Antigua Lawsuit Complaint Amended

Case 1:19-cv-23732-MGC Document 23 Entered on FLSD Docket 01/10/2020 Page 1 of 33
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA
CASE NO. 19-cv-23732
J.G.G. TOBACCO HOLDING COMPANY, INC.,

a Florida corporation,
Plaintiff,
vs.
ANTIGUA ESTELI TOBACCO, CORP.,

a California corporation, and
JORGE ARTURO GARCIA, an individual,
Defendants.
_______________________________________/
FIRST AMENDED COMPLAINT
Plaintiff, J.G.G. TOBACCO HOLDING COMPANY, INC., (hereinafter “Plaintiff”)
hereby files its First Amended Complaint, and sues Defendants, ANTIGUA ESTELI TOBACCO
CORP. (hereinafter “Defendant Antigua Esteli” or “Antigua”) and JORGE ARTURO GARCIA
(hereinafter “Defendant Garcia”) (collectively “Defendants”). Plaintiff alleges as follows:
NATURE OF THE ACTION
1. This is an action under the Federal Trademark Act, 15 U.S.C. §1051, et seq.
(“Lanham Act”), particularly 15 U.S.C. §§1114 and 1125(a), for trademark infringement, common
law trademark infringement, unfair competition, and cancellation of the Defendants’ U.S.
Registration.
THE PARTIES
2. Plaintiff is a Florida corporation duly organized and existing under the laws of
Florida, located at and doing business at 1890 N.W. 96th Avenue, Doral, Florida, 33172.
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3. Defendant Antigua Esteli is a California corporation with a principle place of
business at 3063 West Chapman, Suite 2205, Orange, California, 92868.
4. According to records filed with the State of California Secretary of State, Defendant
Garcia is an individual with an affiliated address of 3063 West Chapman, Suite 2205, Orange,
California, 92868.
5. Defendant Garcia is listed as the Chief Executive Office, Secretary, and Chief
Financial Officer of Defendant Antigua Esteli. Upon information and belief, Defendant Garcia
has the capacity to control the acts of Defendant Antigua Esteli, supervises and has the ability to
supervise the infringing activity thereof, has caused and is a motivating force in the infringing
activity set forth herein, and has a financial interest in and actually participated in the infringing
activity. Indeed, and as recently confirmed by the Defendants through sworn declarations [DE
16-1 and 16-2], Defendant Garcia is an “owner” of Defendant Antigua.
SUBJECT MATTER JURISDICTION AND VENUE
6. This is an action which is brought for trademark infringement and unfair
competition under the Lanham Act, 15 U.S.C. §§1125, et seq., and common law trademark
infringement and unfair competition. This Court has subject matter jurisdiction over this action
under Title 28 U.S.C. §§ 1331 and 1338 because this complaint alleges violations of federal law
under the Lanham Act.
7. This Court has jurisdiction over this action pursuant to 28 U.S.C. §§1331, 1338(a)
and 1338(b). This Court also has jurisdiction pursuant to 15 U.S.C. §1121 and the doctrine of
supplemental jurisdiction, as set forth in 28 U.S.C. §1367.
8. Venue is proper in this District pursuant to 28 U.S.C. §1391(b) and (c) because a
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substantial part of the events or acts giving rise to the claim occurred in this District, a substantial
part of the property that is the subject of the action (namely, Plaintiff’s intellectual property,
including its trademark rights) is situated in this District, and because the acts complained of also
have been and continue to be committed in this District.
9. Venue is also proper in this District because: (a) the impact of the Defendants’
misconduct has occurred in Plaintiff’s chosen district; and (b) Defendants solicit, transact, and are
doing business within the State of Florida, and Defendants’ products can be viewed and purchased
online by Florida residents (and specifically residents within this judicial district), as well as by
placing telephone orders and/or orders via e-mail.
10. The Southern District of Florida is an appropriate and more convenient forum to
adjudicate this dispute for many reasons, including but not limited to: (a) Plaintiff’s chosen forum
is entitled to substantial deference; (b) the Defendants’ designer of the Infringing Mark resides and
operates two (2) businesses within this judicial district; (c) the relative sources of proof (i.e. the
Plaintiff’s goods bearing its trademark, the Defendants’ goods bearing the Infringing Mark, the
Defendants’ retailers, etc.) are located within this judicial district; (d) Defendant Garcia,
individually and on behalf of Defendant Antigua, has traveled to Florida, and even has filed sworn
declarations that he flies to Miami, Florida; (e) as acknowledged by the Defendants, the
Defendants’ goods bearing the Infringing Mark are “shipped to Florida” and “distributed in
Miami;” and (f) the public interest factors weigh in favor of adjudicating the instant dispute in this
forum because Florida has a strong interest in protecting companies doing business in this state
(like the Plaintiff), and also as a strong public interest in protecting its consumers from confusion.
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PERSONAL JURISDICTION OVER THE DEFENDANTS
11. Defendants’ wrongful conduct – including but not limited to their willful trademark
infringement – occurred in this State and in this District. Upon information and belief, Defendants
solicit, transact, and are doing business within the State of Florida, and Defendants’ products can
be purchased by Florida residents over the Internet, and by phone, from websites operated by
Defendants and other retailers.
12. For example, Defendants have utilized and continue to utilize the infringing mark,
“ANTIGUA ESTELI” in connection with cigars (“Infringing Mark”), in commerce, including on
Defendants’ website,1 on YouTube®,2 on Twitter®,3 on Instagram®,4 and on Facebook®.5 See
Composite Exhibit A, which includes representative samples of Defendants’ use of the Infringing
Mark.
13. Defendants’ website and social media constitute fully interactive advertisements,
provide for the placement of orders of the underlying goods, and invite and target customers within
this State and Judicial District to enter into a commercial transaction, all of which establish a prima
facie case of jurisdiction over the Defendants. Furthermore, Defendants’ trademark infringement
– visibly evident on their website and social media – has caused and continues to cause injury in
Florida by virtue of their website’s and social media’s accessibility in Florida, as well as the
Defendants’ goods being marketed, advertised, offered for sale, and sold within the State of Florida
(including this judicial district).
1
https://antiguaesteli.com.
2
https://www.youtube.com/watch?v=RNwPE_GbJoY.
3
https://twitter.com/antiguaesteli?lang=en.
4
https://www.instagram.com/explore/tags/antiguaestelicigars/?hl=en.
5
https://www.facebook.com/AntiguaEsteli and https://www.facebook.com/groups/460355870838466.
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14. During the instant lawsuit, Defendants have recently represented to the Court under
penalty of perjury that they do not have “any sort of presence in Florida.” [DE 16-1 and 16-2].
That representation is false. Defendants’ website advertises the underlying goods, and in one
recent posting, Defendants instructed its customers “to get our cigars Online!,” and even instructed
customers to visit its “official retailer” known as Mardo Cigars, which is located in Florida:
[REMAINDER OF PAGE LEFT INTENTIONALLY BLANK]
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15. Indeed, and as shown on its website, Defendants’ “official retailer” (Mardo Cigars)
has a location in Florida at 4801 S. Tamiami Trail, Suite 3, Sarasota, Florida 34231:
16. The underlying goods are therefore not only available for physical purchase in
Florida, but as clearly displayed on Defendants’ official retailer’s website, the underlying goods
are also available online through an active website, and for immediate purchase by selecting a “box
of 21,” a “5-pack,” or a “single,” and adding those items to the checkout cart:
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17. During the instant lawsuit, Defendants have also recently represented to the Court
under penalty of perjury that they are not “conducting business within the State of Florida.” [DE
16-1 and 16-2]. According to at least the Defendants’ Facebook and Instagram accounts (among
other things), that representation is false.
18. As shown below from the “About Us” section from their Facebook page, the
Defendants’ goods bearing the Infringing Mark are “distributed in Miami, Florida:”
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19. Additionally, on June 15, 2019, Defendant Garcia, individually and on behalf of
Defendant Antigua, posted the following image and description on his Instagram account, stating
that the Defendants’ goods bearing the Infringing Mark – which are “the talk of 2019-2020-2021”
– are “getting ready to be shipped out to…Florida…Don’t get left behind order yours Today!”
20. During the instant lawsuit, Defendants have also represented under penalty of
perjury that “[p]otential customers cannot order Defendants’ products directly through
Defendants’…social media presence.” [DE 16-1 and 16-2]. Yet according to Defendants’ social
media presence (among other things), that representation is false.
21. Indeed, and as shown on the Defendants’ social media Instagram webpage, a
customer requested a box of cigars bearing the Infringing Mark from “Art” (i.e. Defendant Arturo
Garcia); in response, Defendant Garcia (individually and on behalf of Defendant Antigua)
responded that the customer can call the Defendants directly to purchase the underlying goods:
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22. Defendants have also interacted with individuals in Florida, including customers,
pertaining to the underlying goods bearing the Infringing Mark. As but one example, and on July
24, 2019, Defendants posted the following image to their Facebook account, and “liked” a Florida
customer’s question, asking where the Defendants’ products could be purchased:
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23. Additionally, on April 26, 2016, Defendants posted an image and description on
their Instagram page, announcing a promotional event, and stating: “Antigua Estli Cigars Proudly
Sponsors ‘The After Miami’ After Party.” The Defendants’ promotional event took place
approximately three (3) miles away from the Southern District of Florida Courthouse, namely at
Cafeina in Wynwood (297 NW 23rd Street, Miami, Florida 33127):
24. On the same day, April 26, 2016, Defendants linked the exact same image and
promotional event announcement to their Twitter page:
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25. During the instant lawsuit, both Defendants submitted sworn declarations under
penalty of perjury that they have not traveled to Florida in regards to Defendant Antigua’s business
interests. Specifically:
a. Defendant Antigua swore under penalty of perjury that “[n]o employee of

