JS 44 (Rev.

04/21) Case 1:22-cv-00773 Document 1 Filed SHEET

CIVIL COVER 07/11/22 Page 1 of 25 PageID# 1
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
Fuente Cigar Ltd.
General Cigar Co., Ltd.
Fuente Marketing Ltd.
(b) County of Residence of First Listed Plaintiff Henrico County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Janet F. Satterthwaite, VSB No. 26759
Potomac Law Group, PLLC, 1300 Pennsylvania Avenue, NW, Suite 700,
Washington, DC 20004; 202-486-1578

II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government ✖ 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place ✖ 4 4
of Business In This State

2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State

Citizen or Subject of a 3 ✖ 3 Foreign Nation 6 6

Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 3729(a))
140 Negotiable Instrument Liability 367 Health Care/ INTELLECTUAL 400 State Reapportionment
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking
151 Medicare Act 330 Federal Employers’ Product Liability 830 Patent 450 Commerce
152 Recovery of Defaulted Liability 368 Asbestos Personal 835 Patent - Abbreviated 460 Deportation
Student Loans 340 Marine Injury Product New Drug Application 470 Racketeer Influenced and
(Excludes Veterans) 345 Marine Product Liability ✖ 840 Trademark Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR 880 Defend Trade Secrets 480 Consumer Credit
of Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud 710 Fair Labor Standards Act of 2016 (15 USC 1681 or 1692)
160 Stockholders’ Suits 355 Motor Vehicle 371 Truth in Lending Act 485 Telephone Consumer
190 Other Contract Product Liability 380 Other Personal 720 Labor/Management SOCIAL SECURITY Protection Act
195 Contract Product Liability 360 Other Personal Property Damage Relations 861 HIA (1395ff) 490 Cable/Sat TV
196 Franchise Injury 385 Property Damage 740 Railway Labor Act 862 Black Lung (923) 850 Securities/Commodities/
362 Personal Injury - Product Liability 751 Family and Medical 863 DIWC/DIWW (405(g)) Exchange
Medical Malpractice Leave Act 864 SSID Title XVI 890 Other Statutory Actions
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 790 Other Labor Litigation 865 RSI (405(g)) 891 Agricultural Acts
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 791 Employee Retirement 893 Environmental Matters
220 Foreclosure 441 Voting 463 Alien Detainee Income Security Act FEDERAL TAX SUITS 895 Freedom of Information
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 870 Taxes (U.S. Plaintiff Act
240 Torts to Land 443 Housing/ Sentence or Defendant) 896 Arbitration
245 Tort Product Liability Accommodations 530 General 871 IRS—Third Party 899 Administrative Procedure
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION 26 USC 7609 Act/Review or Appeal of
Employment Other: 462 Naturalization Application Agency Decision
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration 950 Constitutionality of
Other 550 Civil Rights Actions State Statutes
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
✖ 1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
15 U.S.C. § 1051
VI. CAUSE OF ACTION Brief description of cause:
Declaratory Judgment of Noninfringement
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: Yes ✖ No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
July 11, 2022 /s/ Janet F. Satterthwaite
FOR OFFICE USE ONLY

RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 2 of 25 PageID# 2

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

General Cigar Co., Inc. )

)
Plaintiff, )
v. ) C.A. No. 1:22-CV-00773
)
Fuente Cigar Ltd. )
Fuente Marketing Ltd. )
)
Defendants. )

COMPLAINT

Plaintiff General Cigar Co., Inc. (“GCC” or “Plaintiff”), by and through its attorneys, as

and for its Complaint against Fuente Cigar Ltd. and Fuente Marketing Ltd. (collectively,

“Fuente” or Defendants) alleges and states as follows:

NATURE OF THE ACTION

1. This is an action for a declaratory judgment of noninfringement of a trademark and trade

dress under the Lanham Act, 15 U.S.C. § 1051 et seq.

VENUE AND JURISDICTION

2. Jurisdiction is proper in the Court because the litigation arises under federal law, namely, the

Lanham Act, 15 U.S.C. § 1052 et seq. The Court has jurisdiction under 28 U.S.C. §§1331 (federal

question), 1338(a) (trademarks) and 2201 (Declaratory Judgment Act).

3. This Court has personal jurisdiction over Defendants because Defendants do business within

this judicial district. On information and belief, millions of dollars of Defendants’ products are sold

across the United States, including in this judicial district and elsewhere.

4. Venue is proper in this district under 28 U.S.C. §§ 1391 (b) and (c) in that Defendants are

subject to personal jurisdiction in this district; and, moreover, as defendants not resident in the United

States, may be sued in any judicial district. 28 U.S.C. §§ 1391 (c)(3).

