Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA164841
`ESTTA Tracking number:
`09/25/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92047974
`Defendant
`Fuente Marketing Ltd.
`Virginia L. Carron
`Finnegan, Henderson, Farabow, et al
`1300 I St., NW, Floor 6
`Washington, DC 20005-3315
`UNITED STATES
`Motion to Suspend for Civil Action
`Virginia L. Carron
`Virginia.Carron@finnegan.com, docketing@finnegan.com
`/Virginia L. Carron/
`09/25/2007
`Fuente's motion to suspend cancellation re X reg.pdf ( 4 pages )(20161 bytes )
`Exhibits to Motion to Suspend.pdf ( 95 pages )(1429631 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`K. HANSOTIA & CO., INC.
`
`Cancellation No. 92047974
`
`Petitioner,
`
`v.
`
`FUENTE MARKETING LTD.
`
`Mark: X
`
`Reg. No. 3,254,146
`Issued: June 19, 2007
`
`Registrant.
`
`
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Registrant, Fuente Marketing Ltd. (“Fuente”), through its counsel, hereby moves
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`pursuant to Trademark Rule 2.117(a), for suspension of all proceedings before the
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`Trademark Trial and Appeal Board in the above-mentioned cancellation proceeding until
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`termination of the present civil action between the parties.
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`In support of its motion, Registrant submits a copy of the Declaratory Judgment
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`Complaint filed by Petitioner K. Hansotia & Co., Inc. against Registrant Fuente on
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`June 22, 2007, in the United States District Court for the Southern District of Florida,
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`Miami Division identified as Civil Action No. 07—21611—CIV—KING/GARBER (the “District
`
`Court Action”) (a copy of which is attached hereto as Exhibit A).
`
`In addition, Fuente
`
`submits a copy of Fuente’s Answer and Counterclaims against Petitioner filed in the
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`same action (Exhibit B hereto). Fuente also submits a copy of Petitioner’s Answer to
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`Fuente’s Counterclaims filed September 6, 2007, in the District Court Action (Exhibit C
`
`hereto).
`
`

`
`Cancellation No. 92047974
`
`in the District Court Action, Fuente asserts allegations of trademark infringement,
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`trade dress infringement, dilution and unfair competition against Petitioner K. Hansotia
`
`& Co., Inc. based upon Petitioner’s use of the marks X and the crossed sword X mark.
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`Fuente has asserted infringement of U.S. Registration No. 3,254,146 for the mark X, the
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`same registration subject to this cancellation proceeding.
`
`in its Answer to Fuente’s
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`Counterclaims, Petitioner K. Hansotia & Co. Inc. asserts that Fuente does not have
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`trademark rights in the X mark that is subject to this proceeding. Accordingly, the
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`District Court Action will be determinative of the proceeding before the Board.
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`In view of the fact that this pending civil action involves overlapping issues with
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`this proceeding, Registrant respectfully requests suspension of all proceedings pending
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`a final determination of the civil action pursuant to Trademark Rule 2.117(a) and TBMP
`
`§ 510.02(a).
`
`The Board does not usually require that the issues be joined before it will
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`suspend the Board proceeding pending the outcome of another proceeding. Other
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`Telephone Co. v. Connecticut National Telephone Co., 181 U.S.P.Q. 125 (TTAB 1974).
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`Such a requirement is usually made only in those cases where it is not possible for the
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`Board to determine whether the final determination of the other proceeding will have a
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`bearing on the issues before the Board.
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`In this matter, the same issues plead by
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`Petitioner in this proceeding have been joined in the District Court Action (see Exhibits
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`B and C hereto), and it is apparent thereby that the District Court Action will have a
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`bearing on the issues before the Board.
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`In addition, the District Court Action has been
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`scheduled for trial in April of 2008, so the delay in this proceeding will be relatively short
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`(the District Court’s Scheduling Order is attached hereto as Exhibit D). However, if the
`
`

`
`Cancellation No. 92047974
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`Board wishes for the issues before the Board to be joined, Registrants requests that the
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`Board extend the deadline for Registrant to answer or otherwise plead until thirty (30)
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`days after it rules on this motion for suspension.
`
`Dated: September 25, 2007
`
`Respectfully submitted,
`
`/Virginia L. Carron/
`Virginia L. Carron
`Laurence R. Hefter
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue NW
`
`Washington, D.C. 20001-4413
`(404) 653-6452
`
`ATTORNEYS FOR REGISTRANT FUENTE
`
`MARKETING LTD.
`
`

