Case 0:23-cv-62373-WPD Document 1 Entered on FLSD Docket 12/19/2023 Page 1 of 11

THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

GURKHA CIGAR GROUP, INC., CASE NO:

Plaintiff,

v.

DAVIDOFF OF GENEVA USA, INC.,

Defendant.
________________________________/

COMPLAINT
Plaintiff, GURKHA CIGAR GROUP, INC., (“Plaintiff”) a Florida corporation, by and

through its undersigned counsel and pursuant to the Federal Rules of Civil Procedure sues

Defendant, DAVIDOFF OF GENEVA USA, INC., (“Defendant”) a Delaware corporation and

states:

INTRODUCTORY STATEMENT
1. K. Hansotia & Co., Inc. is the registered owner of the family of DRAGON

Trademarks as more fully set forth below. Plaintiff is the exclusive licensee of the mark and is

entitled to its exclusive use for the sale of tobacco products. Defendant’s unauthorized use of the

DRAGON mark to sell YEAR OF THE DRAGON cigars violates Plaintiff’s rights and must be

enjoined.

PARTIES, JURISDICTION AND VENUE

2. Plaintiff, GURKHA CIGAR GROUP, INC. is a Florida corporation with a principal

address of 6600 Hiatus Road Tamarac, FL 33321.

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3. Defendant, DAVIDOFF OF GENEVA USA, INC. is a Delaware corporation doing

business in Florida with a principal address of 3001 Gateway Centre Parkway, Pinellas Park, FL

33782.

4. The Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28

U.S.C. § 1338.

5. The Court has personal jurisdiction over the Defendant because it operates,

conducts, engages in or carries on a business or business venture or has an office or agency in the

State of Florida.

6. Venue is proper in this Court because all parties have offices in or conduct business

in Broward County, Florida.

ALLEGATIONS COMMON TO ALL COUNTS

A. Plaintiff is the exclusive licensee of the family of DRAGON Trademarks.

7. Plaintiff is the exclusive licensee of the family of DRAGON trademarks

incorporating the word “Dragon” for sale of tobacco and other products.

8. The pertinent registration details of the DRAGON family of marks (the “DRAGON

Trademarks”) includes:

GOODS & REGISTRATION REGISTRATION

MARK:
SERVICES: NO.: DATE:
DRAGON CIGARS 3597255 March 31, 2009
DRAGON FIRE CIGARS 3645702 June 30, 2009
DRAGONSLAYER CIGARS 3644717 June 23, 2009
IMPERIAL DRAGON CIGARS 3690021 September 29, 2009
RED DRAGON CIGARS 3690023 September 29, 2009
ROYAL DRAGON CIGARS 3690022 September 29, 2009
DRAGON LORD CIGARS 3674107 August 25, 2009

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9. The DRAGON Trademarks are used to identify Plaintiff's cigars. From the time

each of the Dragon Trademarks was registered to the present time, Plaintiff has actively and

thoroughly advertised its products under these trademarks throughout the United States.

10. Plaintiff's packaging prominently displays the DRAGON Trademarks.

Representative samples showing use of the DRAGON Trademarks are attached hereto as Exhibit

A.

11. In accordance with the provisions of 15 U.S.C. § 1111, Plaintiff's DRAGON

Trademarks, as affixed to the packages in which Plaintiff's products are sold, are accompanied by

a designation of registration, ®.

B. Plaintiff invested significant resources to market and sell YEAR OF THE DRAGON
cigars.

12. Beginning in June of 2023, Plaintiff began its plan to advertise and sell YEAR OF

THE DRAGON cigars to correspond with the Chinese lunar calendar.

13. Through considerable time, effort and capital, Plaintiff developed a product using

its exclusive DRAGON mark. In fact, Plaintiff began first selling Dragon cigars in or about 2007

and has continuously advertised, marketed and sold cigars bearing the Dragon Trademarks since

that time.

14. Plaintiff’s YEAR OF THE DRAGON cigars each come with distinctive red and

gold packaging depicting the image of a dragon with the words “Year of the Dragon” prominently

affixed.

15. On or about February 28, 2023, Plaintiff applied to register the YEAR OF THE

DRAGON trademark for cigars. Defendant opposed Plaintiff’s application to register the YEAR

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OF THE DRAGON Trademark by filing a Notice of Opposition on or about November 15, 2023,

under opposition number 91288234.

C. Defendant’s use of YEAR OF THE DRAGON violates Plaintiff’s valuable trademark

rights.

16. In or around July 8, 2023, Plaintiff learned that Defendant created a cigar product

with the imminent intent to sell the product under the name YEAR OF THE DRAGON in U.S.

commerce.

17. Plaintiff immediately defended its family of DRAGON Trademarks by contacting

Defendant and demanding that it cease marketing and sale of the infringing product.

18. Defendant refused, choosing instead to willfully violate Plaintiff’s trademark

rights. Defendant has actual knowledge of Plaintiff’s mark and Defendant’s infringement is

intentional.

