Tropical Tobacco, Inc.—doing business as AGANORSA Leaf—has sued Mombacho Cigars S.A. over the latter’s use of the word Mombacho.
In a lawsuit filed yesterday in the U.S. District Court for the Southern District of Florida, Tropical alleges that Mombacho Cigars S.A. is knowingly violating its trademark of the mark Mombacho. It’s the latest in a long saga over the use of the word Mombacho in the U.S. that has already produced other legal disputes.
Tropical trademarked the name in 2003 and was awarded a trademark by the U.S. Patent and Trademark Office (USPTO) in 2004; it was also awarded another trademark in 2012. It used the name on a cigar called the Mombacho Thermonuclear, though the current version is known as the Mombacho Miami.
For its part, Mombacho Cigars S.A. owns trademarks for Mombacho in Canada and the European Union. It began selling cigars out of its factory in Granada, Nicaragua before expanding distribution to the U.S. At one point, it was selling its cigars in the U.S. under the Tierra Volcán name—while using the Mombacho name in other countries—but eventually switched to Mombacho in the U.S.
In 2016, Mombacho Cigars S.A. asked the USPTO to cancel Tropical’s trademark, claiming that the company was no longer selling cigars under the Mombacho name and as such had abandoned the trademark. Tropical responded, arguing that it was still selling cigars with the Mombacho name, albeit not many.
Documents from Tropical showed its sales for the Mombacho cigar beginning with 100 boxes of cigars in 2004, peaking at 766 in 2006 and then staying between 71-103 boxes between 2008-2011. In 2012, the company sold just six boxes, followed by five the year later and just two boxes in 2014.
In 2018, the USPTO ruled in favor of Tropical, finding that Mombacho Cigars S.A. could not prove the claims that Tropical failed to sell boxes during any year-long period and as such, it declined to grant the petition to cancel the trademark on the grounds of inactivity. At that time, Mombacho Cigars S.A. said it would continue to sell its cigars in the U.S. using the Mombacho name.
Now, Tropical has gone on the offensive and is suing Mombacho Cigars S.A. for trademark infringement and unfair competition. In its lawsuit, the company is seeking an injunction that would stop Mombacho Cigars S.A. from selling cigars with the Mombacho name in the U.S., damages and attorney fees.
“Mombacho Cigars S.A. looks forward to defending against this unwarranted attack by a larger player in the industry,” said Cam Heaps, president of Mombacho Cigars S.A., in a statement to halfwheel.