`
`Cancellation No. 92047974
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and accurate copy of the foregoing MOTION FOR
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`SUSPENSION OF THE PROCEEDINGS was served via first class postage paid U.S.
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`mail, the 25th day of September 2007, upon counsel for Petitioner K. Hansotia & Co.,
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`Inc. at the following address:
`
`Pablo Meles
`
`Akerman Senterfitt
`
`222 Lakeview Avenue, Suite 400
`P.O. Box 3188
`
`West Palm Beach, Florida 33402-3188
`
`/Virginia L. Carron/
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`K. HANSOTIA & CO., INC.
`
`Cancellation No. 92047974
`
`Petitioner,
`
`v.
`
`FUENTE MARKETING LTD.
`
`Mark: X
`
`Reg. No. 3,254,146
`Issued: June 19, 2007
`
`Registrant.
`
`
`EXhibitA
`
`

`
`Case ‘E :O7’—cv—21§‘Et—dLK Document "3
`
`Entered on FLSD Docket ()6/'22./’20{37
`
`Page 1 of 11
`
`IN THE UNITED STATES DISTRICT COURT FOR
`THE SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`BEACH CIGAR GROUP, INC.
`a Florida corporation, and
`
`K. HANSONTIA&CO., INC.,
`
`a Florida corporation
`
`vs.
`
`Plaintiffs,
`
`,
`FUENT CIGAR, LTD., 21 foreign
`corporation and FUENTE MARKETING,
`LTD., a foreign corporation,
`
`Defendants.
`
`/
`
`CASE NO.:
`
`0 7 - 2 ]_ 6 1 ]_
`
`Sf‘; __
`
`MAGISTRATE JUDGE
`GARBER A
`
`C r‘
`
`:3 .<‘-
`
`.
`
`.
`’;'
`— F I
`
`I
`
`,
`
`-r
`
`sue
`
`COMPLAINT
`Plaintiff, BEACH CIGAR GROUP,
`INC. and K. HANSONTIA &
`
`Defendants, FUENTE CIGAR, LTD. and FUENTE MARKETING, LTD., and allege as follows:
`
`Parties, Jurisdiction and Venue
`
`This is an action for declaratory relief.
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`At all times material to this action, Plaintiff, BEACH CIGAR GROUP, INC. was
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`1.
`
`2.
`
`a Florida corporation organized and existing under the laws of the State of Florida and doing
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`business in and about and the United States with principal place of business in Miami, Florida.
`
`3.
`
`At all times material to this action, Plaintiff, K. HANSONTIA & C0,, INC. was a
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`Florida corporation organized and existing under the laws of the State of Florida and doing
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`business in and about and the United States with principal place of business in Miami, Florida.
`
`4.
`
`K. HANSONTIA & CO., INC. is the owner of the federally registered trademark
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`“Gurkha.” K. HANSONTIA & CO., H\IC. permits Plaintiff BEACH CIGAR GROUP to
`
`{AJL\0OO58046.l }
`
`HALL, LAMB AND HALL, P.A., PENTHOUSE, I428 BRICKELL AVENUE, MIAMI, FLORIDA 33l3|-349l -TEL. (305) 374-5030 -FAX (305) 374-5033
`
`

`
`Case ‘E :G?“CV“21§11'x§Li< Document "3
`
`Entered on FLSD Becket ()6/'22./’20{37
`
`Page 2 of 11
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`manufacture and sell cigars using the Gurkha mark.
`
`(Plaintiffs are collectively referred to herein
`
`as “BEACH”).
`
`5.
`
`At all times material to this action, Defendant, FUENTE CIGAR, LTD. was a
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`Turks and Caicos Islands corporation doing business in and about the State of Florida and
`
`throughout the United States.
`
`6.
`
`At all times material to this action, Defendant, FUENTE MARKETING, LTD.
`
`was a British Virgin Islands corporation doing business in and about the State of Florida and
`
`throughout the United States.
`
`(FUENTE CIGAR, LTD. and FUENTE MARKETING, LTD.
`
`are collectively referred to herein as “FUENTE”).
`
`7.
`
`At all times material hereto, FUENTE operated, engaged in and/or carried on a
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`business or business venture in this State and had an office or agency in this State. Accordingly,
`
`this Court has personal
`
`jurisdiction over FUENTE pursuant
`
`to Fla. Stat. §48.l93(l).
`
`Additionally, this Court has personal jurisdiction over FUENTE pursuant to Fla. Stat. §48.193(2)
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`because FUENTE engaged in substantial and not isolated activity within this State.
`
`8.
`
`Further, this Court has personal jurisdiction over FUENTE because FUENTE’s
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`activities in this State are substantial and continuous and therefore the assertion of personal
`
`jurisdiction comports with due process under the minimum contacts test. By their contacts, the
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`Defendants’ purposefully availed themselves of the privilege of conducting activities within
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`this State thus invoking benefits and protections of its laws. Further, Defendants’ contacts with
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`this forum are such that the Defendants should reasonably anticipate being haled into Court in
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`this jurisdiction.
`
`9.
`
`This Court has jurisdiction over
`
`this matter because the Plaintiffs
`
`seeks
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`declaratory relief regarding the Defendants’ assertion of trademark infringement under 15 U.S.C.
`
`{A1 L\00058046.1 }
`
`HALL, LAMB AND HALL, I=.A., PENTHOUSE, I428 BRICKELL AVENUE, MIAMI, FLORIDA 33I3I-349I -TEL. (305) 374-5030 - FAX (305) 374-5033
`
`

