%; A0 120 (Rev. 3/04
`
`T0:
`
`Mai. Stop 3
`Director of the U.S. Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 223134450
`
`'
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARLK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court SOUTHERN DISTRICT FLA on the following D Patents or
`W Trademarks:
`
`D°CKPE17§315l§{7—616o6
`PLAINTIFF
`
`ALTADIS USA,|NC.
`
`DATE F"1"o'?7/2008
`
`US" DISTRICT C°UR§ouTi-IERN DISTRICT FLA
`DEFENDANT
`
`PRODUCTOS DEL TABACO,S.A.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`I
`
`t.w9n0o5’
`
`HOLDER OF PATENT OR TRADEMARK
`
`see attached filing
`
`DATE INCLUDED
`
`In the above—entitled case. the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO
`
`El Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`E] Answer
`
`I:I Cross Bill
`
`I:l_Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISIONIJUDGEMENT
`
`4
`__
`
`-
`
`DATE
`
`1 0/7/2003
`
`I
`Copy I——Upon initiation of action, mail this copy to Directo A Copy 3——Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`

`
`Case 0:08—cv-61606-MGC Document 1
`I
`I
`
`Entered on FLSD Docket 10/08/2008
`:
`
`Page 1 of 20
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT 01: FLORIDA
`
`.........................................................--x
`
`ALTADIS U.S.A. INC. and
`
`MAXROHR, lNC.,
`
`Plaintiffs,
`
`.
`
`‘‘*%““‘S‘‘
`
`PRODUCTOS DEL TOBACO, S.A.,
`WHOLESALE OF SOUTH FLORIDA, INC.,
`and SULEIMAN F. SHEIKHA,
`
`_
`
`=
`
`:
`:
`
`.........................................................__x .
`
`FILED BY
`
`D.C.
`
`ma 037 '7 P” ‘*' 09
`sIEv5r.= H. LAFUHORE
`CLERK u.s. oxsr. cr.
`s.n.o:= FLA -run
`
`.
`
`Index No: 0 ... 66 O 6
`_(_3_()_l\/l_]’_I=.__:_t_I_lj1
`_
`Ia_I.'Isnn
`A BAND?lRl\W'GE
`
`October 7, 2008
`
`Jug; Trial Demanded
`
`Plaintiffs, Altadis U.S.A.
`
`Inc.
`
`(“Altadis U.S.A.”) and Max Rohr,
`
`linc.
`
`(“Rohr”)
`
`‘
`
`(collectively “P1aintiffs”), by and through their undersigned attorneys, for their Complaint
`
`against Defendants, Productos del Tobaco S.A. (“Productos del Tobaco”), Universal Wholesale
`
`of South Florida,
`
`Inc.
`
`(“Universal Wholesale”) and Suleiman F. Sheikha (“Sheikha”)
`
`(collectively, “Defendants”), respectfully allege as follows:
`
`NATURE OF ACTION
`
`1.
`
`Plaintiff Rohr owns valuable rights in the famous, federally registered trademark
`
`BACKWOODS and in the associated distinctive BACKWOODS trade dress, which have been
`
`used widely and continuously for many years in connection with cigars and a host of ancillary
`
`goods. Defendants have blatantly and willfully infringed upon Plaintiffs’ rights by distributing
`
`cigars in the United States that are packaged in trade dress that is virtually identical to the distinctive
`
`BACKWOODS trade dress, in an effort to trade on the goodwill associated therewith. By their
`
`actions, Defendants are liable for trade dress infringement, false designation of origin and unfair
`
`{lntcllect\4564\0004/M059l887 v,l; 10/6/2008 06:09 PM}
`
`