Antigua Esteli Corp. travels to Florida on behalf of Antigua Esteli Corp. for the
purposes of furthering any business interest of Antigua Esteli Corp., with the
exception of traveling to Miami Airport on the employee’s way to Nicaragua,
wherein the employee does not leave Miami Airport during his travel.”
b. Defendant Garcia also swore under penalty of perjury, as follows: “I do not

travel to Florida for any purpose related to Antigua Esteli Corp. or conducting
any business, except for a layover in Miami Airport on my way to Nicaragua
from time to time.”
[DE 16-1 and 16-2].
26. According to the Defendants’ social media page, their sworn representations are
false. As shown below, Defendants posted the following image below, and stated that they were
“[f]inishing a meeting in South Beach, Miami! Viva #AntiguaEsteli #AntiguaEsteliCigars
#AntiguaEsteliTobacco #MiamiLifestyle @antiguaestelicigars:
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Mango’s Tropical Café South Beach – where Defendants’ business meeting was located – is not
inside the Miami, Florida airport. Rather, Mango’s Tropical Café South Beach is located at 900
Ocean Drive, Miami Beach, Florida 33139.
27. Defendants’ social media post displayed in the paragraph immediately above was
“liked” by multiple Miami-based companies, including “NuffSaidMiami” (an entertainment news
website based in Miami, Florida), and “RoyalPremierGroup” (a travel concierge service based in
Miami Beach, Florida):
28. Defendants’ social media post was also re-posted to the Defendants’ Twitter
account, thereby publishing the same message to all of the Defendants’ Twitter followers:
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29. Contrary to Defendant Garcia’s sworn statement that he does not travel to Florida
– “except for a layover in Miami Airport on [his] way to Nicaragua from time to time” – the
photograph below shows Defendant Garcia in Tampa, Florida on January 31, 2019. Notably,
Defendant Garcia does not state that he is traveling to, or back from Nicaragua.6 Rather, Defendant
Garcia implies that his “route” is back to Los Angeles, California from Tampa, Florida, and even
writes, “Good Bye Tampa:”
30. Upon information and belief, and because Tampa, Florida (and specifically Ybor
City) is widely recognized as the “Cigar Capital of the World,”7 Plaintiff has a good faith basis to
allege that Defendant Garcia was in Tampa, Florida in furtherance of the Defendants’ cigar
business. Regardless, the fact that Defendant Garcia has once again placed himself in the State of
Florida undermines any notion of the Defendants’ purported “burden” by litigating in this forum.
6 According to the Tampa International Airport’s website, there are no direct flights from Tampa to Nicaragua. See
https://www.tampaairport.com/nonstop-flights-tpa.
7 https://www.nps.gov/nr/twhp/wwwlps/lessons/51ybor/51ybor.htm.
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31. Defendant Garcia, individually and on behalf of Defendant Antigua, has also
entered into business transactions within the State of Florida specifically for the purpose of, and
in furtherance to, developing and promoting the label for the Infringing Mark (to be placed on the
Defendants’ goods).
32. Specifically, Defendant Garcia, individually and on behalf of Defendant Antigua,
met with and retained the services of Miami-based designer and photographer, Manuel E. Iriarte
(“Mr. Iriarte”). As shown in the photograph below (posted by Defendant Garcia), Defendant
Garcia states that Mr. Iriarte is his “friend and designer of our brand
@antiguaestelicigars…#Miami:”
33. As reflected on www.sunbiz.org, as well as his personal Instagram page, Mr. Iriarte
is the “President of Iriarte Photography & Design, Inc.,” and also the “CEO & Founder of Manny
Iriarte Enterprises, LLC.” Both companies have a principal place of business located at 3604
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LeJuene Rd., Coral Gables, Florida 33134.
34. Defendants have also shipped, and/or instructed their agents to ship, the underlying
goods bearing the Infringing Mark into the State of Florida.
35. For example, Defendants’ goods bearing the Infringing Mark have been shipped to,
and are currently for sale at, a cigar store (“Cigar Boulevard”) that is located just twelve (12) miles
away from the Southern District of Florida’s courthouse.
36. Not only that, but Defendants’ goods bearing the Infringing Mark are sold right
alongside of the goods bearing the Plaintiff’s registered trademark. Specifically, at Cigar
Boulevard – which is located at 7792 NW 71st Street, Miami, Florida 33166 – Plaintiff sells its
goods bearing its registered trademark, LA ANTIGUEDAD, as shown on
www.cigarboulevard.com:
37. The Defendants’ goods bearing the Infringing Mark are similarly sold at the Cigar
Boulevard store in Miami, Florida. Inside the Cigar Boulevard store, customers can purchase the
Defendants’ goods bearing the Infringing Mark, which are currently on sale as recent as January
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9, 2020.
38. Upon information and belief, both the Defendants and their agents have caused the
Defendants’ products bearing the Infringing Mark to be advertised, offered for sale, and sold
within the State of Florida, and to customers within this District.
39. The Defendants’ infringement of Plaintiff’s LA ANTIGUEDAD mark has not
only caused injury to Plaintiff – which is a Florida based company headquartered within this
District, but has also had a negative effect and impact on Florida consumers, as the Defendants’
infringing mark causes consumer confusion and creates reliance on a false endorsement or
affiliation between the Plaintiff’s LA ANTIGUEDAD mark and the Defendants’ Infringing Mark.
40. Lastly, Defendants have engaged in wrongful conduct targeted and expressly aimed
at the Plaintiff, who the Defendants know is a resident of the State of Florida. Specifically, the
Defendants have long infringed, and continue to intentionally infringe on Plaintiff’s trademark
rights, notwithstanding their communications to Plaintiff that such infringement would cease.
41. Notably, and as discussed further below, the parties were previously engaged in
litigation before the Trademark Trial and Appeal Board (“TTAB”), whereby the Defendants were
on express notice that Plaintiff was a resident of the State of Florida:
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42. On June 15, 2018, and to induce Plaintiff to abandon the opposition proceeding
before the TTAB, Defendant Antigua Esteli (acting through Defendant Garcia) represented to
Plaintiff that Defendants did not intend to continue using the Infringing Mark. In reliance on the
Defendants’ representations, Plaintiff provided Defendant Antigua Esteli with its consent to
expressly abandon Defendants’ U.S. Trademark Application Serial No. 86/929,908. Four (4) days
later, on June 19, 2018, and with the consent of Plaintiff, Defendant Antigua Esteli filed with the
TTAB an express abandonment of U.S. Trademark Application Serial No. 88/929,908.
43. Notwithstanding the Defendants’ representation that they would cease use of the
Infringing Mark, Defendants’ use of the Infringing Mark continues to this day.
44. The State of Florida has a strong interest in affording companies located within the
state, such as Plaintiff, a forum to obtain relief from the intentional misconduct and willful
infringement of both Defendants, who have caused injury in the State of Florida.
45. Plaintiff also has an interest in obtaining relief in the State of Florida, where its
injuries have occurred, and where both the Plaintiff’s goods and the Defendants’ infringing goods
are advertised, marketed, offered for sale, and sold.
46. Both Defendants Antigua Esteli and Garcia are subject to the jurisdiction of this
Court, and Defendant Garcia is also individually subject to the jurisdiction of this Court, and
directly liable for the causes of action alleged herein because:
a. Upon information and belief, he is the sole director/officer of Defendant

Antigua Esteli, serving as its Chief Executive Officer, Secretary, and Chief
Financial Officer, and also an owner of the company.
b. Upon information and belief, he has purposely caused Defendant Antigua