`
`Case ‘E :€37—cv—2t6‘E 1-JLK Document 1
`
`Entered on FLSD Docket ()6/'22/’2007
`
`Page 3 of 11
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`§1114 and/or false designation of origin under 15 U.S.C. §1125(a) thus providing federal
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`question jurisdiction pursuant to 28 U.S.C. §1331.
`
`10.
`
`This action properly lies in the Southern District of Florida pursuant to 28 U.S.C.
`
`§1391('b)(2) as a substantial part of the events set forth herein occurred in this judicial district.
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`Alternatively, pursuant to 28 U.S.C. §1391(c), venue properly lies in this judicial district as the
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`Defendants are subject to personal jurisdiction in this district.
`
`GENERAL ALLEGATIONS
`
`11.
`
`BEACH owns and operates a successful tobacco company which manufactures
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`and sells high quality cigars and tobacco products.
`
`12.
`
`Since 1989 continuing through the present, BEACH and its predecessors have
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`sold and/or distributed to the public a line of high quality cigars using the Gurkha. trademark.
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`13.
`
`Since inception of the Gurka trademark,
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`the Gurka line of cigars has been
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`marketed with the icon of a crossed pair of swords appearing on the label.
`
`(See Composite
`
`Exhibit “A”).
`
`14.
`
`Commencing in 1996, BEACH began using an image of a Gurkha warrior on the
`
`labels for its cigars while continuing to use the icon of the crossed pair of swords beside the
`
`warrior. This image had been used on the Gurkha cigar commencing in 1992 before BEACH
`
`acquired the rights to use the mark.
`
`(Composite Exhibit “A”). Commencing in 2001, BEACH
`
`modified the trade dress of its cigars by moving the crossed pair of swords to the background of
`
`the image of the warrior.
`
`(Composite Exhibit “A”). Since 2001, BEACH has employed this
`
`trade dress on all of its products.
`
`(See examples of the Legend cigar sold since 2002 and the
`
`Estate Selection cigar sold since 2006 on Composite Exhibit “A”).
`
`15.
`
`Commencing in 2006, one of BEACH’s customers requested that BEACH
`
`{AJL\00058046.l}
`HALL. LAMB AND HALL, P.A.. PENTHOUSE. I428 BRICKELL AVENUE, MIAMI. FLORIDA 33131-349i -TEL. (305) 374-5030 -FAX (305) 374-5033
`
`

