Case 1:19-cv-22488-XXXX Document 1 Entered on FLSD Docket 06/14/2019 Page 1 of 12

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

JAMES ROBINSON,
An individual,

Plaintiff,

v. Case No.: TBD

SANTA CRUZ TOBACCO, LLC,

d/b/a Gran Habano Cigars,
A Florida Limited Liability Company,
GEORGE RICO,
An individual,
GUILLERMO RICO,
An individual,

Defendants.
____________________________________/

COMPLAINT FOR TRADEMARK/ TRADE DRESS INFRINGEMENT, AND

REQUEST FOR TEMPORARY, PRELIMINARY, AND PERMANENT INJUNCTION 1

Plaintiff, James Robinson, by and through its undersigned counsel, hereby files this

Complaint against Defendants Santa Cruz Tobacco, LLC, George Rico, and Guillermo Rico for

the willful trademark infringement of Plaintiff’s registered trademark/trade dress, and seeking

temporary, preliminary, and permanent injunctions, and in support thereof says as follows:

NATURE OF THE ACTION

1. Plaintiff brings this action for violation of its rights under the Lanham Act, 15

U.S.C. Sections 1114 & 1125(a), and the Common Law.

2. Plaintiff seeks temporary, preliminary, and permanent injunctive relief pursuant to

Rules 65(a) and 65(b) of the Federal Rules of Civil Procedure, and 15 U.S.C. §1116.

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Plaintiff intends to file a separate Motion for Temporary and Preliminary Injunction and is diligently working on the
same. However, Plaintiff is prepared to conduct a hearing on short notice, and prior to completion of its motion if the
Court finds that it is appropriate to do so. Plaintiff respectfully requests the earliest hearing date available.

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3. Plaintiff seeks an award of damages for all infringing conduct pursuant to 15 U.S.C.

§1117.

4. Plaintiff seeks an award of attorneys’ fees pursuant to 15 U.S.C. §1117.

THE PARTIES

5. Plaintiff is an individual with a principal business address of 2200 Penn Avenue,

Pittsburgh, PA 15222.

6. Defendant Santa Cruz Tobacco, LLC (“Santa Cruz”) is a Florida limited liability

company with a principal address of 3261 NW 82 Avenue, Doral, Florida 33122. Upon

information and belief, Santa Cruz does business as “Gran Habano Cigars.”

7. George Rico is an individual who, upon information and belief, resides in the State

of Florida and in Miami-Dade County, and who has a principal business address of 3261 NW 82

Avenue, Doral, Florida 33122. Upon information and belief, George Rico is a member and officer

of Santa Cruz.

8. Guillermo Rico is an individual who, upon information and belief, resides in the

State of Florida and in Miami-Dade County, and who has a principal business address of 3261 NW

82 Avenue, Doral, Florida 33122. Upon information and belief, Guillermo Rico is a member and

officer of Santa Cruz.

9. Defendants Guillermo Rico and George Rico are, upon information and belief,

father and son and the owners of Defendant Santa Cruz. See Exhibits A (sunbiz.org) and B

(Defendants’ website).

10. Upon information and belief, Defendants Guillermo Rico and George Rico are the

moving and controlling force of the infringing activities described in this Complaint. Specifically,

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they are the individuals responsible for the selection, approval, and/or adoption of the infringing

trade dress at issue in this action.

JURISDICTION AND VENUE

11. This is an action arising under the Trademark Act, 15 U.S.C. Sections 1114, 1115

& 1125(a), and the Common Law.

12. This Court has subject matter jurisdiction over these claims pursuant to 15 U.S.C.

Section 1121, and 28 U.S.C. Sections 1331, 1338(a) and 1338(b).

13. Venue is proper in this District under 28 U.S.C. Section 1391(b)(1), (b)(2) and

(c)(2) because all of the Defendants reside in this District and because the infringing activities

giving rise to the claims occurred in this District.

BACKGROUND FACTS

Plaintiff and Plaintiff’s Trade Dress

14. Plaintiff is well-known in the cigar industry as the source of popular and highly

sought-after premium cigars.