`
`Case 0:08-cv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`x
`
`Page 2 of 20
`
`competition in violation of the Lanham Act of 1946, as amended, 15 U.S.C. §lI'J5l, et seq.; for
`
`deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices
`
`Act, Fla. Stat. §§ 501.201 et seq. ; and for unfair competition under the common law of the State
`
`of Florida. Plaintiffs have no adequate remedy at law.
`
`-
`
`THE PARTIES
`
`2.
`
`Plaintiff Altadis U.S.A. is a corporation organized and existing under the laws of
`
`the State of Delaware, having its principal place of business at 5900 North Andrews Avenue,
`
`Fort Lauderdale, Florida 33309. Altadis U.S.A. has the exclusive license from Plaintiff Rohr to
`
`use the trademarks, trade names, trade dress, service marks and brand names associated with the
`
`BACKWOODS trademark in the United States.
`
`3.
`
`Plaintiff Rohr is a corporation organized and existing under the laws of the State
`
`of Delaware, having an office at 300 Delaware Avenue, Wilmington, Delaware 19801. Rohr is a
`
`wholly-owned subsidiary of Altadis U.S.A.
`
`4.
`
`Upon information and belief, Defendant Productos del Tobacco is :3. corporation
`
`organized and existing under the laws of the Dominican Republic, having a business address at
`
`6405 NW 36 St., Suite 207, Miami, Florida 33166. Upon information and belief, Defendant
`
`Productos
`
`del Tobaco manufactures BLACKMAS"IER cigars
`
`and
`
`the
`
`infringing
`
`BLACKMASTER cigar packaging in the Dominican Republic and, through its presence in
`
`Miami, has imported these products into the United States and has sought to distribute and sell
`
`them in the State of Florida and elsewhere.
`
`5.
`
`Upon information and belief, Defendant Universal Wholesale is an inactive
`
`corporation that was organized and existing under the laws of the State of Florida until it was
`
`administratively dissolved for failure to file an annual report. Upon information and belief, at
`
`{lntellcct\4564\00O4/M059! 887 v.l; l0l6/2008 06:09 PM)
`
`

`
`Case 0:08—.cv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 3 of 20
`
`the present time Universal Wholesale has a business address at 13380 NW 7 St, Plantation,
`
`Florida 33325. Upon information and belief, Universal Wholesale has distributed and sold
`
`infringing BLACKMASTER cigar products in the State of Florida.
`
`6.
`
`Upon information and belief, Defendant Sheikha is the President of Universal
`
`Wholesale and a resident of the State of Florida, having an address at 1344 NW 80 Ter., B-23,
`
`Plantation, Florida 33322. Upon information and belief, Defendant Sheikha has personally
`
`directed, controlled, ratified, participated in and/or been the moving force behind the infringing
`
`activities of Defendant Universal Wholesale with respect to the subject matter of this litigation.
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 28
`
`U.S.C. § 1331 (federal question), 15 U.S.C. § 1121 (actions arising under the Lanham Act), 28
`
`U.S.C. §l338(a) (acts of Congress relating to trademarks), 28 U.S.C. § l338(b) (pendant unfair
`
`competition claims) and 28 U.S.C. § 1367 (supplemental jurisdiction over state claims).
`
`8.
`
`This Court has jurisdiction over Defendants by virtue of the fact that: (1) they have
`
`transacted business within the State of Florida on a regular and consisent basis; (2) they have
`
`infiinged Rohr’s trade dress within the State; (3) they have infringed Rohr’s trade dress without the
`
`State causing injury to property within the State; (4) upon information and belief, Defendant
`
`Productos del Tobaco maintains an office within the State; (5) upon information and belief,
`
`Defendant Universal Wholesale is an inactive Florida corporation that maintains an officze within the
`
`State; and (6) upon information and belief, Defendant Sheikha is a Florida resident.
`
`9.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391.
`
`{lntel|ect\45b4\O004/l\-10591387 v.1; 10/6/2008 06:09 PM}
`
`