`
`Case ‘E :O7’—ov—21§‘Et—JLK Document "3
`
`Entered on FLSD Docket ()6/'22./’20{37
`
`Page 4 of 11
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`manufacture a cigar with a bolder and stronger taste than its other types of ciga.rs. Accordingly,
`
`BEACH began to market and sell a brand of strong cigars known as “Gurkha Fuerte”, fuerte
`
`being the Spanish word for strong. The Gurkha Fuerte cigars contained a label with the familiar
`
`Gurkha warrior with crossed swords in the background image and contained a secondary label
`
`containing the word “fuerte” on it along with the crossed swords. (Exhibit “B”).
`
`16.
`
`Commencing in 2007, BEACH began to manufacture and sell some of its cigars
`
`in a functional tin variety pack holder which holds five different styles of Gurkha cigars (the
`
`“variety tin”).
`
`The variety tin does not contain any Gurkha Fuerte cigars. The variety tin
`
`employs the color scheme which BEACH has used for the Gurkha cigars dating back to 1996.
`
`The tin further displays the same icon of the Gurkha warrior with crossed swords in the
`
`background image.
`
`(Composite Exhibit “C”). The variety tin does not contain any Gurkha
`
`Fuerte cigars.
`
`17.
`
`BEACH’s Gurkha cigars, with their distinctive Gurkha warrior and crossed
`
`swords image, are widely recognized by retailers and consumers in the cigar industry. BEACH’s
`
`cigars bearing the Gurkha trademark are known and are famous for their excellent quality. The
`
`Gurkha trademark, the Gurkha warrior and the crossed swords image are distinctive. As a result
`
`of its long-standing reputation for producing high quality cigars under the Gurkha trademark and
`
`trade dress, BEACH has developed substantial goodwill for the brand, making the Gurkha
`
`trademark and trade dress synonymous with fine cigars in the cigar industry and distinguishes its
`
`cigars from its competitors. Thus, the Gurkha trademark and BEACH’s use of the Gurkha
`
`warrior and crossed sword image have become famous as a Visible symbol for the Gurkha brand
`
`and represents substantial value to BEACH.
`
`18.
`
`On June 5, 2007, Defendants’ attorneys, on behalf of FUENTE, sent a letter to
`
`{AJL\000580-46.1}
`
`HALL, LAMB AND HALL, P.A., PENTHOUSE. I428 BRICKELL AVENUE, MIAMI, FLORIDA 33l3l-349! -TEL. (305) 374-5030- FAX (.305) 374-5033
`
`

`
`Case ‘E :€37—ev—216‘E 1-JLK Document 1
`
`Entered on FLSD Docket ()6/'22/’20{37
`
`Page 5 of 11
`
`BEACH demanding that BEACH cease the sale of production of its new variety tin of Gurkha
`
`cigars. On June 20, 2007, Defendants’ counsel sent additional correspondence to BEACH
`
`demanding, inter alia, that BEACH cease the sale of production of its Gurkha Fuerte cigars as
`
`well as the Variety tin. FUENTE is the manufacturer of Opus X brand of cigars.
`
`19.
`
`In the correspondence, FUENTE asserted that BEACH’s Variety tin and its
`
`Gurkha Fuerte cigar infringed upon the trademark and trade dress right of FUENTE. FUENTE
`
`asserted that its tin, which FUENTE uses to sell a three cigar pack and is not confusingly similar
`
`to BEACH’s variety tin, constituted such infringement. Further, FUENTE asserted that the
`
`Gurkha Fuerte cigars infringed upon FUENTE’s trademark for Fuente OpusX products.
`
`20.
`
`FUENTE does not own a trademark over the term Fuerte. Further, the two tins at
`
`issue are not confusing similar and are functional.
`
`DECLARATORY RELIEF
`
`21.
`
`BEACH realleges the allegations contained in paragraphs 1
`
`through 20 of this
`
`Complaint.
`
`21.
`
`There is a bona fide dispute between the parties as to right of BEACH to:
`
`1)
`
`manufacture and sell its Variety tin in its current form and 2) produce and sell its Gurkha Fuerte
`
`cigars.
`
`22.
`
`FUENTE claims that BEACH’s manufacture and use of the foregoing infringes
`
`upon FUENTE’s trademark rights under 15 U.S.C. §11l4 and/or false designation of origin
`
`under 15 U.S.C. §l125(a) and/or violates FUENTE’s trade dress.
`
`23.
`
`BEACH claims that FUENTE’s cigar tin is functional and not protectable and that
`
`BEACH ’s variety tin has a different and distinct trade dress (to the extent that a protectable trade
`
`dress exists) which is not confusing similar to FUENTE’s tin. Further, BEACH claims that its
`
`{AJL\0OO58046.l }
`
`HALL, LAMB AND HALL. P.A., PENTHOUSE, I428 BRICKELL AVENUE. MIAMI, FLORIDA 33l3l-349! -TEL. (305) 374-5030 -FAX (305) 374-5033
`
`