15. Among Plaintiff’s well-known cigar brands is the “LEAF BY” line of cigars;

including “LEAF BY OSCAR” cigars manufactured by Oscar Valladares Tobacco & Co. and sold

by and in conjunction with Plaintiff.

16. “LEAF BY OSCAR” cigars are offered, advertised, packaged and sold by the

Plaintiff with unique and distinctive packaging and trade dress that is the subject of United States

Trademark Registration No. 5,677,470 (the “Leaf Trade Dress”).

17. Plaintiff has continuously used the Leaf Trade Dress since at least March of 2014

and is the owner of the Leaf Trade Dress. See Exhibit C.

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18. As defined in Plaintiff’s trademark registration, the Leaf Trade Dress “consists of

the configuration of the packaging of a cigar consisting of the specific design created by the

wrapping of a whole tobacco leaf wherein both top and bottom twist facing forward and fold so

that both ends meet exactly in the middle showing the leaf stem. This is all secured by a cigar ring

containing a horseshoe design facing right and zipper-like border designs.” Id.

19. In addition, Plaintiff owns common law rights, based on long and continuous use

dating back to at least March 27, 2014, on a broader definition of the Leaf Trade Dress as the same

is used in commerce.

20. The Leaf Trade Dress appears as follows:

21. In short, and as described to the casual observer, the Leaf Trade Dress consists of a

loose tobacco leaf acting as packaging for the fully finished cigar sitting inside of it. The outer

tobacco leaf that acts as the packaging is not intended for smoking and is not part of the product

(i.e. the cigar), but it is instead packaging which is intended to identify the source of the goods

offered therein.

22. Plaintiff is alone in the United States in his use of the distinctive and registered Leaf

Trade Dress, and has the exclusive right to use the same in connection with the sale of cigars.

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23. Cigars packaged with the distinctive and registered Leaf Trade Dress are currently

sold in over 2,000 retail premium cigar shops throughout the United States.

24. Annual gross sales of goods bearing Plaintiff’s distinctive and registered Leaf Trade

Dress are estimated at nearly $5,000,000.00.

25. The consuming public has come to associate the Leaf Trade Dress with the Plaintiff

and the cigars found therein; in particular, the consuming public has come to associate the “LEAF

BY OSCAR” line of cigars sold by the Plaintiff in the United States with the Leaf Trade Dress.

26. Plaintiff intends to use the Leaf Trade Dress in connection with other lines of cigars

beyond merely the “LEAF BY OSCAR” line of cigars.

27. Unauthorized infringements of the Leaf Trade Dress damage Plaintiff, create

customer confusion, and interfere with Plaintiff’s future use of the Leaf Trade Dress.

Defendants’ Wrongful Conduct

28. Defendant Santa Cruz is a premium cigar manufacturer and/or wholesaler that does

business as Gran Habano Cigars.

29. The International Premium Cigar & Pipe Retailers Association convention (the

“IPCPR”), held annually in late June or July, is the industry’s premier tradeshow, and draws

manufacturers, wholesalers, and retailers from around the United States and internationally.

30. The IPCPR traditionally serves as the setting for the launch of new lines and

products within the premium cigar industry.

31. This year’s IPCPR is set to take place in Las Vegas from June 28, 2019 to July 2,

2019. See Exhibit D (www.ipcpr2019.org)

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32. Halfwheel.com is an industry leading Internet publication dedicated to providing

professional, timely, and in-depth news, reviews, and editorial content relating to the premium

cigar industry. See Exhibit E (halfwheel.com “about us”).

33. On or about June 12, 2019, Halfwheel.com ran an article announcing that “Gran

Habano [is] adding Persian King LA Contra at IPCPR 2019.” See Exhibit F. The article is

available at https://halfwheel.com/gran-habano-adding-persian-king-la-contra-at-ipcpr-

2019/336457.