Esteli to conduct business within the State of Florida with the intent of
infringing Plaintiff’s trademark rights as set forth herein;
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c. He has purposefully engaged in business meetings, promotional events, and

entered into contracts in the State of Florida with the intent of designing and
creating the Defendants’ infringing trademark, and also promoting,
advertising, and selling the Defendants’ goods bearing the infringing
trademark;
d. Upon information and belief, he has induced, caused and/or is a motivating

force behind the infringing activity alleged herein, and has a financial
interest in and/or actually participated in this infringing activity;
e. Upon information and belief, he is the primary decision-maker and the

driving force behind Defendant Antigua Esteli, has the capacity to direct
and control the acts of Defendant Antigua Esteli, has the ability to supervise
the acts of infringement alleged herein, and has personally participated in
the acts of infringement alleged herein; and
f. As a result of the foregoing, Defendant Garcia has caused injury to the

property of Plaintiff within this State, namely, Plaintiff’s trademark rights
as set forth herein.
47. Both general and specific personal jurisdiction are therefore proper over both
Defendants because:
a. Defendants’ website bearing the infringing trademark is available to anyone in the

world with internet access, including Florida residents, and specifically directs
individuals to purchase the Defendants’ goods at Defendants’ “official retailer” in
Florida. The Defendants’ website is an active website, as it contains phone
numbers, contact information, an email address, a “contact form” for customers to
fill out,” and links to the Defendants’ social media pages (where the Defendants
advertise, promote, and instruct customers “to call” the Defendants to purchase in
goods bearing the Infringing Mark). Furthermore, the Defendants’ website also
specifically directs customers to the Defendants’ “official retailer’s” active website,
where customers can purchase the Defendants’ goods directly through a standard
“add-item-to-shopping cart and checkout” procedure;
b. Defendants are engaged in substantial and not isolated activity within the State of
Florida, within the meaning of Fla. Sta. §48.193; and/or
c. Defendants have operated, conducted, engaged in, or carried on a business venture