`
`Case ‘E :07—cv—2t6‘E 1-JLK Document 1
`
`Entered on FLSD Docket 06/'22,"2007
`
`Page 5 of 11
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`Gurkha Fuerte cigars do not infringe upon FUENTE’s trademark rights.
`
`24.
`
`BEACH is entitled to have any doubts removed regarding their rights and
`
`obligations as it pertains to FUENTE.
`
`25.
`
`The issues described herein pertain to an actual, bona tide and present controversy
`
`from which BEACH needs relief.
`
`WHEREFORE, Plaintiffs seek the following relief:
`
`a)
`
`A declaration that BEACH’s Gurkha variety tin does not
`
`infringe upon any
`
`trademark or trade dress rights of FUENTE;
`
`b)
`
`A declaration that BEACH’s Gurkha Fuerte cigars do not infringe upon any
`
`trademark or trade dress rights of FUENTE; and
`
`c)
`
`Award BEACH its costs upon prevailing and grant such other relief as this Court
`
`deems just and proper.
`_
`u"
`Dated: June vkai‘, 2007.
`
`Respectfully submitted,
`
`HALL, LAMB AND HALL, P.A.
`1428 Brickell Avenue, Penthouse
`Miami, Florida 33131
`TEL. 305-374-5030
`FAX. 305- 74-5033
`
` _
`ANDREW C. HALL
`FBN: l l 1480
`
`ADAM J. LAMB
`
`FBN: 899046
`
`{AJ L\O0O58046.l }
`
`HALL, LAMB AND HALL, F’.A., PENTHOUSE, I428 BRICKELL AVENUE, MIAMI, FLORIDA 33I3I—349l -TEL. (305) 374-5030 -FAX (305) 374-5033
`
`

`
`Case ‘E :O7’—c:v—21§‘H—JLK
`
`Decumt-mt "3
`
`Entered an FLSD Becket ()6/'22/’a,O{37
`
`Page 7 0? 1‘:
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`
`1992
`
`2001 REGENT
`
`2002 LEGEND
`
`2006 ESTATE SELECTION
`
` EXHIBIT
`
`_A___
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`
`
`
`
`

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`Case ‘E :€37’—c:\/-216-‘E1—Ji_E*<
`-
`
`Document 1
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`Entered an FLSD Becket ()6/'22/’20{37
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`Page 8 0? 11
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`EXHIBIT
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`ta
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`

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`Case ‘E :€37’—c:\/-21 61 RELK Document "3
`
`Entered an FLSD Docket ()6./'22/’20{37
`
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`Case 1 :{)7’—cv—21E31"i—JLK Document ‘E
`
`Entered an FLSD Dacket {DES/22./'2€307
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`Page 16 of 11
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`

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`Case 1 :{)7’—ov—2tE§t ‘1—JLI< Document ‘E
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`Entered on FLSD Docket {DES/22./'2€307
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`Page it of ti
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`CIVIL COVER SHEET 0 7 "' 2 6 1
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`The JS 44 civil cover sheet and the information contained herein neither retplace nor supplement the filing and service ofpleadings or other Eapers as re u‘ ed by
`by local rules of court. This form, approved by the Judicial Conference 0 the United States in September 1974, is required for the use oft e Cl
`-
`rt-{gr
`the civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
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`
`
`DEFENDANTS
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`County of Residence of First Listed Defendant
`(IN US. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`NOTE:
`TRACT OF LAND INVOLVED.
`
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`!’J‘= Forei n Coun
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`NATURE OF
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`Place an “X” in One Box Onl
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`CI
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`PERSONAL INJURY
`D 310 Airplane
`13
`315 Airplane Product
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`320 Assault, Libel &
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`330 Federal Employers’
`Liability
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`CI
`345 Marine Product
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`In
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`Cl
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`CI
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`U I I0 Insurance
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`D 140 Negotiable Instrument
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`& Enforcement ofludginent
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`PERSONAL INJURY
`D 362 Personal Injury —
`Med‘ Malpractice
`365 Personal Injury -
`Product Liability
`D 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`II
`370 Other Fraud
`D 371 Trudi in Lending
`3 380 Other Personal
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`D 510 Motions to Vacate
`441 Voting
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`Cl
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`or Defendant)
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`26 USC 7609
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`-
`'
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`713 _410 Antitrust
`V
`‘
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`" D‘ 430 BE and ‘Banking
`I
`450 Cdfhiherce
`I
`460 Dmurtation
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`be‘ Corrupt Organizations
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`to Justice
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`28 USC 157
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`820 Copyrights
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`CI
`CI
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`(Place an “X" in One Box Only)
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`g
`I
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`Ju ge from
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`Remanded from
`Removed from
`Reinstated or
`another district
`Multidistrict
`Magistrate
`
`
`State Court
`A ellate Court
`Reo ened
`S eci
`Liti ation
`Jud ment
`_
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`(Cite the US. Civil Statute under which you are filing and Write a Briefstatement of Cause (Do not cite jurisdictional statutes unless diversity):
`’far|r0l)flI4’;4’V16LVIL 144314343 bmolcir I6 [,t.S.(,». Scc . IIILI amt
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`DEfi€al&if¢L'i’D(&70\'C+IOV)
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`L
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`GTTH
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`via
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`LL
`days estimated (for both sides to try entire case)
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`D 7
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`V.
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`Original
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`Proceedin
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`VI. CAUSE OF ACTION
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`VII. REQUESTED IN
`COMPLAINT:
`VIII. RELATED CASE(S)
`IF ANY
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`CI CHECK IF THIS IS A CLASS ACTION
`UNDER F-R»C«P- 23
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`DEMAND 5%
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`CHECK YES only if demanded in complaint:
`JURY DEMAND:
`D Yes gm
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`(See instructions):
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`JUDGE
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`DOCKET NUMBER
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`DATE
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`SIGNATURE OF ATTORNEY OF RECORD
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`FOR OFFICE USE ONLY
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`4;/aaiov
`RECEIPT
`2-—/
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`j ‘
`' a aAI’PLYING IFP
`%/2 "A /07
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`_
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`_
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`K. HANSOTIA & CO., INC.
`
`Cancellation No. 92047974
`
`Petitioner,
`
`v.
`
`FUENTE MARKETING LTD.
`
`Mark: X
`
`Reg. No. 3,254,146
`Issued: June 19, 2007
`
`Registrant.
`
`
`Exhibit B
`
`