`
`Case 0:O8—cv-61606-MC-I-C Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 4 of 20
`
`Plaintiff Rohr’s BACKWOOKS Trademark and Trade Dress
`
`.13A§L1"_S.
`
`10.
`
`Plaintiff Rohr is the owner of the trademarks, trade names, trade dress, service
`
`marks and brand names associated with BACKWOODS brand cigars in the United States.
`
`Specifically, Rohr
`
`is the owner of the trademark BACKWOODS and US. Trademark
`
`Registration No. l,I64,008 for the trademark BACKWOODS for “cigars” in International Class
`
`34 on the Principal Register (the “BACKWOODS Trademark”). A copy of Rohr’s trademark
`
`registration certificate for this mark is attached hereto as Exhibit A.
`
`11.
`
`The BACKWOODS Trademark has been in use in this country since at least as
`
`early as May 2, 1979 by Rohr’s predecessors-in-interest. Rohr’s rights to the BACKWOODS
`
`Trademark are derived from its predecessors-in-interest that ultimately became Altadis U.S.A.
`
`Altadis U.S.A. and its predecessors-in-interest have continuously and consistently promoted and
`
`advertised BACKWOODS cigars since the inception of use ofthe BACKWOODS Trademark.
`
`12.
`
`Altadjs U.S.A. and its predecessors-in-interest have used the BACKWOODS
`
`Trademark only in connection with the finest quality cigars and licensed merchandise. Through
`
`these efforts, the BACKWOODS cigar brand is one of the most popular and best selling cigar
`
`brands in the United States. The BACKWOODS cigar brand is Altadis U.S.A.’s third highest
`
`selling cigar brand and BACKWOODS cigars are extensively advertised and available virtually
`
`everywhere that cigars are sold throughout the United States, in thousands of retail locations and
`
`in all channels of trade.
`
`13.
`
`BACKWOODS cigars were an overnight success. Their unique structure and look —
`
`“WILD & MILD” as it was called -- with a frayed end, tapered body and unfinished head, had great
`
`appeal to cigar smokers. Smokers identified the cigar’s image with America's “Wild West” and the
`
`{lntelleet\4564\0004/M059 I 887 v.l ; 10/6/2008 06:09 PM}
`
`

`
`Case-0:08-cv—61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 5 of 20
`
`type of tobacco products that cowboys used to smoke. The rustically designed airtight foil pouch
`
`added to that look and, importantly, maintained the cigar’s high moisture level.
`
`14.
`
`The unique style, taste, aroma and package have made BACKWOODS the number
`
`one selling all natural cigar in the world. Annual retail sales of BACKWOODS brand cigars are in
`
`excess of $100 million. BACKWOODS cigars are available in many varieties, including Black ‘N
`
`Sweet Aromatic, Grape, Honey, Honey Berry, Original, Sweet Aromatic, Vanilla, Banana and Wild
`
`Rum.
`
`15.
`
`Altadis U.S.A.
`
`is actively engaged in the development of BACKWOODS
`
`merchandise and in selective licensing of the BACKWOODS Trademark.
`
`16.
`
`Altadis U.S.A. and its predecessors—in-interest have widely and continuously
`
`promoted and advertised BACKWOODS cigars with a distinctive trade dress (the “BACKWOODS
`
`Trade Dress”). True and correct photographs depicting the BACKWOODS Trade Dress as utilized
`
`on individual packets of cigars are attached hereto as Exhibit B and incorporated herein by
`
`reference.
`
`17.
`
`The BACKWOODS Trade Dress has a number of distinctive features, including, but
`
`not limited to: a) a distinctive background design incorporating a “burlap” texture in a variety of
`
`colors, one of which utilizes tan and brown coloring; b) the placement of a cigar diagonally from the
`
`bottom lefi corner toward the upper right corner of the packaging; c) the placement of a star—shaped
`
`“burst” on the center left edge of the packaging; d) the placement of the brand name at": the top left
`
`corner of the packaging; e) distinctive lettering using the colors red, white and brown; t)» the content
`
`and placement of the phrases “Wild n’ Mild Cigars,” “Sweet Aromatic,” “All Natural Tobacco,” “8
`
`Cigars” and “Actual Size”; and g) a mstically designed airtight foil pouch.
`
`18.
`
`The BACKWOODS Trade Dress is used on packaging for BACKWOODS brand
`
`{Intellect\4564\.00()4/M059I8B7 v.1; 10/6/2008 06:09 PM}
`
`