in this State, from which this action arises, within the meaning of Fla. Stat. §48.193;
and/or
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d. Defendants have committed tortious acts within this State, including the acts of
intentional infringement and unfair competition as set forth herein, within the
meaning of Fla. Stat. §48.193; and/or
e. Defendants have caused injury to the property of Plaintiff within this State, namely,
Plaintiff’s trademark rights as set forth herein, arising out of acts or omissions by
Defendants outside of this State, while, at or about the time of the injury,
Defendants were engaged in solicitation or service activities within this State,
within the meaning of Fla. Stat. §48.193; and/or
f. Defendants have caused injury to the property of Plaintiff within this State, namely,
Plaintiff’s trademark rights as set forth herein, arising out of acts or omissions by
Defendants outside of this State, while, at or about the time of the injury,
Defendants’ products and materials (namely the cigars bearing the infringing
mark), which were processed and manufactured by the Defendants, were consumed
within this state in the ordinary course of commerce, trade, or use.
FACTUAL BACKGROUND
48. Since Approximately 2011, Plaintiff and/or its licensee, has been in the business of
manufacturing, importing, marketing, promoting for sale and distributing a variety of cigars. With
its headquarters located in Doral, Florida and factory in Esteli, Nicaragua, Plaintiff offers for sale
and distributes a variety of cigars.
49. Since at least as early as March of 2013, and long prior to any date upon which
Defendants may rely, the Plaintiff and/or its licensee has offered cigars (hereinafter “Plaintiff’s
Goods”) under the Mark “LA ANTIGUEDAD” (the “LA ANTIGUEDAD” Mark).
50. Plaintiff is the owner of U.S. Trademark Registration No. 4,350,843 for its “LA
ANTIGUEDAD” Mark for use in connection with cigars, which issued on June 11, 2013. See
Exhibit B.
51. Plaintiff’s Trademark Registration is incontestable in accordance with §§15 and
33(b) of the Lanham Act, 15 U.S.C. §§1065 and 1115(b).
52. Plaintiff and/or its through licensee has extensively marketed and offered its goods
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under its “LA ANTIGUEDAD” Mark in Florida and throughout the United States.
53. Plaintiff and/or through its licensee has invested substantial amounts of money,
time, and effort to advertise its goods bearing its “LA ANTIGUEDAD” Mark widely to the
purchasing public, long before Defendants’ acts complained of herein.
54. Plaintiff’s goods have come to be known to the purchasing public and the trade as
being of the highest quality and sold under the highest standard of customer service. As a result,
Plaintiff’s “LA ANTIGUEDAD” Mark, as well as the goodwill associated therewith, are of
tremendous value to Plaintiff.
55. Since long prior to the acts of Defendants complained of herein, Plaintiff’s “LA
ANTIGUEDAD” Mark has been readily recognizable by the public as associated exclusively with
Plaintiff. The purchasing public generally associates and identifies Plaintiff’s “LA
ANTIGUEDAD” Mark with the highest reputation and quality of Plaintiff’s goods.
56. Plaintiff’s “LA ANTIGUEDAD” Mark indicates the origin of Plaintiff’s goods and
are relied upon and recognized by the public as a symbol of and assurance as to the quality of
Plaintiff’s goods. As a result, Plaintiff’s “LA ANTIGUEDAD” Mark has acquired substantial
goodwill and are an extremely valuable asset.
DEFENDANTS’ INFRINGING AND UNLAWFUL ACTIVITIES
57. Plaintiff and Defendants are competitors in the business of manufacturing and
distributing cigars.
58. Upon information and belief, since approximately 2016, Defendants began
operating a competing business with offices located at 3063 West Chapman Avenue, Suite 2205,
Orange, California, 92868.
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59. Upon information and belief, since approximately 2016, Defendants began
promoting competing cigars under the Infringing Mark.
60. At the time of introduction of the Infringing Mark, Defendants were well aware that
the Plaintiff’s “LA ANTIGUEDAD” Mark was widely recognized and relied upon by the public
and the trade as identifying Plaintiff and its goods.
61. Notwithstanding that knowledge, and indeed because of that knowledge,
Defendants improperly used, and continue to improperly use, the Infringing Mark without
Plaintiff’s express permission, consent, and authorization.
62. Defendants have utilized and continue to utilize the Infringing Mark in commerce,
including on Defendants’ website,8 on YouTube®,9 on Twitter®,10 on Instagram®,11 and on
Facebook®.12 See Composite Exhibit A, which includes representative samples of Defendants’
use of the Infringing Mark.
63. Upon information and belief, Defendants have also continued to utilize the
Infringing Mark in commerce by advertising and promoting its competing cigars at national trade
shows, including the 2018 and 2019 International Premium Cigar & Pipe Retailers (“IPCPR”)
Trade Show in Las Vegas, Nevada.
8
https://antiguaesteli.com.
9
https://www.youtube.com/watch?v=RNwPE_GbJoY.
10
https://twitter.com/antiguaesteli?lang=en.
11
https://www.instagram.com/explore/tags/antiguaestelicigars/?hl=en.
12
https://www.facebook.com/AntiguaEsteli and https://www.facebook.com/groups/460355870838466.
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64. Upon information and belief, Defendants will continue to utilize the Infringing
Mark at national trade shows in the future, including but not limited to the 2019 Rocky Mountain
Cigar Festival in Broomfield, Colorado, and others.
65. Defendants have further utilized the Infringing Mark to promote their competing