`
`Case t:O7—cv~2t6t1—JLK Document 3
`
`Entered on FLSD Docket 0?,/13./EEG?
`
`Page 1 of 63
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`Case No. 07—21611—CIV—KING/GARBER
`
`BEACH CIGAR GROUP, INC. and
`
`K. HANSONTIA & CO., INC.
`
`Vs.
`
`Plaintiffs/Counter —Defendants,
`
`FUENTE CIGAR LTD. and
`
`FUENTE MARKETING LTD.
`
`Defendants/Counter —Plaintiffs.
`
`/
`
`DEFENDANTS/COUNTER—PLAINTIFFS’ ANSWER AND COUNTERCLAIMS FOR
`
`DAMAGES AND IN] UNCTIVE RELIEF AND DEMAND FOR JURY TRIAL
`
`Defendants Fuente Cigar Ltd. and Fuente Marketing Ltd. (hereinafter jointly referred to as
`
`"Fuente"), by their undersigned attorneys, hereby file their answer and counterclaims as follows:
`
`1.
`
`Fuente admits that Plaintiffs seek declaratory relief but denies the Validity of such
`
`claim.
`
`2.
`
`Fuente admits that Beach Cigar Group, Inc. is a Florida corporation claiming its
`
`principal place of business at 3705 NW 115th Avenue, Bay #5, Miami, Florida 33178, and is doing
`
`business in this district. Fuente is without information or knowledge sufficient to form a belief as to
`
`the truth of the allegations of paragraph 2, and therefore denies them.
`
`3.
`
`Fuente admits that K. Hansotia & Co. Inc. (Hansotia, not HANSONTIA) is a Florida
`
`corporation claiming its principal place of business at 3705 NW 115th Avenue, Bay #5, Miami,
`
`Florida 33178, and is doing business in this district. Fuente is without information or knowledge
`
`sufficient to form a belief as to the truth of the remaining allegations of paragraph 3, and therefore
`
`denies them.
`
`