JS 44 Reverse (Rev. 04/21) Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 3 of 25 PageID# 3
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet

The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:

I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then
the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".

II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)

III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.

IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
that is most applicable. Click here for: Nature of Suit Code Descriptions.

V. Origin. Place an "X" in one of the seven boxes.

Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
Section 1407.
Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
changes in statute.

VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service.

VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.

VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.

Date and Attorney Signature. Date and sign the civil cover sheet.
 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 4 of 25 PageID# 4

5. An actual case or controversy has arisen between the parties. The facts alleged herein show

that there is a substantial controversy between parties having adverse legal interests of sufficient

immediacy and reality to warrant the issuance of a declaratory judgment.

PLAINTIFF

6. Plaintiff GCC is a Delaware corporation in Richmond, Virginia, with an address at Suite 200

2100 East Cary Street, Richmond, Virginia 23223

7. GCC, founded in 1906, is one of the world’s foremost manufacturers and marketers of

premium, hand-made cigars.

8. In 2007, GCC acquired the trademark assets of CAO International Inc., also a leading

manufacturer of premium cigars.

9. Many of CAO’s brands include or have included an X as part of the mark for many years,

including, for example CAO Cx2, x2, Mx3, CAO eXtreme and LX.

10. GCC has sold millions of dollars of these “X” branded goods in the last decade and beyond.

11. GCC owns incontestable federal registrations for cigars for a number of marks with X:

MARK REG. First Use

Example of use
date
NO.

3562335 2008
LX

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 5 of 25 PageID# 5

3102247 2005
CX2

2920043 2004
Mx2

3584629
MX3

(Cancelled)

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 6 of 25 PageID# 6

12. GCC has made other references to the X motif in branding. For example, GCC put out

ashtrays in connection with the CAO Cx2 and CAO Mx2 brands that featured a large X both in the

shape of the well and depicted in the center of the ashtray:

13. CAO has also used the X Motif in the past such as with the CAO eXtreme branding:

14. In June of 2022, GCC announced a new line of Cigars, the CAO Bx3, to be launched in July

of 2022.

15. This is the trade dress for the CAO Bx3 brand:

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16. The trade dress of the CAO Bx3 evokes the legacy X branding, including the use of similar

modern, stylized font to the prior X mark, with the top arms of the X being longer than the bottom arms.

17. The CAO Bx3 trade dress also has a modern, brightly colored artwork that draws on the

colors of the national and state flags of Brazil:

18. The box lid explains the meaning of the brand: “Brazilian times three.”

19. This refers to the fact that the CAO Bx3 brand of cigars contain three types of Brazilian

tobacco leaves.

20. The use of X means “times.”

21. Cigar industry publications immediately recognized that the CAO Bx3 product extended the

CAO line of X marks.

22. For example, Cigar Aficionado wrote: “Longtime fans of CAO cigars might remember the

CAO MX2, a cigar that’s made with a maduro wrapper and binder, or “maduro times two.” The CAO

CX2 followed the same concept, only with Cameroon tobacco.”

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 9 of 25 PageID# 9

23. The influential blog Halfwheel wrote: “Following in the likes of the CX2, LX2, and MX2,

CAO will now have a BX3.”

DEFENDANTS

24. On information and belief, Defendant Fuente Marketing Ltd. is a Turks and Caicos limited

company with an address at Salt Mills Plaza, Unit 48c, Grace Bay Road, Providenciales, Turks and

Caicos.

25. On information and belief, Defendant Fuente Cigar Ltd. is a Turks and Caicos limited

company also with an address at Salt Mills Plaza, Unit 48c, Grace Bay Road, Providenciales, Turks and

Caicos.

26. On information and belief, Defendants manufacture and distribute handmade premium

cigars.

27. Among Fuente’s brands are the Fuente Fuente Opus X line of cigars.

28. The Fuente Fuente Opus X line of cigars all feature a version of an ornate gilded logo with

crossed blue or red flourishes and the letters FF in highly stylized font.

29. The following are examples from the Fuente website, www.arturofuente.com:

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30. The logos are depicted in the label, known as a cigar band, on the cigars. The following is an
example:

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31. The cigar boxes for Fuente products generally feature a red, brown or yellow, and gold trade

dress. Here is an example:

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 12 of 25 PageID# 12

32. Fuente and GCC are competitors in the handmade, premium cigar market.

33. Fuente and GCC products travel in similar channels of trade.

34. Fuente and GCC receive press coverage from the same industry specific blogs and

publications, such as Cigar Aficionado and Halfwheel.