products in magazines, including the September/October 2018 issue of Tobacco Business. See
Exhibit C.
66. Defendants’ repeated and unauthorized use of the Infringing Mark violates
Plaintiff’s trademark rights by, inter alia, creating confusion in the marketplace and encroaching
upon Plaintiff’s exclusive rights to its LA ANTIGUEDAD Mark.
67. Defendant’s Infringing Mark is confusingly similar to Plaintiff’s “LA
ANTIGUEDAD” Mark because, among other things: (1) the only distinctive term in the Infringing
Mark is the term “ANTIGUA,” which is nearly identical to the term “ANTIGUEDAD” in
Plaintiff’s incontestable “LA ANTIGUEDAD” Mark; (2) the products are competing cigars; (3)
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the channels of trade are the same or highly similar; and (4) the advertising channels are the same
or highly similar. Additional bases of the strong likelihood of confusion between the parties’ marks
– including actual confusion – will be further demonstrated through discovery.
68. Defendants’ use of the Infringing Mark is designed to and is likely to cause
confusion and mistake, to deceive customers and prospective customers as to the origin or
sponsorship of Defendants’ goods, and to cause them to falsely believe that Defendants’ goods are
the goods of Plaintiff, or are sponsored, licensed, authorized, or approved by Plaintiff, all to the
detriment of Plaintiff, the trade, and the public.
69. On or about March 4, June 2016, Defendant Antigua Esteli, filed U.S. Trademark
Application Serial No. 86/929,908 seeking to register the Infringing Mark, namely “ANTIGUA
ESTELI,” in connection with a logo design. See Exhibit D. Defendant Antigua Esteli’s claimed
dated of first use of the Infringing Mark is June 1, 2015. See Exhibit D. Defendant Antigua Esteli
entered a claim stating that “no claim is made to the exclusive right to use ‘Esteli’ apart from the
mark as shown.” See Exhibit D.
70. On August 11, 2016, Plaintiff (via counsel) sent Defendant Antigua Esteli a cease-
and-desist letter, demanding that Defendants discontinue their unlawful use of the Infringing Mark.
71. On January 20, 2017, Plaintiff (via counsel) filed a Notice of Opposition with the
Trademark Trial and Appeal Board (“TTAB”) against Application Serial No. 86/929,908, which
initiated Opposition Proceeding No. 91232378.
72. Defendant Antigua Esteli failed to file an Answer to the Notice of Opposition in
Opposition Proceeding No. 91232378.
73. Instead, further evidencing Defendants’ bad faith and willful intent, on October 25,
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2017, Defendant then filed U.S. Trademark Serial No. 87/659,922 for the mark, “EL DIAMANTE
DE LA SEGOVIAS ANTIGUA ESTELI ESTELI A E ESTELI NICARAGUA & Design” as
depicted below in connection with cigars, predominately featuring the terms “ANTIGUA
ESTELI” (incorporated under “Infringing Mark”).
74. As a result of Defendant Antigua Esteli failing to file an Answer to the Notice of
Opposition in Opposition Proceeding No. 91232378, on May 31, 2018 a Notice of Default was
entered in Opposition Proceeding No. 91232378.
75. On June 14, 2018, Defendant Antigua Esteli, (via counsel) requested Plaintiff’s
consent to expressly abandon Application Serial No. 86/929,908.
76. Furthermore, on June 15, 2018, Defendant Antigua Esteli (via counsel) expressed
that it did “…not intend to continue using this particular Trademark...” Based on Defendant
Antigua Esteli’s representations, Plaintiff provided Defendant Antigua Esteli with its consent to
expressly abandon U.S. Trademark Application Serial No. 86/929,908.
77. On June 19, 2018, with the consent of Plaintiff, Defendant Antigua Esteli (via
counsel), filed with the TTAB an express abandonment of U.S. Trademark Application Serial No.
88/929,908. See Exhibit E.
78. Notwithstanding Defendant Antigua Esteli’s express abandonment of U.S.
Trademark Application Serial No. 86/929,908, and its representations outlined above, Defendants
have continued their improper and unlawful use of the Infringing Mark.
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79. On September 28, 2018, and on June 25, 2019, Plaintiff (via counsel) sent
Defendant Antigua Esteli further cease-and-desist letters, demanding once again that Defendants
discontinue their unlawful use of the Infringing Mark.
80. To date, Defendants have failed to respond to Plaintiff’s letters.
81. Defendants’ continued and improper use of the Infringing Mark is willful.
82. The acts of Defendants complained of herein constitute intentional infringement,
are in total disregard of Plaintiff’s rights, and were commenced and will continue in spite of
Defendants’ knowledge that the use of the Infringing Mark is in direct contravention of Plaintiff's
rights.
83. Plaintiff has been damaged by Defendants’ acts of infringement.
84. Defendants’ aforesaid acts have caused and will continue to cause substantial and
irreparable injury to Plaintiff unless such acts are restrained by this Court.
85. Plaintiff has no adequate remedy at law.
COUNT I
Federal Trademark Infringement Under Lanham Act - 15 U.S.C. § 1114(1)
86. Plaintiff incorporates the allegations of Paragraphs 1 through 85 as if fully set forth
herein.
87. Plaintiff has used and continues to use Plaintiff’s “LA ANTIGUEDAD” Mark in
commerce in connection with Plaintiff’s goods.
88. Defendants have improperly used, and continue to use the Infringing Mark in
commerce.
89. Defendants’ use of the Infringing Mark in connection with competing goods is
likely to confuse the public as to the origin or source of Defendants’ goods.
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90. Defendants’ acts are likely to cause confusion, mistake, or deceive consumers into
believing that Defendants’ goods, bearing and/or referencing the Infringing Mark, are in some