`
`Case 0:08—_cv-61606-MGC Document 1
`
`Entered on FLSD Docket 1010812008
`
`Page 6 of 20
`
`cigars, in advertisements, on the Internet, in point of purchase materials and in other forums.
`
`19.
`
`The BACKWOODS Trade Dress is inherently distinctive to the public and the
`
`trade and serves primarily as a designator of origin of Altadis U.S.A.’s products.
`
`20.
`
`As a result of the widespread use and display of the BACKWOODS Trademark,
`
`the BACKWOODS Trade Dress and BACKWOODS brand cigars by Altadis USA. and its
`
`subsidiaries: (a) cigars marked with the BACKWOODS Trade Dress are recognized by the trade
`
`and the public as high quality cigars emanating from a single source; and (b) the BACKWOODS
`
`Trade Dress has built up secondary meaning and extensive goodwill.
`
`The Counterfeit/Infringng Trade Dress
`
`21.
`
`Upon information and belief, Defendants have and are manufacturing and/or
`
`selling cigars under the trademark BLACKMASTER that utilize a trade dress that is nearly
`
`identical to the distinctive BACKWOODS Trade Dress. True and correct photographs depicting
`
`Defendants’ BLACKMASTER trade dress as utilized on individual packets of cigars are
`
`attached hereto as Exhibit C and incorporated herein by reference.
`
`22.
`
`In September 2008, Alan Slaney, one of Altadis U.S.A.’s cigar salesmen,
`
`encountered the BLACKMASTER product at three different retail locations in South Florida: a)
`
`Star 7, 2996 NW 55"‘ Ave, Lauderhill, Florida; b) Stop and Shop, 399] NW 41“ St.,. Lauderhill,
`
`Florida; and c) Tubby’s Drive Thru, 6980 West McNabb Road, Tamarac, Florida. At the “Star
`
`7” location, the cashier indicated that he had taken the cigars in at no charge from a “wagon
`
`jobber” (i.e., a person selling cigars from a truck or van). At the “Stop and Shop” location, the
`
`owner was not present when a wagon jobber dropped off two units of BLACKMASTER product
`
`at no charge. However, when Mr. Slaney arrived at the store, the owner brought the cigars to his
`
`attention and said “what is this, isn’t this a rip off of your product.” At the “Tubby’s Drive
`
`[ln’tellect\4564‘\0004/M0591887 v.1; 10/6/2008 06:09 PM)
`
`

`
`Case 0:08-scv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 7 of 20
`
`Thru” location, the owner indicated that “Solomon” from “Universal Wholesale” had dropped
`
`off six units of BLACKMASTER cigars at no charge. From his work in the industry, Mr. Slaney
`
`knew the person known as “Solomon” from Universal Wholesale of South Florida, Inc. Mr.
`
`Slaney was also aware of “Solomon’s” telephone number. Mr. Slaney telephoned “Solomon”
`
`while at Tubby’s Drive Thru and had a conversation with him about the similarities of the
`
`BLACKMASTER and BACKWOODS packaging.
`
`23.
`
`According to telephone records, the telephone number that Mr. Slaney used to
`
`telephone “Solomon” is assigned to Defendant Sheikha. A subsequent search of records of the
`
`Florida Department of State, Division of Corporations, revealed that Defendant Sheikha is the
`
`registered agent and President of Defendant Universal Wholesale.
`
`24.
`
`Upon information and belief, Defendant Productos del
`
`TOIJIEICO
`
`is
`
`the
`
`manufacturer of BLACKMASTER cigars and the BLACKMASTER cigar packaging.
`
`25.
`
`The similarities between the BACKWOODS and BLACKMASTER. trade dress
`
`are astonishing. A comparison of the two brands’ individual packets of cigars immediately
`
`reveals that: a) both use a nearly identical background design incorporating a “burlap” texture with
`
`tan and brown coloring; b) both depict a cigar placed diagonally from the bottom lefi comer toward
`
`the upper right corner of the packaging; c) both contain a star-shaped “burst” on the center left edge
`
`of the packagng; d) both brand names are placed at the top lefi corner of the packaging; e) both use
`
`red, white and brown as the primary colors of the packaging; i) on the upper left portion of the
`
`packaging, the BACKWOODS product contains the words “Wild n’ Mild Cigars” and “Sweet
`
`Aromatic,” while the BLACKMASTER product contains the words “Sweet, Mild and Aromatic";
`
`g) on the lower right portion of the packaging, the BACKWOODS product contains the words “All
`
`Natural Tobacco” and “8 Cigars,” while the BLACKMASTER product contains the words “Natural
`
`(lntellect\4564\O004/M0591887 V. l; 10/6/2003 05:09 PM}
`
`

