendants have derived is within possession,
custody, and control of Defendants, and, thus, an element of TBI’s measure of damages is
peculiarly in knowledge of Defendants and TBI requires an accounting of Defendant’s profits
to determine the amount of unpaid royalties pursuant to proper accounting measures at trial.
80. As a direct and proximate result of the Defendant’s breach of Sections V(B), V(E),
and I(G)(2) of the Franchise Agreement, TBI has been damaged as a result of Defendants
failure to pay Royalties of 4% of Gross Sales for the month of February.
A. Damages in the amount of 4% of Gross Sales for the month of February pursuant to the
accounting, together with pre-judgement and post-judgement interest;
B. Attorneys’ fees and costs associated with this action pursuant to the
C. Such further relief as this Court deems just and proper.
Date: June 19, 2023
By: /s/Christopher B. Alexander
Attorney(s) for Plaintiff

Tinder Box International Ltd.
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EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT D
EXHIBIT E
EXHIBIT F
EXHIBIT G
March 10, 2023
Via Email and UPS Overnight Mail

Mr. Mark Dycio, Esquire
Dycio & Biggs
10533 Main Street
Fairfax, Virginia 22030
mdycio@dyciolaw.com
Re: NOTICE OF UNLAWFUL TRADEMARK INFRINGEMENT, UNFAIR

COMPETITION AND VIOLATION OF POST-TERM OBLIGATIONS UNDER
THE FRANCHISE AGREEMENT
Dear Mr. Dycio:
As you are aware, this firm represents Tinder Box International, Ltd. (“TBI”). I am in
receipt of your letter dated March 2, 2023, in which you indicated that your clients Manjoth Raj
Singh, Sumit Gupta, and Waldorf Cigar Bar & Lounge, LLC (collectively, “Waldorf”), have
elected not to renew their Franchise Agreement with TBI. Accordingly, as confirmed in your
previous letter, the Franchise Agreement expired as of February 11, 2023.
Please be advised that TBI has recently learned that your clients have continued to
operate their former franchised business located at 2754 Crain Hwy, Waldorf, MD 20601 (the
“Premises”) using TBI’s federally registered trademarks (the “Proprietary Marks”) and trade
dress, and selling TBI’s proprietary tobacco products.
The purpose of this notice is to: (i) inform you that your clients’ continued use of
TBI’s Proprietary Marks, including but not limited to on its exterior signage at the
Premises, on products sold at the Premises and in their self-identification to customers
who call or otherwise visit the Premises, constitutes trademark infringement under the
Lanham Act, unfair competition, and a material default of your client’s post-term
obligations under Section 17 of the Franchise Agreement, including the post-term non-
competition covenant, and (ii) demand that your clients immediately cease and desist from
any and all use of TBI’s trademarks, service marks, trade dress and proprietary
information, and comply immediately with all of their post-term obligations under the
Franchise Agreement, including the non-competition covenant. TBI is prepared to
commence legal action against your client.
Background
On or about February 12, 1998, Jeffrey Lustig executed a franchise agreement with TBI
(the “Franchise Agreement”) pursuant to which Lustig and his company, Von Lustig, LLC
obtained the right and undertook the obligation to operate a Tinder Box retail store for a term
of 10 years (the “Franchised Business”) in or around Waldorf, Maryland.
On or about December 7, 2014, pursuant to a Consent to Transfer and Release

Agreement, the Franchise Agreement was assigned to your clients, Waldorf Cigar Bar and
Lounge, LLC, and your clients assumed all of the obligations, assignments, commitments,
duties and liabilities under the Franchise Agreement.
Additionally, Mr. Singh and Ms. Gupta signed a form of personal guaranty (the
“Personal Guaranty”), pursuant to which Mr. Singh and Ms. Gupta agreed to be personally
bound by, as well as personally liable for, all of the covenants, duties, obligations, and liabilities
in connection with the Franchised Business under the Franchise Agreement.
On or around February 7, 2018, Waldorf sent a letter acknowledging a renewal of the

Franchise Agreement for an additional term of five (5) years, and further acknowledged that the
expiration date for the Franchise Agreement would thereinafter be February 11, 2023.
On March 2, 2023, you sent notice that Waldorf has elected not to renew its Franchise
Agreement with TBI. Accordingly, the Franchise Agreement expired on February 11, 2023.
Post-Term Obligations under the Franchise Agreement
Pursuant to Section 17 of the Franchise Agreement, upon the expiration of the Franchise
Agreement, Waldorf agreed to undertake the following actions, among others:
1. Immediately cease all operations under the Franchise Agreement and cease,
directly or indirectly, holding or representing itself out to the public as a present or
former franchisee of TBI;
2. Immediately and permanently cease use of any (a) confidential methods,