manner approved by, associated with, sponsored by, or in some manner connected with Plaintiff.
91. Defendant’s acts constitute infringement, use of a confusingly similar mark which
is identical with, or substantially indistinguishable from, Plaintiff’s LA ANTIGUEDAD Mark, in
violation of and pursuant to 15 U.S.C. §1114.
92. Defendant’s acts have harmed Plaintiff’s reputation, damaged Plaintiff’s goodwill,
and upon information and belief, have and will continue to divert sales from Plaintiff.
WHEREFORE, Plaintiff prays that the Court grant the Prayer for Relief set forth below.
COUNT II
Unfair Competition Under Lanham Act - 15 U.S.C. § 1125(a) et seq.
herein.
94. Defendants are using the Infringing Mark in order to confuse the public into
believing that Defendants’ products have been authorized or sponsored by Plaintiff.
95. The public and/or any consumer of Plaintiff’s goods viewing the Defendants’ name,
business materials, website, and social media accounts, would likely purchase Defendants’
products based upon the misperception that Defendants are somehow affiliated with Plaintiff.
96. Defendants’ acts are likely to cause confusion, mistake, or deception, and have
already caused confusion, mistake, and deception, as to the origin, connection, association,
sponsorship, or approval of Defendants and Defendants’ products by or with Plaintiff and
Plaintiff’s goods and, thus, constitute unfair competition, false designation of origin, and/or false
description or representation in violation of §43(a) of the Lanham Act, 15 U.S.C. §1125(a).
26
COUNT III
Trademark Infringement under Florida Common Law
herein.
98. Defendants have used, in connection with the sale of goods, a term or name that is
false and misleading and likely to cause confusion, mistake, or deception, and has already caused
confusion, mistake, and deception, with the public as to the affiliation, connection or association
of Defendants with Plaintiff as to the origin, sponsorship or approval of its goods or commercial
activities in violation of common law.
99. Plaintiff owns and enjoys common law trademark rights in Plaintiff’s LA
ANTIGUEDAD Mark in Florida in conjunction with Plaintiff’s goods, which rights are superior
to any rights that Defendants may claim in and to the Infringing Mark.
100. The use of the Infringing Mark by Defendants is likely to cause and has caused
confusion as to the source of their products in that consumers thereof either have associated or will
likely associate such products as originating with Plaintiff, all to the detriment of the Plaintiff.
COUNT IV
Unfair Competition Under Florida Common Law
101. Plaintiff incorporates each and every allegation in Paragraphs 1 through 85, as if
fully set forth herein.
102. The Plaintiff first adopted and used Plaintiff’s LA ANTIGUEDAD Mark in its
market or trade area, as a means of establishing good will and reputation and to describe, identify
27
or denominate particular goods rendered or offered by the Plaintiff and to distinguish them from
similar goods rendered or offered by others.
103. Defendants have commenced the use of an identical or confusingly similar
trademark(s), to indicate or identify similar goods rendered by it in competition with Plaintiff in
the same trade area in which the Plaintiff has already established its trademark.
104. As a consequence of the Defendants’ actions, customer confusion as to the source
or as to the sponsorship of the goods offered by the Defendants is likely.
COUNT V
Cancellation of U.S. Registration No. 5,491,140
105. Plaintiff incorporates each and every allegation in Paragraphs 1 through 85, as if
fully set forth herein.
106. On or about October 25, 2017, Defendants filed U.S. Trademark Application Serial
No. 87/659,922 seeking to register the mark “EL DIAMANTE DE LA SEGOVIAS ANTIGUA
ESTELI ESTELI A E ESTELI NICARAGUA,” in connection with a logo design.
107. The applied-for mark in U.S. Trademark Application Serial No. 87/659,922 entirely
incorporates the Infringing Mark.
108. The U.S. Trademark Application disclaims exclusive use to the term “ESTELI.”
109. Further, U.S. Trademark Application Serial No. 87/659,922 claims use on “cigars,”
and claims a date of first use of January 31, 2016.
110. On June 12, 2018, U.S. Trademark Application Serial No. 87/659,922 matured into
U.S. Trademark Registration No. 5,491,140 (the “‘140 Registration”).
111. Defendants’ purported use of the mark under the ‘140 Registration was long after
Plaintiff’s use of its trademarks that is the subject of the dispute.
28
112. As alleged herein, Defendants’ use of the mark under the ‘140 Registration creates
consumer confusion and a false connection, association or affiliation with Plaintiff and Plaintiff’s
trademark, in violation of 15 U.S.C. §§ 1114(1) and 1125(a).
113. As alleged herein, Plaintiff’s trademark and the Defendants’ mark under the ‘140
Registration are confusingly similar, and the continued registration of the 140 Registration is
inconsistent with Plaintiff’s federal and common law rights in its trademark, and is damaging to
Plaintiff.
114. Plaintiff therefore seeks cancellation of the ‘140 Registration under 15 U.S.C.
§1119.
PRAYER FOR RELIEF
Plaintiff, J.G.G. Tobacco Holding Company, Inc., prays that this Court enter judgment in
Plaintiff’s favor on the claims set forth above and award Plaintiff the following relief:
a. That this Court will adjudge that the Plaintiff’s LA ANTIGUEDAD Mark has been
infringed, as a direct and proximate result of the willful acts of Defendants as set forth in this First
Amended Complaint, including Defendants’ use of the Infringing Mark, in violation of Plaintiff’s
rights under federal and state law.
b. That this Court will adjudge that Defendants have competed unfairly with Plaintiff