`
`Case 0:08-_cv-61606—MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 8 of 20
`
`Tobacco” and “8 Cigars”; h) both packages contain the words “Actual Size” beneath the depicted
`
`cigar; and i) and both products are enclosed in a rustically designed airtight foil pouch.
`
`26.
`
`A true and correct photograph showing a side-by-side comparision of the
`
`BACKWOODS and BLACKMASTER packaging is attached hereto as Exhibit D and incorporated
`
`herein by reference.
`
`27.
`
`Neither Rohr nor Altadis USA. has authorized Defendants
`
`to use the
`
`BACKWOODS Trade Dress.
`
`28.
`
`Upon information and belief, Defendants have recklessly, willfully and
`
`intentionally violated Plaintiffs’ rights with the deliberate intention of trading on the valuable
`
`goodwill and reputation established in the distinctive BACKWOODS Trade Dress.
`
`29.
`
`Defendants’ goods are exactly the same as the goods provided in connection with
`
`the BACKWOODS Trade Dress (namely, cigars), and therefore such goods would travel and/or
`
`be promoted through the same channels of trade for sale to, and use by, the same class of
`
`purchasers.
`
`30.
`
`Through long-term use and controlled marketing,
`
`the BACKWOODS Trade
`
`Dress has become highly distinctive and strongly associated in the United States with cigars of
`
`the highest quality emanating from a single source (namely, Altadis U.S.A.). Therefore, it is
`
`highly likely that distributors,
`
`retailers and consumers will assume that Defendants’
`
`BLACKMASTER products are associated with Plaintiffs’ BACKWOODS brand.
`
`31.
`
`Defendants’ use of the BLACKMASTER trade dress constitutes an infringement
`
`of the distinctive BACKWOODS Trade Dress and is likely to cause confusion, mistake or
`
`deception as to the source of origin of Defendants’ products in that the public, the trade and
`
`others are likely to believe that Defendants’ products are provided by, sponsored by, approved
`
`(ln:eIlect\4S64\0004MD59l887 v.l; 10/6/2008 06:09 PM}
`
`

`
`Case-0:08-cv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 9 of 20
`
`by,
`
`licensed by, affiliated with or in some other way legitimately connected to Plaintiffs’
`
`BACKWOODS brand cigars and/or BACKWOODS licensed products.
`
`32.
`
`Defendants’ continued use of the BLACKMASTER trade dress, as alleged, is
`
`likely to dilute the distinctiveness of the BACKWOODS Trade Dress thus hampering efforts by
`
`Plaintiffs to continue to protect the outstanding reputation of their BACKWOODS premium
`
`cigars, resulting in loss of sales of genuine BACKWOODS products and thwarting Plaintiffs’
`
`considerable efforts and expenditures to promote their genuine products and to license the
`BACKWOODS Trademark, all to Plaintiffs’ irreparable harrn.
`
`COUNT 1
`TRADE DRESS INFRINGEMENT
`
`33.
`
`Plaintiffs repeat and re-allege each and every allegation of paragraphs 1 through
`
`32 as though fully set forth herein.
`
`34.
`
`Through their unauthorized use of trade dress that is virtually identical to the trade
`
`dress owned by Rohr, which has been utilized by Altadis U.S.A. and its predecessors in
`
`connection with the configuration and packaging of BACKWOODS brand cigars for many
`
`years, Defendants are knowingly and intentionally misrepresenting, falsely designating and
`
`passing off to the general public the nature, origin, and source of the BLACKMASTER product,
`
`and intend to misrepresent, falsely designate and pass off to the general public the nature, origin
`
`and source of the goods, so as to create a likelihood of confusion by the public as to the nature,
`
`source and sponsorship of the goods.
`
`35.
`
`Defendants’ aforementioned acts constitute trade dress infringement,
`
`false
`
`designation of origin, passing off and unfair competition in violation of the Lariham Act, 15
`
`U.S.C. § l125(a), et. seq.
`
`{Imellect\4564\0O04FM()59l 887 v.!; I0/6/2008 06:09 PM}
`
`