procedures and techniques associated with the System, (b) Proprietary Marks and
(c) distinctive forms, slogans, signs, symbols and devices associated with the
System, in any manner or for any purpose;
3. Take such action as may be necessary to cancel any assumed name or equivalent
registration which contains the mark “The Tinder Box,” the trade name “Tinder
Box” or any other service mark or trademark of TBI, along with furnishing TBI
with evidence satisfactory to TBI of compliance with this obligation within five (5)
days after the expiration of the Franchise Agreement;
4. Assign to TBI any interest which Waldorf has in any lease or sublease for the
premises of the Franchised Business, as well as its rights to the telephone numbers
used by the Franchised Business;
5. Immediately cease use of any reproduction, counterfeit, copy or colorable imitation

of the Proprietary Marks, which is likely to cause confusion, mistake, or deception,
or which is likely to dilute TBI’s rights in and to the Proprietary Marks, and not to
utilize any designation of origin or description or representation, which falsely
suggests or represents an association or connection with TBI constituting unfair

competition;
6. Promptly pay all sums owing to TBI and its subsidiaries and affiliates; and
7. Deliver to TBI all manuals, including the Manual, and all other records,
correspondence, and instructions containing confidential information, or
information relating to the operation of the Franchised Business, all of which are
acknowledged to be the property of the TBI, with Waldorf to retain no copy or
record of the foregoing.
Additionally, pursuant to Section 18(C) of the Franchise Agreement, your client agreed
not to operate a competitive business at the Premises for a period of one (1) year from the date
the Franchise Agreement expires.
Demand to Cure
Please be advised that TBI has learned that, as recently as March 5, 2023, Waldorf has
continued operating the former franchised business from the Premises using the Proprietary
Marks. Specifically, Waldorf (i) has failed to remove all “Tinder Box” signage from the exterior
of the Premises; (ii) has failed to remove all instances of “Tinder Box” signage from the interior
of the Premises; (iii) continues to offer for sale “Tinder Box”-branded tobacco products and
other products bearing TBI’s registered trademarks from the Premises; (iv) continues to
advertise itself online, and otherwise hold itself out to the public as, a Tinder Box franchised
business; and (v) continues to identify itself to those who call the business as a Tinder Box
franchised business. A sampling of photographs recently taken at the Premises is attached herein
as Exhibit “A.”
Please be advised that the above actions constitute trademark infringement,

unfair competition and a material default of the post-term obligations under the Franchise
Agreement. Accordingly, our client demands that Waldorf immediately cease operation
of the business and cease any and all use of the Proprietary Marks, as well as any other
mark, tagline or other indication of source that contains any of TBI’s Proprietary Marks,
including, without limitation, the phrase “Tinder Box,” or any confusingly similar marks.
Specifically, TBI demands that your clients immediately take the following actions
upon your receipt of this letter to cease and desist all use of the infringing Marks:
(i) remove any existing signage, displays, or other use of any Proprietary Mark or other
mark containing “Tinder Box” in any manner;
(ii) take the steps necessary to cease all other use of (a) the Proprietary Marks at the
Premises of the former franchised business, as well as (b) any other mark that is
confusingly similar to the Proprietary Marks, including any variation of a mark
containing the phrase “Tinder Box;”
(iii) cancel any pending filed fictious business marks, trade name, d/b/a filings, as well
as any building/construction permits and/or any other filing that has been filed in
connection with the Infringing Business or otherwise that contains the words
“Tinder Box;”
(iv) cancel the registration of any domain names, social media profiles, other web
presences or any other online website that contain the term “Tinder Box” in their
respective URLs and/or titles;
(v) Remove any and all content from any online website that displays, references or
otherwise uses any Proprietary Mark or the term “Tinder Box” -- including, without
limitation, on any photograph, video or other media displayed on, or linked to/from,
such online websites;
(vi) Comply with the post-term non-competition covenant which restricts Waldorf, for
a period of one (1) year from the date the Franchise Agreement expired, from
owning, maintaining, operating, engaging in, providing assistance to, having any
interest in any business which offers goods or services which are the same or as
similar to any of the goods and services offered by Waldorf or by other stores under
the System, including but not limited to tobacco products, coffee/espresso products,
pipes, smokers’ accessories and supplies, gifts and collectibles, or any of such
products, and which business is, or is intended to be, located at the former
franchised business premises or within a twenty-five (25) mile radius of the
Franchised Business or any other Tinder Box Store in existence or under
construction at the time the Franchise Agreement expired; and
(vii) Provide photographs of the interior and exterior of the Tinder Box Store premises
demonstrating compliance with the foregoing on or before March 17, 2023.
If your clients fail to comply with the foregoing demands, our client is prepared to
take the necessary actions to enforce and protect its rights under the franchise agreement
and applicable law, including but not limited to, (1) filing a trademark infringement
action, (2) seeking a temporary and/or permanent injunction enjoining your clients’
continued infringement of TBI’s Proprietary Marks, and (3) filing any cause of action
which TBI may have against your clients, including for unfair competition and breach of
contract, among others.
Please also be advised that the enumeration of these certain material defaults under the
Franchise Agreement is not intended to be an exhaustive list and does not constitute a waiver
of any rights that the Franchisor has under the Franchise Agreement or applicable law. All such
rights are hereby expressly reserved.
If you have any questions concerning this matter, please do not hesitate to contact me
directly.
Very truly yours,