35. Therefore, on information and belief, it is inconceivable that Fuente was not aware that GCC

has, for many years, had a series of marks containing the term X.

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 13 of 25 PageID# 13

THE CEASE AND DESIST LETTER

36. On July 5, GCC received a cease and desist letter from Virginia Carron of the Finnegan law

firm (“The Letter”). A true and correct copy of The Letter is attached as Exhibit A hereto.

37. The Letter accuses, but not with adequate specificity, GCCs Bx3 product of infringing

various Fuente trademark rights.

38. The Letter appears to falsely claim that Fuente has exclusive rights in any use of an X in

connection with cigar brands.

39. The Letter does not advise which specific Fuente trademarks or trade dress are alleged to be

infringed.

40. Instead, The Letter provides a laundry list of Fuente’s alleged trademark registrations, which

it refers to as “Fuente’s X Marks.”

41. The laundry list includes marks such as: X TO THE THIRD POWER, XXX, SERIEX,

RISING X, FUENTE FUENTE OPUS X; FORBIDDEN X, FUENTE FUENTE FORBIDDEN X, and

others.

42. The Letter merely states that “the mark improperly incorporates Fuente’s X Marks.”

43. The Letter does not explain how the CAO Bx3 brand “incorporates” the marks such as

FUENTE FUENTE FORBIDDEN X, for example, or the stylized designs.

44. The Letter offers no possibility of settlement short of demanding written assurance no later

than July 8, 2022, a mere three days after the date of The Letter, that GCC will “cease use of this X

mark and any other Fuente trademarks. Absent receipt of your written confirmation that you will

immediately cease all use of Fuente’s trademarks, Fuente reserves the right to take whatever action it

deems necessary to protect its valuable trademark rights without further notice.”

45. It is not clear from The Letter what Fuente wanted GCC to do.

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 14 of 25 PageID# 14

46. For example, it is not clear if Fuente is demanding that GCC to cease all use of Bx3 per se,

despite GCC’s long history of similar marks with “X.”

47. Regardless, comparing the CAO Bx3 mark and trade dress to the laundry list of “Fuente’s X

marks, it is clear that the CAO Bx3 mark and branding does not incorporate them as registered or as

used in commerce.

48. In order to maintain a trademark registration, the owner must periodically file a statement of

use with a specimen of how the mark is actually used in commerce.

49. The following is a chart of the registrations referred to in The Letter as “Fuente’s X Marks”

including the most recent specimen provided to the U.S. Patent and Trademark Office as to how the

mark is used in commerce.

Goods
MARK Reg. MOST RECENT SPECIMEN

No.
2536633 Smoker
's
articles;
ashtrays
not
made of
preciou
s metal;
cigar
protecto
rs;
humido
rs;
lighters
not
made of
preciou
s metal
(NOT
CIGAR
S)

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 15 of 25 PageID# 15

2347248 Cigars

3254146 Cigars

3285314 Ashtray
X s, not of
preciou
s metal;
Cigar
cutters;
Lighters
not of
preciou
s metal
NOT

CIGAR

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 16 of 25 PageID# 16

3065482 Cigars
XXX

2397955 Cigars
X TO THE THIRD

POWER

3191113 Cigars
SERIEX

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 17 of 25 PageID# 17

3171080 :
RISING X Cigars;
[
smoker
's
articles
,
namely
, cigar
humidif
iers,
ashtray
s not
made
of
preciou
s
metal;
cigar
cutters;
cigar
protect
ors,
namely
, glass
cigar
tubes
used to
protect
cigars
and
cigar
cases
not of
preciou
s
metal;
lighters
not
made
of
preciou
s
metal;
and
matche
s ].

1989060 cigars
FUENTE FUENTE

OPUS “X”

2495579 CIGAR
FUENTE OPUSX AND
CIGAR
ETTE
LIGHT
ERS

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Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 18 of 25 PageID# 18

OF
NON-
PRECI
OUS
METAL
(not
cigars)

2256200 cigars

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 19 of 25 PageID# 19

2364801 cigar
protect
ors,
humido
rs,
)not

cigars)

FORBIDDEN X 2618671 cigars

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FORBIDDEN X 3229975 Cigars

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3258 ciga

403 rs

50. Counsel for GCC emailed Ms. Carron on the afternoon of Thursday, July 7, 2022, to advise

that her firm was still clearing conflicts and as such would not be able to provide a response by July 8.