`
`Case 0:08-cv-6160E5—MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 10 of 20
`
`36.
`
`As a direct and proximate result of the foregoing acts of Defendants, Plaintiffs
`
`have been damaged and have suffered and will continue to suffer immediate and irreparable
`
`harm. Unless restrained by the Court, Defendants will continue to cause irreparable injury and
`
`damage to Plaintiffs and to the goodwill associated with the BACKWOODS Trade Dress.
`
`37.
`
`Plaintiffs are without an adequate remedy at law.
`
`COUNT II
`UNFAIR AND DECEPTIVE TRADE PRACTICES
`
`38.
`
`Plaintiffs repeat and re-allege each and every allegation of paragraphs 1 through
`
`37 as though fully set forth herein.
`
`39.
`
`Defendants have engaged in actual deceptive practices and/or have unfairly and
`
`unconscionably competed with Plaintiffs with respect
`
`to their efforts to pass off the
`
`BLACKMASTER product as the BACKWOODS product, in a manner that is likely to injure
`
`consumers.
`
`40.
`
`Defendants’ aforementioned acts constitute unfair or deceptive acts or practices in
`
`violation of the Florida Unfair and Deceptive Trade Practice Act, Fla. Stat. §§ 501.201 et seq.
`
`41.
`
`Plaintiffs have been damaged by Defendants’ aforementioned acts.
`
`COUNT III
`COMMON LAW UNFAIR COMPETITION
`
`42.
`
`Plaintiffs repeat and re~al1ege each and every allegation of paragraphs 1 through
`
`41 as though fully set forth herein.
`
`43.
`
`Defendants’ aforementioned acts constitute unfair competition under the common
`
`44.
`
`Plaintiffs have been damaged by Defendants’ aforementioned acts.
`
`PRAYER FOR RELIEF
`
`{IntellecI\4564\0004/M059! 887 v. I; l0/6/2008 06:09 PM}
`
`

`
`Case 0:08-cv-61606—MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 11 of 20
`
`WHEREFORE, Plaintiffs pray:
`
`1.
`
`That
`
`the Court
`
`issue a preliminary and permanent
`
`injunction restraining
`
`Defendants, their agents, servants, employees, successors and assigns and all others in concert
`
`and privity with them from:
`
`(a)
`
`Directly or indirectly exporting fiom any other country to the United States,
`
`importing into the United States, transshipping through the United States and/or causing,
`
`aiding, abetting or contributing to the exportation from any other country to the United
`
`States or to the importation into the United States or to the transshipment through the United
`
`States of:
`
`i. Any tobacco products, tobacco packaging and/or tobacco related products,
`
`including cigar packaging and cigar-related products, that are packaged or labeled in
`
`a manner that makes any use of any designation, trademark or trade dress that is
`
`identical or confusingly similar to the Plaintiffs’ BACKWOODS Trade Dress; and
`
`ii. Any promotional materials or other items that are labeled with or contain
`
`facsimiles of Plaintifis’ BACKWOODS Trade Dress;
`
`(b)
`
`Directly or indirectly manufacturing, using, purchasing, possessing, offering
`
`to sell, advertising, promoting, marketing, transporting, distributing, selling or otherwise
`
`disposing of and/or causing, aiding, abetting or contributing to the manufacture, use,
`
`purchase, possession, ofler for sale, advertisement, promotion, marketing, transportation,
`
`distribution, sale or other disposition in the United States of:
`
`i. Any tobacco products, tobacco packaging or tobacco-related products,
`
`including cigar packaging and cigar-related products, that are packaged or labeled
`
`using any of Plaintiffs’ BACKWOODS Trade Dress; and
`
`{lntellect\4564\0004/M059l887 v. I; l0/6/2008 06:09 PM}
`
`