34. The article notes that “Gran Habano’s Persian King line will get a new addition in

the form of La Contra, a fully finished cigar wrapped in another leaf of tobacco,” and that “La

Contra will debut at the 2019 IPCPR . . . which begins June 29 in Las Vegas, and begin shipping

to retailers in August.” Id. An image of the cigar wrapped in another tobacco leaf as packaging is

found on the Halfwheel.com article and is reproduced below:

35. The “La Contra” product to be offered by the Defendants is packaged the same or

nearly the same as Plaintiff’s goods offered in connection with the Leaf Trade Dress, and in such

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a way that Defendants’ “La Contra” goods are likely to be confused with goods offered by the

Plaintiff in connection with his distinctive and registered Leaf Trade Dress.

36. The “La Contra” goods to be offered by Defendants and launched at this year’s

IPCPR are the same or substantially the same as the goods offered by Plaintiff in connection with

the registered and distinctive Leaf Trade Dress; i.e., premium cigars.

37. The consumers to which Plaintiff and Defendants market and sell their premium

cigars are the same or substantially similar; i.e. premium cigar smokers.

38. The channels of trade through which the Plaintiff and Defendants offer their

premium cigars are the same or substantially similar. For example, Plaintiff and the Defendants

will all be showcasing, promoting, and selling their competing goods at this year’s IPCPR.

39. Halfwheel.com’s article is comments-enabled, allowing members of the public to

readily comment thereon.

40. Because Halfwheel.com is an industry specific publication, readers of and

commenters on Halfwheel.com’s articles are overwhelmingly cigar consumers and/or participants

in the premium cigar industry, as well as consumers or potential consumers of Plaintiff’s goods

offered in connection with the Leaf Trade Dress.

41. As of the drafting of this Complaint, members of the consuming public have

commented on the Defendant’s La Contra product displaying actual or strong likelihood of

confusion. A screen shot of the comments on the article taken by undersigned counsel at 2:23pm

on June 14, 2019 shows the following comments:

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42. At least seven comments in two days have directly associated Defendants’ La

Contra product with the registered Leaf Trade Dress used by Plaintiff to package “LEAF BY

OSCAR” cigars, and at least one comment has directly identified the Plaintiff as the owner of the

underlying trade dress. 2

43. Upon information and belief, Defendants are willfully and intentionally seeking to

capitalize on the good will created by Plaintiff in and to the distinctive and registered Leaf Trade

Dress by packaging their competing premium cigar products in a way that is intended to, likely

will, and has created consumer confusion.

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Plaintiff James Robinson is known in the cigar industry as “Island Jim”.

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44. Plaintiff learned of Defendants’ plan to offer their “La Contra” cigars with the

confusingly similar trade dress on June 14, 2019.

45. Plaintiff’s counsel wrote to Jesus Sanchelima, Esq., Defendants’ counsel on prior

matters, inquiring whether Mr. Sanchelima still represented the Defendants, putting them on notice

of Plaintiff’s claims, and demanding that Defendants abandon their intention of offering the

infringing “La Contra” goods. See Exhibit G. The correspondence was intended to and did put

Defendants and their counsel on clear notice that “time is of the essence since the IPCPR is

within two (2) weeks,” and that “[i]f we do not have reasonable assurances by the end of business

today, we will file an action in federal court and seek temporary and preliminary injunction.”

Id. (emphasis added).

46. As of the filing of this Complaint, neither the Defendants nor any counsel on their

behalf have responded.

47. Defendants’ offering of the “La Contra” cigars with the confusingly similar trade

dress would cause the Plaintiff irreparable harm.

48. Although the Defendants’ “La Contra” products do not yet appear to be available

for purchase by the consuming public, based upon the Halfwheel.com article and the consumer

comments posted thereon, Plaintiff reasonably believes that there is an immediate and substantial

likelihood of irreparable harm to the Plaintiff.

49. Temporary, preliminary, and permanent injunctive relief are appropriate to enforce

Plaintiff’s rights in its distinctive and registered Leaf Trade Dress, to avoid irreparable harm to the

Plaintiff, and to protect the public from confusion as to the source, sponsorship, or affiliation of

the goods that they purchase or intend to purchase.