FISHER ZUCKER LLC
By: /s/Daniel Nussbaum____

Daniel Nussbaum
EXHIBIT “A”
PHOTOGRAPHS

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Case 2:23-cv-02381-JP Document 1 Filed 06/21/23 Page 1 of 157

UNITED STATES DISTRICT COURT FOR THE

TINDER BOX INTERNATIONAL, LTD., :

trademarks by seeking an injunction that enjoins Defendants from operating a competing

2. Plaintiff, Tinder Box International, Ltd. (“Plaintiff” or “TBI”) is a California

Haverford, Pennsylvania 19041.

4. Defendant, Waldorf Cigar Bar and Lounge, LLC (“Waldorf”), is a Maryland

Waldorf, Maryland 20601. (the “Premises”).

Waldorf, Singh, and Gupta are “Defendants.”

JURISDICTION AND VENUE

infringement under the Lanham Act, 15 U.S.C. § 1501, et seq.

infringement under the Lanham Act, 15 U.S.C. § 1501, et seq.

place of business is located in Haverford, Pennsylvania.

correct copy of the Franchise Agreement is attached as “Exhibit A.”

attached as “Exhibit B.”

18. On December 7, 2014, Defendants entered into a Personal Guaranty of the

of Guaranty is attached as “Exhibit C.”

pursuant to Section 18 (C) of the Franchise Agreement.

21. In relevant part, the non-compete provision reads:

Franchisee covenants that, except as otherwise approved in writing

See “Exhibit A” at § 18 (C).

obligations upon expiration, pursuant to Section 17 of the Franchise Agreement.

• Immediately and permanently cease use of any confidential methods,

numbers used by the Franchised Business; pursuant to Section 17(C) of the

correspondence, and instructions containing confidential information or

acknowledged to be the property of the TBI, with Defendants to retain no copy or

record of the foregoing, pursuant to Section 17(D) of the Franchise Agreement

• Comply with the covenants contained in Section 18(C) of the Franchise

Agreement, pursuant to Section 17(J) of the Franchise Agreement.

See “Exhibit A” at § 17.

I(G)(2) of the Franchise Agreement.

to pay a monthly Royalty of 4% of the Franchisee’s Gross Sales.

ending on February 11, 2023, the expiration of their Franchise Agreement.

EXPIRATION OF FRANCHISE AGREEMENT

and correct copy of the Notice of Expiration is attached as “Exhibit E.”

30. Defendants Franchise Agreement expired on February 11, 2023.

in “Exhibit E”, but Defendants refused to renew the Franchise Agreement.

33. On March 7, 2023, TBI subsequently responded to Defendants demanding

Desist is attached as “Exhibit G.”

of Tinder Box’s trademarks after Defendants received the Cease-and-Desist.

DEFENDANTS’ OPERATION OF THE COMPETING BUSINESS AND

mostly the same customers.

operations, following the expiration of the Franchise Agreement.

their Facebook Page.

former association with Plaintiff as a franchisee and Plaintiff’s Marks.

pursuant to Section 17 of the Franchise Agreement.

pursuant to Section 17(B) of the Franchise Agreement.

Franchised Business, pursuant to Section 17(D) of the Franchise Agreement.

and instructions containing confidential information or information relating to the operation of

the Franchised Business, pursuant to Section 17(I) of the Franchise Agreement.

Franchise Agreement, pursuant to Section 17(J) of the Franchise Agreement.

42 above as though set forth at length herein.

Competing Business without authorization from TBI.

and is likely to cause confusion, mistake, or deception as to it being affiliated, connected, or

and revenues which, because of Defendants’ conduct, cannot be readily calculated.

under the marks as a result of Defendants’ conduct.

enjoined from continuing to use the Marks.

against Defendants as follows:

A. A preliminary and permanent injunction enjoining Defendants from

be entitled as a result of Defendants’ infringement;

C. Treble damages pursuant to 15 U.S.C. § 1117(a);

Franchise Agreement; and