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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

Case No. ______________________

SIBONEY CORPORATION,
a Florida corporation, d/b/a
BLUE MOUNTAIN CIGARS,

Plaintiff,

vs.

THAT CUBAN CIGAR SPOT, INC.,

a Florida corporation, d/b/a CIGAR
BUNDLES OF MIAMI AND LOUNGE,

Defendant.
__________________________________/

COMPLAINT

Plaintiff SIBONEY CORPORATION d/b/a BLUE MOUNTAIN CIGARS (“Siboney” or

“Plaintiff”), by and through undersigned counsel, hereby files its Complaint against THAT

CUBAN CIGAR SPOT, INC., d/b/a CIGAR BUNDLES OF MIAMI AND LOUNGE (“Bundles”

or “Defendant”) and alleges as follows:

NATURE OF THE CASE

1. Siboney brings this action in law and in equity for infringement of Siboney’s

distinctive and registered trade dress, false designation of origin, as well as unfair competition

under both federal law and common law.

JURISDICTION AND VENUE

2. This Court has jurisdiction over this action pursuant to 15 U.S.C. §1121 (actions

arising under the Lanham Act), 28 U.S.C. §1338(a) (acts of Congress relating to trademarks), 28

U.S.C. §1338(b) (pendant unfair competition claims) and 28 U.S.C. §1367 (supplemental

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jurisdiction). Furthermore, Plaintiff has directed sales into this State and purposefully availed

itself of the laws of this state.

3. Venue is proper in the Southern District of Florida pursuant to 28 U.S.C. §1391(b)

because substantial parts of the events and/or omissions giving rise to the claims asserted herein

occurred in the Southern District of Florida, and the Defendant, upon information and belief,

transact business in this District. Indeed, Bundle’s own website,

https://www.cigarbundlesofmiami.com/, showcases an address in this District (at 405 SE 1st

Avenue, Florida City, Florida 33034).

PARTIES

4. Siboney is a Florida corporation with its principal offices in Hialeah Gardens,

Florida.

5. Bundles is a Florida entity with a principal place of business located at 405 SE 1st

Ave., Florida City, Florida, 33034. Bundles’ registered agent for service of process is Alex V.

Herrada, at the same address.

6. This Court has personal jurisdiction over Defendant by virtue of, among other

bases, its office(s) in Florida,its transacting of business in the State of Florida, its engagement in

tortious acts within the State of Florida and elsewhere, and its overall contacts with the State of

Florida; all commensurate with the United States and Florida Constitutions, so as to submit itself

to the jurisdiction and process of this Court.

FACTUAL BACKGROUND AND GENERAL ALLEGATIONS

I. Siboney’s House Mark Blue Mountain and the Cigar Trade Dress

7. For twenty-five years, Siboney has sold cigars, tobacco, and other smoking-related

products across the United States under the name and house mark BLUE MOUNTAIN CIGARS.

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8. Siboney owns U.S. Trademark Registration No. 5737549 (the “Cigar Trade Dress”)

in International Class 34 for cigars, same being registered on April 30, 2019. The date of first use

in commerce of the Cigar Trade Dress was November 18, 2010. A true and correct copy of a

printout from the U.S. Patent and Trademark Office’s online database showing the status of the

Cigar Trade Dress is attached hereto as EXHIBIT A.

9. The Cigar Trade Dress consists of the colors brown, dark brown, and black applied

to the wrapper leaves of a cigar, as follows:

The Cigar Trade Dress is also described as a “three-toned cigar” that is unique in the cigar industry.

10. The Cigar Trade Dress is well-known and is colloquially referred to by the public

and by Siboney as “The Threesome” –a term which emphasis the three-tone-look of Plaintiff’s

cigars as an identifier of origin, as shown below:

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11. As a result of the uniqueness of the Cigar Trade Dress, same has received

significant publicity. The following is a sample of the notoriety that the Cigar Trade Dress has

garnered in the minds of consumers and media outlets:

• The cigar is definitely noticeable with its three distinct wrappers.

https://www.leafenthusiast.com/leaf/

• The appearance is unique among the cigars sold in most shops.

https://www.leafenthusiast.com/leaf/short-take-threesome-blue-mountain-cigars/

• Covered by three different wrappers this El Threesome is a real eye catcher.