51. Ms. Carron responded just over twenty-four hours later, on Friday, June 8, with an even

harsher email. The email threatened to seek damages; and, unlike The Letter, which merely requested

an assurance that GCC would agree to cease use of whatever mark was infringing, demanded that GCC

immediately cease use of the “infringing Bx3 mark and logo” including shipment, distribution, and sales.

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 22 of 25 PageID# 22

From:Carron, Virginia <[email protected]>

Sent:Friday, July 8, 2022 4:56 PM
To:Janet Satterthwaite <[email protected]>
Cc:Trademark <[email protected]>; Johnson, Lauren <[email protected]>
Subject:RE: Your letter to General Cigar

Dear Janet,

Thank you for your message and letting me know that you will promptly respond to our letter. We
understand that you need time to consider the issues, but please understand that Fuente considers any
further sales, shipment, distribution and/or use of the infringing BX3 mark and logo to be willful
infringement and will, if necessary, seek damages for such. Fuente demands the CAO immediately cease
use of the marks, including all shipment and sales of cigars in association with these infringing marks.

I welcome you to call me to discuss this matter and await your prompt response.

Regards,

Virginia

Virginia L. Carron
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
271 17th Street, NW, Suite 1400, Atlanta, GA 30363-6209
+1 404 653 6452 | fax +1 404 653 6444 | [email protected] | www.finnegan.com

From: Janet Satterthwaite <[email protected]>

Sent: Thursday, July 7, 2022 2:14 PM
To: Carron, Virginia <[email protected]>
Cc: Trademark <[email protected]>
Subject: Your letter to General Cigar

EXTERNAL Email:

Dear Ms Carron,

Your letter of July 5, 2022, to General Cigar Company, has been referred to me for a
response.
We are still completing our routine conflicts check and as such will need more time than
tomorrow to confer with our client and respond to your letter. Please note that our client,
and we, are treating the matter as time sensitive.

regards

Janet Satterthwaite

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 23 of 25 PageID# 23

52. The Letter and the subsequent, harsher email asserting additional, escalated demands and

threats, thus place GCC in fear of litigation and force GCC to seek declaratory relief as to whatever

allegations are imprecisely and vaguely asserted in The Letter and the email.

NO INFRINGEMENT

53. Regardless of the lack of proper specificity in The Letter and the email, it is clear that GCC is

not infringing the trademarks or any trade dress of Fuente

54. First, GCC has longtime concurrent use of the letter X as part of trademarks for cigars with

no known instances of actual confusion with any Fuente marks.

55. Second, Fuente’s objection to GCC’s use of the letter X in cigar branding is barred by laches

and acquiescence.

56. Third, the Bx3 branding as used or proposed to be used in commerce creates a completely

different commercial impression from any Fuente marks referenced in the letter or that are visible on

Fuente’s website.

57. Therefore, GCC seeks a declaratory judgment of noninfringement.

COUNT I

(Declaration of Non-Infringement—

15 U.S.C. § 1051 et seq. and 28 U.S.C. § 2201)

58. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully

set forth below.

59. This cause of action arises under the Declaratory Judgment Statute, 28 U.S.C. § §2201 and

2202, and the Lanham Act, 15 U.S.C. §§ 1051 et seq.

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 Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 24 of 25 PageID# 24

60. As an actual justiciable controversy exists between parties having adverse legal interests of

sufficient immediacy and reality to warrant the issuance of a declaratory judgment, Plaintiff seeks relief

from this Court.

61. The Letter and subsequent email have placed GCC under reasonable anticipation of litigation

threatening GCC’s ongoing use of its trademark and trade dress.

62. Plaintiff GCC requests an order declaring that its use of the mark CAO Bx3 and the CAO

Bx3 trade dress do not infringe Fuente’s alleged trademark rights:

Prayer for Relief

WHEREFORE, Plaintiff respectfully requests that the Court

a. enter an order declaring that GCC is not infringing any valid, enforceable trademark

or trade dress rights allegedly owned by Fuente;

b. award attorney’s fees, costs and expenses to GCC; and

c. grant GCC such other and further relief as this Court may deem just and proper.

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Case 1:22-cv-00773 Document 1 Filed 07/11/22 Page 25 of 25 PageID# 25

Respectfully submitted,
GENERAL CIGAR CO., INC.

By: /Janet F. Satterthwaite/

Janet F. Satterthwaite
VSB 26759
Potomac Law Group
Suite 700
1300 Pennsylvania Ave NW
Washington DC 20004
[email protected]
[email protected]
[email protected]

Tel: 202-486-1578

Attorneys for Plaintiff General Cigar Co., Inc.

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