19. Without Plaintiff’s consent, Defendant is also advertising, marketing and selling

cigars bearing the YEAR OF THE DRAGON mark which is confusingly similar to the Plaintiff’s

DRAGON Trademarks. Like Plaintiff’s YEAR OF THE DRAGON cigars, the Defendant’s Year

of the Dragon cigars are sold in red boxes prominently displaying a dragon image and the words

“Year of the Dragon.” Moreover, Defendant’s packaging displays the word DRAGON more

prominently than the more descriptive words “year of the.” Like Plaintiff’s cigars, Defendant’s

cigars also include red and gold cigar bands which depict the mark YEAR OF THE DRAGON

with a dragon image. Plaintiff’s and Defendant’s Year of the Dragon cigars are displayed side by

side for comparison here:

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20. Defendant’s use of the YEAR OF THE DRAGON mark to advertise, market and

sell its products has infringed and continues to infringe on Plaintiff's valuable trademark rights.

21. Defendant’s sale of YEAR OF THE DRAGON cigars is intended to deceive the

public and to fraudulently divert and secure the profits arising from Plaintiff's goodwill and its

extensive advertising of its DRAGON Trademarks, which the public has come to associate

exclusively with the products sold by Plaintiff.

22. All of Defendant’s acts are without the authority or consent of Plaintiff and are in

violation of Plaintiff's rights under the Trademark Act of 1946 (15 U.S.C. §§ 1051 et seq.).

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23. Defendant’s continuing infringement of Plaintiff's trademarks is causing

irreparable damage to Plaintiff's trade, business reputation, goodwill and profits. Such

infringement will continue to cause irreparable injury unless Defendant is restrained by this court.

24. Defendant’s trademark infringement will continue unless enjoined by this Court.

Pursuant to 15 U.S.C. § 1116, Plaintiff seeks a preliminary and permanent injunction against

further trademark infringement by Defendant.

25. Defendant’s acts of trademark infringement have damaged Plaintiff in an amount

to be determined at trial. Pursuant to 15 U.S.C. § 1117, Plaintiff is entitled to, among other things,

seek Defendant’s profits, actual damages, and costs of this action and such additional relief as may

be deemed appropriate and awarded by this Court.

26. Defendant’s acts of trademark infringement have been and continue to be deliberate

and willful and warrant an award of enhanced damages. Accordingly, Plaintiff is entitled to and

seeks a finding that this case is exceptional and warrants an award of treble damages and attorneys’

fees pursuant to 15 U.S.C. § 1117.

27. Plaintiff retained the undersigned law firm for representation and is obligated to

pay a reasonable fee for its legal services.

28. All conditions precedent to bringing this action have been performed, excused, or

waived.

COUNT I
Violation of the Lanham Act (15 USC 1114)
(DAMAGES)

29. This is an action for violation of the Lanham Act, 15 U.S.C. § 1114.

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30. Plaintiff repeats the allegations set forth in paragraphs 1-28 above as if fully set

forth herein.

31. Plaintiff owns the exclusive right to use the valid and legally protected DRAGON

Trademarks.

32. Without Plaintiff’s permission, the Defendant has used and is continuing to use the

Plaintiff’s valid and legally protected DRAGON Trademarks in connection with the sale, offering

for sale, distribution or advertising of Defendant’s infringing YEAR OF THE DRAGON cigars.

33. The Defendant’s unauthorized and improper use of Plaintiff’s valid and legally

protected DRAGON Trademarks in connection with the sale, offering for sale, distribution or

advertising of the Defendant’s infringing YEAR OF THE DRAGON cigars is likely to cause

confusion, mistake, or deception among consumers regarding the source of the cigars. Through

Defendant’s unauthorized and improper use of the DRAGON Trademarks, consumers are likely

to believe or be confused or misled that Defendant’s YEAR OF THE DRAGON cigars are

Plaintiff’s product.

34. The Plaintiff has suffered, is likely to suffer, and will continue to suffer loss or harm

caused by Defendant’s trademark infringement. This harm includes damages from lost sales, lost

profits, harm to reputation, and dilution of the distinctive quality of Plaintiff’s DRAGON

Trademarks.

WHEREFORE, Plaintiff demands judgment against Defendant for damages, including lost

profits and enhanced damages, interest, costs and attorneys’ fees, and for such other and further

relief as this Court deems just and proper.

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COUNT II
Violation of the Lanham Act (15 U.S.C. § 1125(a))
(INJUNCTIVE RELIEF)

35. This is a claim for injunctive relief pursuant to 15 U.S.C. § 1125(a).

36. Plaintiff repeats and re-alleges the allegations in paragraphs 1-28 as if fully set forth

herein.

37. Defendant, commencing in or around October 2023, has advertised and sold YEAR

OF THE DRAGON cigars, which is a simulation of Plaintiff's DRAGON Trademarks.