`
`Case t:O7—cv~2t6t1—JLK Document 3
`
`Entered on FLSD Docket 0?,/13./EEG?
`
`Page 2 of 63
`
`Case No. O7-21611-C|V—K|NG/GARBER
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`4.
`
`Fuente is without information or knowledge sufficient to form a belief as to the truth
`
`of the allegations of paragraph 4, and therefore denies them.
`
`5 .
`
`Fuente admits that Fuente Cigar Ltd. is a corporation incorporated under the laws of
`
`the Turks and Caicos Islands but denies the remaining allegations of paragraph 5.
`
`6.
`
`Fuente admits that Fuente Marketing Ltd. is a corporation incorporated under the
`
`laws of the British Virgin Islands but denies the remaining allegations of paragraph 6.
`
`7.
`
`8.
`
`9.
`
`Denied.
`
`Denied.
`
`Fuente admits that this Court has subject matter jurisdiction over the federal claims
`
`alleged by Plaintiffs herein.
`
`l0.
`
`Denied.
`
`ll.
`
`Fuente is without information or knowledge sufficient to form a belief as to the truth
`
`of the allegations of paragraph ll, and therefore denies them.
`
`12.
`
`Denied.
`
`l3.
`
`Fuente is without information or knowledge sufficient to form a belief as to the truth
`
`of the allegations of paragraph 13, and therefore denies them.
`
`14.
`
`Denied.
`
`l5.
`
`Fuente admits that K. Hansotia & Co. Inc. advertises and offers for sale a brand of
`
`cigars in association with the mark FUERTE and that some such cigars are sold with a cigar band
`
`that bears the mark FUERTE X FUERTE. Fuente denies the remaining allegations of paragraph 15 .
`
`l6.
`
`Fuente admits that K. Hansotia & Co. Inc. advertises and offers for sale “Gurkha”
`
`

`
`Case 1 :O7~ev~2t6t1—JLK Documents
`
`Entered on FLSD Docket O?/13./200?
`
`Page :3 of 63
`
`Case No. O7-21611-C|V—K|NG/GARBER
`
`brand cigars in a cigar tin. Fuente denies the remaining allegations of paragraph 16.
`
`17.
`
`Denied.
`
`l8.
`
`Fuente admits that it is the manufacturer of FUENTE FUENTE OPUSX brand cigars
`
`and admits that it has sent several letters to K. Hansotia & Co. Inc. regarding K. Hansotia & Co.
`
`Inc.’ s infringement of Fuente’ s federally registered X, X TO THE THIRD POWER and FUENTE
`
`trademarks and of Fuente’ s cigar tin trade dress. Fuente denies the remaining allegations of
`
`paragraph l8.
`
`l9.
`
`Fuente admits that it has sent several letters to K. Hansotia & Co. Inc. regarding K.
`
`Hansotia & Co. Inc.’s infringement of Fuente’s federally registered X, X TO THE THIRD and
`
`FUENTE trademarks and of Fuente’ s cigar tin trade dress. Fuente denies the remaining allegations
`
`of paragraph 19.
`
`20.
`
`Fuente admits that it does not own a United States trademark registration for the mark
`
`FUERTE. Fuente denies the remaining allegations of paragraph 20.
`
`21.
`
`Fuente adopts its responses set forth above as to each of the paragraphs incorporated
`
`in this paragraph.
`
`22.
`
`Admitted.
`
`23.
`
`Admitted.
`
`24.
`
`Fuente admits that Plaintiffs deny infringement by use of their cigar tin and the mark
`
`FUERTE, but denies the validity of such claims.
`
`25.
`
`Denied.
`
`

`
`Case t:O7—cv~2t6t1—JLK Document 3
`
`Entered on FLSD Docket 0?,/13./EEG?
`
`Page 4 of 63
`
`Case No. O7-21611-C|V—K|NG/GARBER
`
`COUNTERCLAIMS
`
`Counter—Plaintiffs, Fuente Cigar Ltd. and Fuente Marketing Ltd. (hereinafter jointly referred
`
`to as "Fuente"), by their undersigned attorneys, for their counterclaims against Counter—Defendants
`
`K. Hansotia & Co., Inc. and Beach Cigar Co., Inc. (jointly referred to as “Counter—Defendants”),
`
`allege as follows:
`
`NATURE OF THE ACTION AND RELIEF SOUGHT
`
`26.
`
`This is a civil action for trademark infringement in Violation of the trademark laws of
`
`the United States, 15 U.S.C. §§ ll 14-11 17; for trade dress infringement in Violation of § 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1 125 (a); for trademark dilution in Violation of § 43(c) of the Lanham Act,
`
`15 U.S.C. § ll25(c); unfair competition, in Violation of § 43(a) of the Lanham Act, 15 U.S.C. §
`
`ll25 (a); for Violation of the Florida Dilution Statute, Fla. Stat. § 495.151; and for unfair
`
`competition, and trademark infringement under the common law of the State of Florida.
`
`27.
`
`Fuente seeks injunctive relief and damages for relief from Counter—Defendants’
`
`improper and unlawful acts and attorneys’ fees and expenses as a result of said willful and
`
`intentional acts.
`
`THE PARTIES
`
`28.
`
`Fuente Cigar Ltd. is a corporation organized and existing under the laws of the Turks
`
`and Caicos Islands, with its only place of business located in and around Santiago, Dominican
`
`Republic.
`
`29.
`
`Fuente Cigar Ltd. does not transact business in this or any district in the United
`
`States.
`
`

