Dunlap Bennett & Ludwig, PLLC (DBL) announced today that it notched a victory for clients Swedish Match, Costco and Sam’s Club after a U.S. District Court judge in Miami, FL., ruled that the defendants did not infringe on another cigar manufacturer’s trademark.
In the case, Guantanamera Cigars Co. (GCC) alleged that the defendants infringed on its “DUO” trademark by using the word “duos” to market its WHITE OWL duos cigarillos. GCC owns an incontestable federal registration for DUO in Class 34 (tobacco and tobacco related products.) GCC sought the defendants’ profits trebled and attorney’s fees.
“Close, but no cigar,” U.S. Magistrate Judge Jonathan Goodman, wrote in his June 2, 2023 opinion.
After a four-day bench trial Judge Goodman ruled that Swedish Match prevailed in five of seven likelihood of confusion factors and its use of the word “duos” would not confuse ordinary purchases.
Judge Goodman also ruled in favor of defendants’ counterclaims seeking a declaratory judgement of noninfringement and fair use.
“GCC concedes that it has no evidence of even a single instance of actual confusion, which is often cited as among the most important of the seven factors,” Judge Goodman wrote in the 61-page opinion.
“Although Swedish Match respects the legitimate rights of trademark owners, it will vigorously defend against attempts to prevent it and its customers from lawfully and fairly using words appropriate for its products,” said Charles Cantine, lead counsel for the defendants and a DBL partner based in the firm’s New York office.
Joseph Diamante, a DBL partner, was co-lead counsel in the case.
GCC operates a boutique shop in Little Havana in Miami. GCC also sells its cigars in its shop and through the Internet.
In contrast, Swedish Match manufactured and sold a line of mass-market cigarillo sold in packs of two. The cigarillos were sold under the iconic WHITE OWL house mark, using the word “duos” to describe the two cigarillos that came in the pack.
“Weighing the evidence and each of these factors in totality, the Court concludes that consumers would not have been likely to be confused into thinking that the Swedish Match WHITE OWL products with the descriptor “duos” came from GCC,” Judge Goodman wrote.
About Dunlap Bennett & Ludwig
Dunlap Bennett & Ludwig is a veteran-owned law firm with outcome-focused attorneys advising and representing clients in national and international legal matters. DBL prides themselves on prioritizing practical and effective outcomes by offering a full array of legal services and investing in long-term relationships with their clients. To learn more about Dunlap Bennett & Ludwig and how we assist you, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.