http://www.cigarandcoffee.com/2014/08/blue-mountain-cigars-el-threesometoro.html

• The Blue Mountain El ThreeSome is one of the most unique cigars that I have ever
smoked. This cigar is actually three cigars in one, as each section is made with a different
wrapper and a different blend of filler tobaccos. http://cigarczars.com/review/elthreesome-
cigar.htm

• The tri-colored wrapper has a unique and very rich appearance.

https://theaveragejoescigar.com/2016/08/26/very-elegant-bmc-blue-mountain-cigar-
elthreesome-cigar-review/

• The Blue Mountain El Threesome cigar … looks and smokes like no other cigar.
https://www.thoughtco.com/top-unique-cigars-719729

• In truth, this is an excellent Cigar and to my knowledge the only one of its kind available.
This stick has three wrappers (thus the name, Threesome).
http://mysideofthebar.blogspot.com/2013/11/blue-mountain-cigars.html

12. Thus, in the years since Siboney adopted and used the Cigar Trade Dress, the three-

tone cigar has developed secondary meaning as a source-identifier. Moreover, Siboney has spent

significant sums marketing and advertising its products, including those sold with the Cigar Trade

Dress.

13. Simply put, products sold by Siboney under the house mark BLUE MOUNTAIN

CIGARS –and those sold with the Cigar Trade Dress—have a wide reputation for excellence

across smokers and enthusiasts.

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14. Siboney has been –and is—the registrant and owner of the registration for the Cigar

Trade Dress at all times discussed herein. Additionally, before registration of the Cigar Trade

Dress on the Principal Register of the United States Patent & Trademark Office, Siboney was the

owner of Registration No. 4540781 in International Class 34 for cigars, same being registered on

the Supplemental Register on May 27, 2014.

15. Siboney has been using the Cigar Trade Dress in interstate commerce since before

either of the aforementioned registration dates.

16. Siboney has spent significant sums marketing and offering products featuring the

Cigar Trade Dress, which has given rise to consumer demand for said products. Marketing and

promotion for products sold with the Cigar Trade Dress include Internet and print advertising in

the United States, including at the website address

https://www.bluemountaincigars.com/product/el-threesome-3/.

II. The Defendant’s Business and Infringing Conduct

17. Bundles is a company based in Miami-Dade County that sells cigars that infringe

upon Siboney’s Cigar Trade Dress. Such infringing products have been sold in interstate

commerce and are illustrated below:

“Green Trifecta By Cigar Bundles of Miami”

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“Trifecta Series B”

These products are currently for sale on Bundles’ website at the addresses

https://www.cigarbundlesofmiami.com/green-trifecta-by-cigar-bundles-of-miami/ and

https://www.cigarbundlesofmiami.com/brands/MCB-MADE-IN-MIAMI.html.

18. Not only do the “Trifecta Series B” cigars (shown above) infringe upon Siboney’s

Cigar Trade Dress, Bundles describes same as “MCB MADE IN MIAMI.” In fact, they dedicate

a whole web page to “MCV” in which they show they show the infringing cigars:

https://www.cigarbundlesofmiami.com/brands/MCB-MADE-IN-MIAMI.html.

19. “MCB” is merely a scrambling of Siboney’s BLUE MOUNTAIN CIGARS

acronym (“BMC”), which is displayed prominently on Siboney’s products, as follows:

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20. Moreover, since Siboney’s BLUE MOUNTAIN CIGARS are known to be made in

Miami-Dade County, use of that description for the infringing “Trifecta Series B” as “MCB

MADE IN MIAMI” is an obvious attempt to create a false association with Siboney’s BLUE

MOUNTAIN CIGARS.

21. As described above, the unlicensed and unauthorized use in commerce of the Cigar

Trade Dress by Defendant has caused a likelihood of consumer confusion and is likely to continue

causing same.

22. In mid- 2018, Siboney discovered that Bundles has been selling –and is continuing

to sell—products infringing upon Siboney’s Cigar Trade Dress. As such, on or about October 19,

2018, Siboney sent a cease and desist letter to Bundles. A true and correct copy of the October

19th, 2018 letter is attached herein as EXHIBIT B.

23. An image of another product that infringes the Cigar Trade Dress is embedded in

the October 19th, 2018 letter. See EXHIBIT B.

24. On October 25, 2018, an attorney sent an initial communiqué responding to

Siboney’s October 18th letter on behalf of Bundles, stating that “[w]e represent the manufacturer

of the accused cigar that is the subject of the demand letter.”