`
`Case -0:08-cv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 12 of 20
`
`ii. Any promotional materials or other items that are labeled with or contain
`
`Plaintiffs’ BACKWOODS Trade Dress;
`
`(c)
`
`(d)
`
`Directly or indirectly infringing Plaintiffs’ BACKWOODS Tirade Dress; and
`
`Unfairly competing with Plaintiffs.
`
`2.
`
`That Defendants be required to deliver to Plaintiffs for destruction all products,
`
`advertising and other promotional materials and other things possessed, used, distributed and/or
`
`available for sale by Defendants, or on their behalf, which have utilized the BACKWOODS Trade
`
`Dress or any portion thereof, or anything deemed confusingly similar thereto;
`
`3.
`
`That Defendants, jointly and severally, be required to account to and compensate
`
`Plaintiffs for Defendants’ profits and the actual damages suffered by Plaintiffs as a result of
`
`Defendants’ acts of trade dress infringement, false designation of origin and unfair competition in
`
`an amount to be proven at trial, but in no event less than $1 million;
`
`4.
`
`That Plaintiffs’ recoveries be trebled and prejudgment interest be awarded, pursuant
`
`to Section 35 of the Lanham Act (15 U.S.C. §11l7);
`
`5.
`
`That Defendants, jointly and severally, be required to pay compensatory and
`
`punitive damages for their acts of unfair trade practices to the maximum extent permitted by law
`
`in an amount to be provcn at trial, but in no event less than $1 million;
`
`6.
`
`That Defendants, jointly and severally, be compelled to pay Plaintiffs’ attorneys’
`
`fees, together with costs of this suit, pursuant to Section 35 of the Lanham Act (15 U.S.C. §1 117)
`
`and the Florida Deceptive and Unfair Trade Practices Act (Fla. Stat. § 501.2105); and.
`
`7.
`
`That Plaintiffs obtain such other and further relief as this Court may deem just and
`
`proper.
`
`{lntellect‘\4564\0O04/M()59l887 v.l; [0/6/2008 06:09 PM}
`
`

`
`Case0:08—cv-61606-MGC Document 1
`
`Entered on FLSD Docket 10/08/2008
`
`Page 13 of 20
`
`JURY TRIAL DEMAND
`
`Plaintiffs hereby demand a trial by jury pursuant to Fed. R. Civ. P. 38.
`
`Dated: October 7, 2008
`
`Respectfully submitted,
`
`KLUGER, PERETZ, KAPLAN & BERLIN,
`P.L.
`
`Counsel for Plaintiffs Altadis U.S.A., Inc.
`and Max Rohr, Inc.
`17th Floor, Miami Center
`201 So. Biscayne Blvd.
`Miami, Florida 33131
`305-379-9000 (Telephone)
`305-379-3438 (Telefax)
`l
`
`By:
`Steven 1. Peretz
`Florida Bar No. 329037
`
`speretz@l<pkb.com
`Leora Herrmann
`Florida Bar No. 1 1203
`
`lherrmann@kpkb.com
`
`Of Counsel:
`
`Charles W. Grimes
`Edmund J. Ferdinand, III
`Russell D. Dize
`
`Susan M. Schlesinger
`GRIMES & BATTERSBY, LLP
`488 Main Avenue, Third Floor
`Norwalk, CT 06851-1008
`Telephone: (203) 849-8300
`Telefax: (203) 849-9300
`
`1lntcllect\4564\D0()4lM059l 887 v. I; 10/6/2008 06:09 PM)