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50. Upon information and belief, Defendants’ infringing goods will be available for

sale in the Southern District of Florida.

51. Plaintiff has hired the undersigned counsel to represent him in this matter and has

agreed to pay counsel a reasonable fee in connection therewith.

COUNT I
FEDERAL TRADEMARK AND TRADE DRESS INFRINGEMENT

52. Plaintiff realleges paragraphs 1-51 as if specifically recited herein.

53. Plaintiff owns valid United States Trademark Registration No. 5,677,470 for the

Leaf Trade Dress for use in connection with cigars.

54. Plaintiff has prior rights to the Leaf Trade Dress in connection with cigars/tobacco

products and related goods.

55. Defendants adopted trade dress that is the same or confusingly similar to Plaintiff’s

Leaf Trade Dress such that consumers would likely confuse the two and the source or sponsorship

of the goods sold thereunder.

56. If Defendants are permitted to go forward with their plan to sell goods in connection

with their infringing trade dress, the harm to Plaintiff will be irreparable.

COUNT II
FEDERAL UNFAIR COMPETITION

57. Plaintiff realleges paragraphs 1-51 as if specifically recited herein.

58. Plaintiff owns the Leaf Trade Dress and has made continuous and exclusive use of

it in United States commerce since March of 2014.

59. Plaintiff has prior rights to the Leaf Trade Dress in connection with cigars and

related goods.

60. Defendants adopted or appear prepared to adopt trade dress that is the same or

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confusingly similar to Plaintiff’s Lead Trade Dress such that consumers would likely confuse the

two and the source or sponsorship of the goods sold thereunder.

61. If Defendants are permitted to go forward with their plan to sell goods in connection

with their infringing trade dress, the harm to Plaintiff will be irreparable.

COUNT III
COMMON LAW TRADEMARK/ TRADE DRESS INFRINGEMENT

62. Plaintiff realleges paragraphs 1-51 as if specifically recited herein.

63. Plaintiff owns the Leaf Trade Dress and has made continuous and exclusive use of

it in United States commerce since March of 2014.

64. Plaintiff has prior rights to the Leaf Trade Dress in connection with cigars and

related goods.

65. Defendants adopted or appear prepared to adopt trade dress that is the same or

confusingly similar to Plaintiff’s Lead Trade Dress such that consumers would likely confuse the

two and the source or sponsorship of the goods sold thereunder.

66. If Defendants are permitted to go forward with their plan to sell goods in connection

with their infringing trade dress, the harm to Plaintiff will be irreparable.

WHEREFORE, Plaintiff respectfully requests that the Court enter judgment in their favor

and against the Defendants for Federal Trademark/Trade Dress Infringement, Federal Unfair

Competition, and under the Common Law and award damages, plus prejudgment interest, post

judgment interest, and any other relief the Court deems just and proper, including, but not limited

to:

a) Compensatory damages or statutory damages;

b) A temporary, preliminary, and permanent injunction;

c) All costs and reasonable attorneys’ fees;

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d) Other remedies that the Court may award.

Dated: June 14, 2019

Respectfully submitted,

By: s/ Gustavo Sardiña

Frank Herrera
FL Bar No. 494801
fherrera@hnewmedia.com
Gustavo Sardiña
FL Bar No. 31162
g.sardina@hnewmedia.com
H NEW MEDIA LAW
1110 Brickell Avenue, Suite 506
Miami, Florida 33131
Tel.: (561) 841-6380

CERTIFICATE OF SERVICE

I hereby certify that, on this 14th day of June, 2019, in addition to service of the
summons pursuant to Fed.R.Civ.P. 4(c), I have caused this Complaint and its exhibits to be
sent to the Defendants at their regular place of business located at 3261 NW 82 Avenue, Doral,
Florida 33122 by registered overnight delivery via USPS.

By: s/ Gustavo Sardiña

Gustavo Sardiña

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