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25. Siboney waited for the mark to register and has discovered that Bundles continues

its infringing of subject the trade dress. Siboney is seeking relief against this ongoing

infringement.

III. Damages and injunctive relief are needed and justified to make Siboney whole
and to prevent irreparable harm to the Cigar Trade Dress.

26. Defendant’s actions have infringed upon Siboney’s rights in the Cigar Trade Dress

by blurring their distinctiveness and engaging in conduct which was designed to—and actually

did—secure for Defendant the good will associated with and attributable to the Cigar Trade Dress.

27. The goodwill associated with the Cigar Trade Dress is/are being, and will continue

to be, negatively and severely impacted if Defendant is not prohibited from engaging in the

aforementioned activity. Said harm is irreparable to the good will of Siboney’s Cigar Trade Dress

and creates a likelihood of consumer confusion about the origin of products, the sponsorship of

products, and the association between sources.

28. Defendant’s actions clearly demonstrate a likelihood that Defendant will continue

to harm Siboney’s Cigar Trade Dress, and as such, that Siboney would be harmed if an injunction

were not to issue. The high probability of harm is clearly evinced by the infringing sales and

advertising that Defendant have purposefully and continuously engaged in.

29. Siboney believes that if Defendant is not enjoined from such conduct, its actions

could cause irreparable harm to its reputation and to the valuable goodwill in the Cigar Trade

Dress.

30. Siboney has been forced to retain counsel and incur legal fees and costs as a result

of the actions of Defendant.

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31. Siboney is entitled to recover its attorneys’ fees based upon Defendant’s willful,

wanton, and reckless conduct, which renders the instant case “exceptional” as defined in 15 U.S.C.

§1117(a) (Lanham Act § 35).

32. All conditions precedent to this action have been satisfied, waived, excused, or

performance would be futile.

COUNT I
TRADE DRESS INFRINGEMENT – LANHAM ACT § 32

33. Siboney re-alleges paragraphs 1 through 32 as if they were specifically set forth

herein and further alleges as follows.

34. Siboney is the owner of a federal trademark registration for the Cigar Trade Dress,

which is inherently distinctive. Siboney’s Cigar Trade Dress has been used in interstate commerce

for goods for an extended period both prior to and subsequent to registration with the U.S. Patent

& Trademark Office.

35. As a result of the registration of Siboney’s Cigar Trade Dress, extensive use of the

Cigar Trade Dress in interstate commerce, and widespread marketing and advertising of products

sold in conjunction with the Cigar Trade Dress, Siboney has created a strong association in the

minds of consumers between the Cigar Trade Dress and the goods relating to same. The Cigar

Trade Dress thus operates as a source-identifier for the origin of goods displaying the Cigar Trade

Dress.

36. Without Siboney’s authorization, consent, and without any license whatsoever

from Siboney, Defendant has used (and continues to use) the Cigar Trade Dress on its own

products, to sell its own products bearing the Cigar Trade Dress, and to improperly create an

association between Siboney, its BLUE MOUNTAIN CIGARS house mark, Siboney’s Cigar

Trade Dress, and Defendant.

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37. Defendant’s acts have caused a likelihood of consumer confusion and have

deceived consumers as to the source, sponsorship, endorsement, and affiliation of the goods

manufactured and/or sold by Defendant and have deceived consumers into believing that said

goods are associated with, endorsed, sponsored, or authorized by Siboney and its brand.

38. As a result of Defendant’s aforementioned conduct and activities, Siboney has

suffered monetary and other damages.

39. Defendant’s unlawful acts have been willful, wanton, and intended to benefit

Defendant at Siboney’s expense and the expense of its brand.

40. Defendant’s acts constitute trademark/trade dress infringement in violation of 15

U.S.C. § 1114 (Lanham Act, § 32).

41. There is no adequate remedy at law to fully compensate Siboney and make it whole

for the damages that have been caused by Defendant’s unlawful acts and any subsequent and

additional infringement of Siboney’s Cigar Trade Dress by Defendant, unless future unlawful acts

and infringement of this nature are permanently enjoined by this Court.

42. All of Defendant’s infringing activities have been performed through use in

interstate commerce.

43. Given all of the aforementioned, this is an exceptional case under 15 U.S.C. § 1117.

COUNT II
COMMON LAW TRADE DRESS INFRINGEMENT

44. Siboney re-alleges paragraphs 1 through 32 as if they were specifically set forth

herein and further alleges as follows.

