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Case 1:13-cv-23345-UU Document 1 Entered on FLSD Docket 09/17/2013 Page 1 of 11

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA

Plaintiff,

CASE NO.:

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Iconic Leaf Cigars, LLC.,
A Delaware Limited
Liability
Corporation,

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_______________________________)

v.
VINTAGE CIGAR DISTRIBUTORS
OF NEW ENGLAND, INC.,
A New Hampshire
Corporation,
and
KURT A. KENDALL,
An Individual,

Defendants.

COMPLAINT FOR TRADEMARK INFRINGEMENT

&

UNFAIR COMPETITION

Plaintiff Iconic Leaf Cigars, LLC., (“Iconic Leaf”) brings this
action against Defendant Vintage Cigar Distributors of New England,
Inc. and Kurt A. Kendall (collectively “Defendants”) seeking
injunctive relief and damages for Defendants' willful infringement in
violation of Section 43(a) of the Lanham Act and the Common Law.

PARTIES AND JURISDICTION

1. Iconic Leaf is a Delaware Limited Liability corporation with
its principal place of business located at 3705 N.W. 115th Avenue, Bay
5, Doral, Florida 33178.

2. Upon information and belief, Kurt A. Kendall is an individual

residing at 6 Manchester Street, Nashua, New Hampshire 03064.

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3. Upon information and belief, Vintage Cigar Distributors of
New England, Inc. is located and doing business at 128 Rockingham
Road, Londonderry, New Hampshire, 03053.

4. Defendants are conducting business within this jurisdiction

and are subject to the jurisdiction of this Court.

5. Jurisdiction is proper in this Court based upon 28 U.S.C.
Sections 1331, 1338(a), 1338(b) and this Court’s supplemental
jurisdiction.

6. Venue is proper in this Court based on 28 U.S.C. Section

1391.

Iconic Leaf’s Business and Trademark Rights

FACTUAL BACKGROUND

7. Iconic Leaf is a manufacturer of high quality cigars that are

distributed throughout the United States.

8. Over the past couple of years, Iconic Leaf created a cigar
line that emphasized a spider trade dress. Namely, Iconic Leaf
launched a cigar brand known as “RECLUSE” in 2012 (the “RECLUSE
mark”). To protect that brand, Iconic Leaf filed and obtained
Federal Trademark Registration, No. 4,280,753 (the “'753
Registration”). This Registration is alive and subsisting since
January 22, 2013 with a first use date in commerce at least as early
as July 7, 2012. A true and accurate copy of the Federal
Registration is attached hereto as Exhibit A.

9. Iconic Leaf identifies its RECLUSE cigar products with

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distinct product packaging bearing the image of a spider, spider
webs, and related spider designs. In order to protect those designs,
Iconic Leaf filed and obtained Federal Trademark Registration No.
4,314,523 (the “'523 Registration”) for the design of a spider (see
below). A true and accurate copy of the Federal Registration is
attached hereto as Exhibit B.

10.

Both, the '753 and the '523 trademarks, are inherently
distinctive, alive and subsisting, and Iconic Leaf enjoys priority of
use in the trademarks.

11.

Both of the trademarks have been used in connection with
Iconic Leaf's product packaging. A representative sampling of same is
seen below:

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DEFENDANTS' INFRINGING ACTIVITY


12. Defendants are engaged in the sale and distribution of cigars
known as 7-20-4. Recently, Iconic Leaf learned that Defendants'
intended to launch a cigar known as “SPIDER”. Upon learning same,
Iconic Leaf immediately contacted Defendants informing them of Iconic
Leaf's rights in RECLUSE and the spider design in connection with
cigars. The intended launch was announced well after Iconic Leaf's
first use date of its '753 and '523 trademarks for RECLUSE and the
design of a spider.
13. Defendants' recently released the image and product packaging

shown below in connection with the promotion and intended sale of
their SPIDER cigar:

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16. Defendants' SPIDER mark is a legal equivalent of Iconic

15. Defendants' SPIDER mark is a legal equivalent of Iconic


14. The above-image of the cigar box bearing the SPIDER mark and
design of spider web was filed as a “specimen of use” by Defendants
in connection with their trademark application for “K.A. KENDALL'S
SPIDER”. That application, Serial No. 85/790,213.