in violation of Plaintiff's rights under federal and state law.
c. That Defendants, and all officers, directors, agents, servants, employees, attorneys,
successors, and assigns, and all persons in active concert or participation therewith, be
preliminarily and permanently enjoined and restrained:
29
1) From using the Plaintiff’s LA ANTIGUEDAD Mark, the Infringing Mark, any
reproduction, infringement, copy or colorable imitation and any formative
variations or phonetic equivalents thereof, or any term, name or mark which
incorporates any of the foregoing, including “EL DIAMANTE DE LA SEGOVIAS
ANTIGUA ESTELI ESTELI A E ESTELI NICARAGUA,” or any trademark
similar thereto or likely to be confused therewith, in connection with the
distribution, marketing, advertising or sale of any unauthorized products;
2) From using any logo, trade name, or trademark which may be calculated to falsely
represent or which has the effect of falsely representing that the unauthorized goods
of Defendants are sponsored by, authorized by, or in any way associated with
Plaintiff and/or that the goods of Plaintiff are inferior to, copies of, infringing of or
imitations of the goods of Defendants, or that Defendants’ goods are the first or
original;
3) From infringing, contributing to, conspiring to, or inducing the infringement of the
Plaintiff’s LA ANTIGUEDAD Mark;
4) From doing any other act or thing likely to cause the public or the trade to believe
that there is any connection between Defendants and Plaintiff, or their respective
goods;
5) From falsely representing themselves or their affiliates as being connected with
Plaintiff, or sponsored by or associated with Plaintiff, or engaging in any act which
is likely to falsely cause the trade and/or members of the purchasing public to
believe that Defendants or their affiliates are associated with Plaintiff and/or that
30
Plaintiff is associated with Defendants or infringing upon any mark of the
Defendants in the use of Plaintiff’s LA ANTIGUEDAD Mark, and that Defendants
be prohibited from any and all use of Plaintiff’s LA ANTIGUEDAD Mark; and
6) From affixing, applying, annexing, or using in connection with the sale of any
goods sold by Defendants, a false description or representation including words or
other symbols tending to falsely describe or represent such goods as being those of
Plaintiff and from offering such goods in commerce.
d. That Defendants be required to transfer any applicable social media account to
Plaintiff, or in the alternative that Defendants be required to surrender for cancellation, any
applicable social media accounts, including, but not limited to
https://twitter.com/antiguaesteli?lang=en,
https://www.instagram.com/explore/tags/antiguaestelicigars/?hl=en,
https://www.facebook.com/AntiguaEsteli,
https://www.facebook.com/groups/460355870838466, and all other social media accounts
registered by Defendants, directly or indirectly, containing the Infringing Mark, or any
confusingly similar variations thereof.
e. That Defendants be required to recall and deliver up for destruction all goods,
boxes, labels, signs, prints, packages, wrappers, advertisements, and other written or printed
material in the possession or control of Defendants which bear the Plaintiff’s LA ANTIGUEDAD
Mark and/or the Infringing Mark, including but not limited to any formative variations or phonetic
or foreign equivalents thereof, or any term, name or mark which incorporates any of the foregoing,
or any Mark similar thereto or likely to be confused therewith, alone or in combination with any
31
other word or element, along with all plates, molds, matrices, and other means from making the
aforesaid items.
f. That Defendants be required to abandon or surrender, as applicable, all applications
and/or registrations pertaining to the Infringing Mark, including, but not limited to, U.S.
Trademark Registration No. 5,491,140 for the Mark “EL DIAMANTE DE LA SEGOVIAS
ANTIGUA ESTELI ESTELI A E ESTELI NICARAGUA.” In the alternative, and pursuant to 15
U.S.C. §1119, Plaintiff requests that the Court order the U.S. Patent & Trademark Office to deny
and/or cancel Defendant Antigua Esteli’s U.S. Trademark Registration No. 5,491,140, as
applicable, with prejudice.
g. That Defendants be directed to file with this Court and to serve upon Plaintiff within
thirty (30) days after service of the injunction issued in this action, a written report under oath,
setting forth in detail the manner of compliance with paragraphs (c) through (f).
h. That Plaintiff recover Defendants’ profits and the damages incurred by Plaintiff,
arising from Defendants’ acts of trademark infringement and unfair competition, and that the
Court, pursuant to §35 of the Lanham Act, 15 U.S.C. §1117, enter judgment.
i. That Plaintiff have and recover actual damages, including without limitation, such
sums as are necessary to place or compensate for corrective advertising.
j. That Plaintiff have and recover, pursuant to the laws of the State of Florida, and
common law, in addition to its actual damages, punitive damages in an amount which the Court
deems just and proper.
k. That Plaintiff have and recover both pre-judgment and post-judgment interest on
each and every damage award.
l. That Plaintiff have and recover its reasonable attorney fees incurred in this action,
32
pursuant to §35 of the Lanham Act, 15 U.S.C. §1117, and/or as otherwise authorized.
m. That Plaintiff have and recover its taxable costs and disbursements herein, pursuant
to §35 of the Lanham Act, 15 U.S.C. §1117, Fed. R. Civ. P. 54, and/or Fla. Stat. § 57.041, and/or
as otherwise authorized.
n. That Plaintiff have and recover such further relief as the Court may deem just and
proper.
JURY DEMAND
Plaintiff demands a trial by jury as to all issues triable of right by a jury.
Dated: January 10, 2020