38. Defendant's use of the YEAR OF THE DRAGON mark intends to appropriate, and

has appropriated, the goodwill and reputation that Plaintiff has acquired for its products.

Defendant's use is intended to convey, and has conveyed, the false impression that its product is

affiliated with or sponsored by Plaintiff or that Defendant was affiliated with or sponsored by

Plaintiff.

39. Defendant's action has been undertaken with full knowledge of the rights of

Plaintiff, without any commercial necessity, and with a fraudulent and unfair intent and purpose.

40. The Defendant’s advertisement and sale of YEAR OF THE DRAGON cigars

constitutes an infringement of Plaintiff's DRAGON Trademarks and an unfair trading on Plaintiff's

goodwill and reputation by use of a mark which is likely to cause confusion and mistake and to

deceive purchasers as to its source or origin.

41. Plaintiff has been damaged by Defendant's acts which have caused injury to the

reputation of its DRAGON Trademarks.

42. Plaintiff has lost profits as a result of Defendant's acts. Members of the public have

purchased Defendant's product in the belief that it was sold or sponsored by Plaintiff, or that

Defendant was affiliated with or sponsored by Plaintiff.

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43. The damage suffered by Plaintiff is irreparable and will continue unless Defendant

is restrained by this court from the commission of the above-described acts.

44. Plaintiff is without adequate remedy at law in that the continuing nature of the

infringement and unfair competition will necessitate a multiplicity of suits to repair the injuries

Plaintiff will sustain unless the injunction sought is granted.

WHEREFORE, Plaintiff requests an injunction prohibiting Defendant from selling,

offering for sale, distribution or advertising any cigars bearing the YEAR OF THE DRAGON

mark and demands judgment against Defendant for attorneys’ fees and such other relief as may be

just and proper.

COUNT III
Common Law Trademark Infringement
(DAMAGES)

45. This is a claim for damages resulting from common law trademark infringement.

46. Plaintiff repeats and re-alleges the allegations in paragraphs 1-28 as if fully set forth

herein.

47. Plaintiff owns the DRAGON Trademarks and has rights to the DRAGON

Trademarks which predate Defendant’s use of YEAR OF THE DRAGON.

48. Defendant adopted the YEAR OF THE DRAGON name that is the same, or

confusingly similar to Plaintiff’s DRAGON Trademarks, such that consumers are likely to confuse

the two.

49. Plaintiff has been damaged by the acts of Defendant in an amount to be proven at

trial.

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WHEREFORE, Plaintiff, GURKHA CIGAR GROUP, INC. demands judgment against

Defendant, DAVIDOFF OF GENEVA USA, INC. for damages, including lost profits and

enhanced damages, interest and attorneys’ fees and such other relief as may be just and proper.

COUNT IV—DECLARATORY RELIEF

50. This is an action for declaratory relief pursuant to 22 U.S.C. § 2201 and is within

the subject matter jurisdiction of this Court.

51. Plaintiff restates the allegations set forth in paragraphs 1-28 above as if fully set

forth herein.

52. On or about February 28, 2023, Plaintiff applied to register the YEAR OF THE

DRAGON trademark for cigars.

53. Defendant opposed Plaintiff’s application to register the YEAR OF THE

DRAGON trademark by filing a Notice of Opposition on or about November 15, 2023, under

opposition number 91288234. According to Defendant’s opposition, Plaintiff’s application to

register the YEAR OF THE DRAGON trademark should be rejected because it fails to function

as a mark, is merely descriptive, and lacks priority.

54. Accordingly, there is an actual present controversy and genuine dispute between

Plaintiff and Defendant with adverse legal interests over whether Plaintiff’s application to register

the YEAR OF THE DRAGON for cigars should be granted.

55. The Court’s declaration is needed to determine the parties’ respective rights and

legal relations with respect to use of the YEAR OF THE DRAGON mark for cigars. This

controversy is real and not hypothetical or speculative and is of sufficient immediacy to warrant

the issuance of a declaratory judgment.

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56. Plaintiff has no adequate remedy at law.

WHEREFORE Plaintiff requests that this Honorable Court enter declaratory judgment

finding that Plaintiff is entitled to register its YEAR OF THE DRAGON trademark, that

Defendant’s opposition to that registration be overruled and rejected, and for such other and further

relief as this court deems just and proper.

JURY DEMAND

Plaintiff demands trial by jury for all claims so triable.

Dated: December 19, 2023.

Respectfully submitted,

EHRENSTEIN|SAGER
Attorneys for Plaintiff
2800 Ponce De Leon Blvd., Suite 1400
Coral Gables, Florida 33134
Telephone: (305) 503-5930

By:/s/_Michael D. Ehrenstein___
Michael Ehrenstein, Esq.
Florida Bar No.: 857378
Mike@ehrensteinsager.com
Latasha N. Johnson, Esq.
Florida Bar No.: 81970
Latasaha@ehrensteinsager.com

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