45. Siboney is the owner of the Cigar Trade Dress, which is inherently distinctive.

Siboney’s Cigar Trade Dress has been used in both intrastate and interstate commerce for goods

for an extended period.

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46. As a result of Siboney’s extensive use in commerce of the Cigar Trade Dress, and

widespread marketing and advertising of the Cigar Trade Dress and corresponding products,

Siboney has created a strong association in the minds of consumers between the corresponding

trade dress and the goods sold under them.

47. Without Siboney’s authorization, consent, and without any license whatsoever

from Siboney, Defendant has used (and continues to use) the Cigar Trade Dress on their own

products, to sell their own products bearing the Cigar Trade Dress, and to improperly create an

association between Siboney, its BLUE MOUNTAIN CIGARS house mark, Siboney’s Cigar

Trade Dress, and Defendant.

48. Defendant’s acts have caused a likelihood of consumer confusion and have

deceived consumers as to the source, sponsorship, endorsement, and affiliation of the goods

manufactured and/or sold by Defendant and have deceived consumers into believing that said

goods are associated with, endorsed, sponsored, or authorized by Siboney and its brand.

49. As a result of Defendant’s aforementioned conduct and activities, Siboney has

suffered monetary and other damages.

50. Defendant’s unlawful acts have been willful, wanton, and intended to benefit

Defendant at Siboney’s expense and the expense of its brand.

51. Defendant’s acts constitute trademark infringement in violation of Florida law.

52. There is no adequate remedy at law to fully compensate Siboney and make it whole

for the damages that have been caused by Defendant’s unlawful acts and any subsequent and

additional infringement of Siboney’s Cigar Trade Dress by Defendant, unless future unlawful acts

and infringement of this nature are permanently enjoined by this Court.

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COUNT III
FALSE DESIGNATION OF ORIGIN AND
UNFAIR COMPETITION – LANHAM ACT § 43(a)

53. Siboney re-alleges paragraphs 1 through 32 as if they were specifically set forth

herein and further alleges as follows.

54. Defendant’s above-referenced activities cause irreparable injury to Siboney in

violation of 15 U.S.C. § 1125(a) (Lanham Act, §43(a)). As such, this Count arises under an action

for damages and injunctive relief pursuant to a violation of the federal laws on false designation

of origin, and unfair competition, namely, the Lanham Act, 15 U.S.C. § 1125(a).

55. Defendant’s conduct has deceived –and unless restrained will continue to

deceive—the consumers and the public at large, and Defendant’s conduct has injured and (unless

restrained) will continue to injure Siboney and the public, including consumers, causing damages

in an amount to be determined at trial, as well as other irreparable injury to the goodwill and

reputation of Siboney, its BLUE MOUNTAIN CIGARS house mark, and Siboney’s Cigar Trade

Dress.

56. Defendant’s conduct has been designed to limit the competition it received from

Siboney, as well as to unfairly compete with Siboney by latching onto the good will of the Cigar

Trade Dress and Siboney’s BLUE MOUNTAIN CIGARS house mark by creating false and

misleading associations. All of the aforementioned conduct by Defendant is utterly unjust and

unfair.

57. Defendant’s actions have caused mistake, have deceived as to affiliation,

connection, and association with Siboney, its trade dress and trademarks, and Siboney’s products,

and have deceived as to the origin, sponsorship, and approval of Defendant’s products by Siboney

and its brand(s).

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58. Defendant has also engaged in commercial advertising and promotions that

misrepresent the nature, characteristics, and qualities of their products by improperly associating

their products with Siboney’s goods and commercial activities.

59. There is no adequate remedy at law to fully compensate Siboney and make it whole

for the damages that have been caused by Defedants’ unlawful acts and any subsequent and

additional unfair competition by Defendant, unless future unlawful acts and unfair competition of

this nature are permanently enjoined by this Court.

60. All of Defendant’s improper activities have been performed through use in

interstate commerce.

61. Siboney has been damaged by Defendant’s bad acts.

62. Given all of the aforementioned, this is an exceptional case under 15 U.S.C. § 1117.

COUNT IV
UNFAIR COMPETITION – FLORIDA LAW

63. Siboney re-alleges paragraphs 1 through 32 as if they were specifically set forth

herein and further alleges as follows.