Respectfully submitted,
s/Jonathan Woodard
John Cyril Malloy, III
Florida Bar No. 964,220
jcmalloy@malloylaw.com
Meredith Frank Mendez
mmendez@malloylaw.com
Jonathan Woodard
jwoodard@malloylaw.com
Jessica MacDonald
Florida Bar No.
jmcdonald@malloylaw.com
MALLOY & MALLOY, P.L.
2800 S.W. Third Avenue
Miami, Florida 33129
Telephone (305) 858-8000
Attorneys for Plaintiff
33

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Antigua Lawsuit Complaint Amended

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Case 1:19-cv-23732-MGC Document 23 Entered on FLSD Docket 01/10/2020 Page 1 of 33

UNITED STATES DISTRICT COURT

J.G.G. TOBACCO HOLDING COMPANY, INC.,

ANTIGUA ESTELI TOBACCO, CORP.,

FIRST AMENDED COMPLAINT

Plaintiff, J.G.G. TOBACCO HOLDING COMPANY, INC., (hereinafter “Plaintiff”)

(hereinafter “Defendant Garcia”) (collectively “Defendants”). Plaintiff alleges as follows:

NATURE OF THE ACTION

3. Defendant Antigua Esteli is a California corporation with a principle place of

business at 3063 West Chapman, Suite 2205, Orange, California, 92868.

16-1 and 16-2], Defendant Garcia is an “owner” of Defendant Antigua.

SUBJECT MATTER JURISDICTION AND VENUE

6. This is an action which is brought for trademark infringement and unfair

under the Lanham Act.

supplemental jurisdiction, as set forth in 28 U.S.C. §1367.

have been and continue to be committed in this District.

placing telephone orders and/or orders via e-mail.

PERSONAL JURISDICTION OVER THE DEFENDANTS

Defendants and other retailers.

“ANTIGUA ESTELI” in connection with cigars (“Infringing Mark”), in commerce, including on

Defendants’ website,1 on YouTube®,2 on Twitter®,3 on Instagram®,4 and on Facebook®.5 See

(including this judicial district).

[REMAINDER OF PAGE LEFT INTENTIONALLY BLANK]

other things), that representation is false.

media presence (among other things), that representation is false.

Garcia); in response, Defendant Garcia (individually and on behalf of Defendant Antigua)

customer’s question, asking where the Defendants’ products could be purchased:

Cafeina in Wynwood (297 NW 23rd Street, Miami, Florida 33127):

promotional event announcement to their Twitter page:

a. Defendant Antigua swore under penalty of perjury that “[n]o employee of

b. Defendant Garcia also swore under penalty of perjury, as follows: “I do not

[DE 16-1 and 16-2].

“[f]inishing a meeting in South Beach, Miami! Viva #AntiguaEsteli #AntiguaEsteliCigars

#AntiguaEsteliTobacco #MiamiLifestyle @antiguaestelicigars:

Ocean Drive, Miami Beach, Florida 33139.

“liked” by multiple Miami-based companies, including “NuffSaidMiami” (an entertainment news

Miami Beach, Florida):

writes, “Good Bye Tampa:”

32. Specifically, Defendant Garcia, individually and on behalf of Defendant Antigua,

LeJuene Rd., Coral Gables, Florida 33134.

goods bearing the Infringing Mark into the State of Florida.

away from the Southern District of Florida’s courthouse.

goods bearing its registered trademark, LA ANTIGUEDAD, as shown on

within the State of Florida, and to customers within this District.

39. The Defendants’ infringement of Plaintiff’s LA ANTIGUEDAD mark has not

on express notice that Plaintiff was a resident of the State of Florida:

TTAB an express abandonment of U.S. Trademark Application Serial No. 88/929,908.

are advertised, marketed, offered for sale, and sold.

directly liable for the causes of action alleged herein because:

a. Upon information and belief, he is the sole director/officer of Defendant

b. Upon information and belief, he has purposely caused Defendant Antigua

c. He has purposefully engaged in business meetings, promotional events, and

d. Upon information and belief, he has induced, caused and/or is a motivating

e. Upon information and belief, he is the primary decision-maker and the

f. As a result of the foregoing, Defendant Garcia has caused injury to the

a. Defendants’ website bearing the infringing trademark is available to anyone in the

c. Defendants have operated, conducted, engaged in, or carried on a business venture

and distributes a variety of cigars.

51. Plaintiff’s Trademark Registration is incontestable in accordance with §§15 and

33(b) of the Lanham Act, 15 U.S.C. §§1065 and 1115(b).

purchasing public, long before Defendants’ acts complained of herein.

tremendous value to Plaintiff.

goodwill and are an extremely valuable asset.

DEFENDANTS’ INFRINGING AND UNLAWFUL ACTIVITIES

Orange, California, 92868.

promoting competing cigars under the Infringing Mark.

and the trade as identifying Plaintiff and its goods.