Leaf's RECLUSE marks.

Leaf's '523 Registration.

17. Defendants' use of a spider design is a direct infringement
of Iconic Leaf's Federal Registration No. '523 Registration for the
design of a spider in violation of 15 U.S.C. Sections 1117 and 1125.

18. Defendants did not have sufficient use in commerce, if any,
of its infringing mark SPIDER or spider design trademarks until after
Iconic Leaf's first use of its marks in commerce.
19. Therefore, Defendants use of the SPIDER trademark and spider

design trademarks is junior to Iconic Leaf’s superior rights in '753
and '523 marks.


20. Defendants' use of the infringing SPIDER trademark and

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spider-design trademark in connection with goods offered in United
States commerce is an infringement of Iconic Leaf’s rights in
violation of 15 U.S.C. Sections 1117 and 1125.

21. Upon information and belief, Defendants' infringement was
either willful or with reckless disregard of Iconic Leaf’s rights.
This allegation is based mainly in part because Defendants continued
with their infringing SPIDER and spider-design branded products in
light of the cease and desist letters sent to them informing them of
Iconic Leaf's rights.
22. Defendants' infringing activities have caused and will

continue to cause harm to Iconic Leaf’s sales, its good will, and the
reputation of Iconic Leaf’s products.

23. Defendants' infringing activities is causing and will
continue to cause a barrier to Iconic Leaf’s ability to maintain the
high-quality reputation for its products.
24. Upon information and belief, Defendants' products bearing the

infringing Trademark are of substantially lesser quality than Iconic
Leaf’s products. Even if such products are of similarity of quality,
as the owner of superior rights in the marks, Iconic Leaf can not
control such quality.

25. Iconic Leaf has never licensed nor otherwise authorized
Defendants to produce the SPIDER and spider-design trademark
products, or any derivatives thereof.


26. Iconic Leaf has never licensed nor otherwise authorized

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Defendant to use the distinctive trademark “RECLUSE” or the spider-
design trademarks, in connection with any goods or services.
27. Iconic Leaf’s remedies at law are not adequate to fully

compensate for the injury caused and continuously being caused by
Defendants' acts of infringement. Injunctive relief is therefore
necessary to prevent continuing and escalating damage and injury to
Iconic Leaf.

FIRST CLAIM FOR RELIEF

Common Law Trademark Infringement

28. Iconic Leaf realleges and incorporates the foregoing


allegations contained in paragraphs 1-26 as if fully stated herein.

29. Iconic Leaf owns common law trademark rights in the mark
“RECLUSE”, the spider-design trademark, and accompanying spider trade
dress as used in connection with high quality cigars.

30. Iconic Leaf’s trademark rights in the mark “RECLUSE”, the
spider-design trademark, and accompanying spider trade dress dates
back to early 2012.

and accompanying trade dress are inherently distinctive.

use of the infringing Trademarks.

33. Defendants' use of the infringing Trademark “SPIDER” and
spider-design is confusingly similar to Iconic Leaf’s mark “RECLUSE”,
spider-design trademark, and accompanying spider trade dress when the

31. Iconic Leaf’s “RECLUSE” trademark, spider-design trademark,

32. Iconic Leaf’s rights in the marks are superior to Defendants'

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following factors are weighed: (a) Iconic Leaf’s trademarks are
distinctive; (b) the marks are identical or legal equivalents; (c)
the goods are identical; (d) the parties’ customers are identical;
(e) the parties use similar means of advertising; and (f) actual
confusion will be shown in discovery.

34. Unless enjoined, Defendants' continued infringement of Iconic
Leaf’s spider marks and accompanying trade dress will cause
irreparable injury to Iconic Leaf. Iconic Leaf has no adequate
remedy at law.

above in an amount not yet known.