64. Defendant’s above-referenced activities cause irreparable injury to Siboney.

65. Defendant’s conduct has deceived –and unless restrained will continue to

deceive—the consumers and the public at large, and Defendant’s conduct has injured and (unless

restrained) will continue to injure Siboney and the public, including consumers, causing damages

to Siboney in an amount to be determined at trial, as well as other irreparable injury to the goodwill

and reputation of Siboney’s Cigar Trade Dress and Siboney’s brand(s).

66. Defendant’s conduct has been designed to limit the competition it received from

Siboney, as well as to unfairly compete with Siboney by latching onto the good will of Siboney’s

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Cigar Trade Dress and Siboney and its brand(s) by creating false and misleading associations. All

of the aforementioned conduct by Defendant is utterly unjust and unfair.

67. Defendant’s actions have caused mistake, have deceived as to affiliation,

connection, and association with Siboney, its trademarks, and its products, and have deceived as

to the origin, sponsorship, and approval of Defendant’s products by Siboney and its brand(s).

68. Defendant have also engaged in commercial advertising and promotions that

misrepresent the nature, characteristics, and qualities of its products by improperly associating its

products with Siboney’s goods, Siboney’s Cigar Trade Dress, and Siboney’s commercial

activities.

69. There is no adequate remedy at law to fully compensate Siboney and make it whole

for the damages that have been caused by Defendant’s unlawful acts and any subsequent and

additional unfair competition by Defendant, unless future unlawful acts and unfair competition of

this nature are permanently enjoined by this Court.

70. All of Defendant’s improper activities have been performed through use in

intrastate and interstate commerce.

71. Siboney has been damaged by Defendant’s bad acts.

WHEREFORE, Siboney respectfully requests that:

(a) That Defendant, its agents, servants, employees, predecessors, successors, assigns,

business entities and affiliates, and all others acting in concert, participation or privity with

Defendant (individually and/or collectively), be enjoined during the pendency of this action and

permanently from using a trademark, trade dress, service mark or trade name, that comprises in

whole or in part Siboney, Siboney’s Cigar Trade Dress, BLUE MOUNTAIN CIGARS or any other

substantially similar terms or trade dress which are likely to cause confusion with Siboney’s

intellectual property;
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(b) The Court enter judgment in favor of Siboney against Defendant for trade dress

infringement in violation of 15 U.S.C. § 1114 (Lanham Act, § 32);

(c) The Court, pursuant to § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), award

Siboney damages, and require that Defendant pay to Siboney the damages which it has sustained

as a result of Defendant’s acts complained of herein and that such damages be trebled;

(d) The Court, pursuant to § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), enter an

order disgorging Defendant of profits received and to be received by Defendant from the

distribution and sale of any products offered by Defendant through the use of Siboney’s Cigar

Trade Dress;

(e) The Court enter judgment in favor of Siboney and against Defendant that Defendant

has engaged in unfair competition in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),

and that Defendant has engaged in common law unfair competition and has injured Siboney;

(f) That Defendant be required to recall from distribution and surrender for destruction

all products, order forms, price lists, labels, advertisements, brochures, catalogs, packaging

materials and other materials incorporating or imitating Siboney’s Cigar Trade Dress;

(g) That Defendant, their agents, servants, employees, predecessors, successors,

assigns, business entities and affiliates, and all others acting in concert, participation or privity

with Defendant (individually and/or collectively), be ordered to surrender to Siboney any materials

branded with Siboney’s Cigar Trade Dress and/or any marks or branding treading upon Siboney’s

goodwill or creating a false association therewith;

(h) The Court, pursuant to § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), find this

case exceptional, requiring Defendant to pay Siboney both the costs of this action and the

reasonable attorneys’ fees incurred by it;

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(i) That Siboney be granted such other and further relief as the Court deems equitable,

just and proper under the circumstances.

Dated: July 1, 2020 Respectfully submitted,

By: /s/Jorge Espinosa

Jorge Espinosa
Fla. Bar No. 779032
[email protected]
Francesca Russo
Fla. Bar No. 174912
[email protected]
Robert R. Jimenez
Fla. Bar. No. 72020
[email protected]
GRAY|ROBINSON, P.A.
333 S.E. 2nd Ave., Suite 300
Miami, FL 33131
Tel: 305-416-6880
Fax: 305-416-6887
Attorneys for Plaintiff

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