`
`Case 1 :O7~ev~2t6t MILK Document 3
`
`Entered on FLSD Docket O?/13./200?
`
`Page 5 of 63
`
`Case No. 07-21611-C|V—K|NG/GARBER
`
`30.
`
`Fuente Marketing Ltd. is a corporation organized and existing under the laws of the
`
`British Virgin Islands, with its only place of business located in Road Town, Tortola, British Virgin
`
`Islands.
`
`States.
`
`3 l.
`
`Fuente Marketing Ltd. does not transact business in this or any district in the United
`
`32.
`
`Counter—Defendant K. Hansotia & Co. Inc.
`
`is a Florida corporation having its
`
`principal place of business at 3705 NW ll5th Avenue, Bay #5, Miami, Florida 33178, and is
`
`conducting business in this district.
`
`33.
`
`The registered agent and sole officer and/or director of Counter—Defendant K.
`
`Hansotia & Co. Inc. is Mr. Kaizad Hansotia, who lists his address on the corporate records as that of
`
`the company at 3705 NW ll5th Avenue, Bay #5, Miami, Florida 33178.
`
`34.
`
`Counter—Defendant Beach Cigar Group, Inc. is a Florida corporation claiming its
`
`principal place of business at 3705 NW ll5th Avenue, Bay #5, Miami, Florida 33178, and is
`
`conducting business in this district.
`
`35.
`
`The registered agent and sole officer and/or director of Counter—Defendant Beach
`
`Cigar Group, Inc. is Mr. Kaizad Hansotia, who lists his address on the corporate records as that of
`
`the company at 3705 NW ll5th Avenue, Bay #5, Miami, Florida 33178.
`
`36.
`
`Upon information and belief, as the sole officer and/or director, Mr. Kaizad Hansotia
`
`directs and controls the activities of Counter—Defendants K. Hansotia & Co. Inc. and Beach Cigar
`
`Group, Inc.
`
`37.
`
`Mr. Kaizad Hansotia is also the sole director and/or agent of several other Florida
`
`

`
`Case 1 :O7~ev~2t6t MELK Document 3
`
`Entered on FLSD Docket O?/13./200?
`
`Page 5 of 63
`
`Case No. O7-21611-C|V—K|NG/GARBER
`
`corporations that he uses as part of his Various business Ventures.
`
`38.
`
`Upon information and belief, Counter—Defendants K. Hansotia & Co. Inc. and Beach
`
`Cigar Group, Inc. (jointly "Counter—Defendants” or “Hansotia”) operate together to carry out the acts
`
`described herein.
`
`39.
`
`Counter—Defendants conduct in this district at least by offering for sale and selling
`
`cigars in this district.
`
`JURISDICTION
`
`40.
`
`This Court has original jurisdiction over the subject matter of this action pursuant to
`
`15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338, and has supplementaljurisdiction pursuant to 28
`
`U.S.C. § 1367(a).
`
`41.
`
`This Court has personal jurisdiction over Counter—Defendants at least because
`
`Counter—Defendants are located, transact business, solicit sales, and/or sell infringing goods in this
`
`district.
`
`42.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391.
`
`FACTS COMMON TO ALL COUNTS
`
`A.
`
`Fame of Fuente’s Trademarks and Trade Dress
`
`43.
`
`Fuente Cigar is one of the largest fan1ily—owned and farr1ily—run premium hand—rolled
`
`cigar companies in the world. The Fuente family, like many other cigar families, originated in Cuba,
`
`but then settled in Tampa, Florida and started selling cigars in the United States in 1912. Faced with
`
`adversity and fires, the company had times of prosperity and struggle, and emerged in the mid— 1900s
`
`as the present day cigar company. Four generations of the Fuente family have labored to produce the
`
`

`
`Case t:O7—cv~2t6t1—JLK Document 3
`
`Entered on FLSD Docket 0?,/13./EEG?
`
`Page 7’ of 63
`
`Case No. 07-21611-C|V—K|NG/GARBER
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`finest cigars and to make the company internationally renowned for its cigars.
`
`44.
`
`Since the rr1id—l900s, the Fuente family has continuously produc