35. Iconic Leaf has been harmed by Defendants' conduct as alleged

SECOND CLAIM FOR RELIEF

Federal Trademark Infringement of '753 Mark

36. Iconic Leaf realleges and incorporates the foregoing


allegations contained in paragraphs 1-26 as if fully stated herein.
37. Iconic Leaf owns common law trademark rights in the mark

“RECLUSE”, (the '753 mark) as used in connection with high quality
cigars.

back to early 2012.


Defendants' use of the infringing Trademarks.


39. Iconic Leaf’s '753 mark is inherently distinctive.
40. Iconic Leaf’s rights in the '753 mark is superior to

38. Iconic Leaf’s trademark rights in the mark '753 mark dates

41. Defendants' use of the infringing Trademark “SPIDER” and

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spider-design is confusingly similar to Iconic Leaf’s '753 mark when
the following factors are weighed: (a) Iconic Leaf’s '753 mark is
distinctive; (b) the marks are identical or legal equivalents; (c)
the goods are identical; (d) the parties’ customers are identical;
(e) the parties use similar means of advertising; and (f) actual
confusion will be shown in discovery.

42. Unless enjoined, Defendants' continued infringement of Iconic
Leaf’s '753 mark will cause irreparable injury to Iconic Leaf. Iconic
Leaf has no adequate remedy at law.

above in an amount not yet known.

43. Iconic Leaf has been harmed by Defendants' conduct as alleged

THIRD CLAIM FOR RELIEF

Federal Trademark Infringement of '523 Mark

44. Iconic Leaf realleges and incorporates the foregoing


allegations contained in paragraphs 1-26 as if fully stated herein.
45. Iconic Leaf owns common law trademark rights in the mark

spider-design trademark (the '523 mark) as used in connection with
high quality cigars.

back to early 2012.


Defendants' use of the infringing Trademarks.
Defendants' use of the infringing Trademark “SPIDER” and spider-

47. Iconic Leaf’s '523 mark is inherently distinctive.
48. Iconic Leaf’s rights in the '523 mark is superior to

46. Iconic Leaf’s trademark rights in the mark '523 mark dates

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design is confusingly similar to Iconic Leaf’s '523 mark when the
following factors are weighed: (a) Iconic Leaf’s '523 mark is
distinctive; (b) the marks are identical or legal equivalents; (c)
the goods are identical; (d) the parties’ customers are identical;
(e) the parties use similar means of advertising; and (f) actual
confusion will be shown in discovery.

49. Unless enjoined, Defendants' continued infringement of Iconic
Leaf’s '523 mark will cause irreparable injury to Iconic Leaf. Iconic
Leaf has no adequate remedy at law.

above in an amount not yet known.
WHEREFORE, for the foregoing reasons, Iconic Leaf prays that:

50. Iconic Leaf has been harmed by Defendants' conduct as alleged

(a)

Defendants, its officers, agents, representatives,
employees, attorneys, and those persons acting in concert or in
participation with Defendants be preliminarily and permanently
enjoined from: infringing Iconic Leaf’s distinctive trademarks;
namely, directly or indirectly selling, distributing, or offering for
sale any products bearing the SPIDER trademark, or any spider-design
trademarks which are confusingly similar to Iconic Leaf's trademarks;
That Defendants be ordered to pay Iconic Leaf all damages

(b)

suffered as a result of its infringing activities;

(c)

That Defendants be ordered to disgorge all profits and
other gains obtained as a result of its wrongful acts of infringement
as described herein;

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(d)

That Defendants be ordered to pay to Iconic Leaf all

exemplary damages as provided by law;

(e)

That Defendants be ordered to pay Iconic Leaf its costs,

including reasonable attorneys’ fees; and

(f)

That the Court grant such other and further relief as may

be just and proper.

Iconic Leaf hereby demands trial by jury of all issues so

JURY DEMAND

triable.
_17_ day of September, 2013

s/FRANK HERRERA
Frank Herrera
Florida Bar No. 494801
H NEW MEDIA
55 S.E. 2nd Avenue
Suite 408
Delray Beach, Florida 33444
T.(561) 900-2486
F.(480) 247-5698
[email protected]
www.hnewmedia.com

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