Drew Estate, Vaughn Boyd File Lawsuit Against Deadwood Tobacco Co. Over “Deadwood” Name

There is a lawsuit about who can sell cigars using the Deadwood name.

Yesterday, Vaughn Boyd and Drew Estate filed a lawsuit against Deadwood Tobacco Co. in the U.S. District Court for the Southern District of Florida. The plaintiffs claim that Deadwood Tobacco Co.’s current owner is in violation of various agreements regarding who can sell cigars using the Deadwood name. The alleged infringements are related to a series of cigars that Deadwood Tobacco Co.’s new owner(s) has made with Asylum, which debuted last year but gained national distribution this year.

According to the complaint, in 2009, Drew Estate began working with Boyd—who founded Deadwood Tobacco Co. as a cigar store in Deadwood, S.D.—on a line of store exclusives, first known as Deadwood Tobacco Co. Sweet Jane. Two additional cigars—Crazy Alice and Fat Bottom Belly—were added about five years later.

On July 22, 2016, Drew Estate and Boyd entered into a licensing agreement that gave Drew Estate the worldwide exclusive license to make and sell cigars under the Deadwood name, including using the Deadwood Tobacco Co. name and various logos. That agreement coincided with the Deadwood cigars going from a store-exclusive brand only sold at the Deadwood store in South Dakota to becoming a national release sold by Drew Estate to other retailers. Since then, Drew Estate has added other Deadwood products such as Leather Rose and The Girl With No Name.

Per the complaint, Boyd sold 99 percent of her shares in Deadwood Tobacco Co. to new owners on April 1, 2018, and the remaining 1 percent was sold on Sept. 30, 2019. Following the sale, William J. Rectenwald was listed as the registered agent of Deadwood Tobacco Co.

The plaintiffs claim that Deadwood Tobacco Co. understood that Drew Estate had an exclusive license to the Deadwood names due to the 2016 agreement between Boyd, the then-owner of Deadwood, and Drew Estate. In 2020, Boyd and Drew Estate amended the agreement, which extended the license to 50 years from its effective date, extending it to July 22, 2066.

Last year, Deadwood Tobacco Co. introduced cigars called Deadwood Tobacco Co. Auntie, Deadwood Tobacco Co. Midnight Oil, and Deadwood Tobacco Co. Zero, which are made in collaboration with Asylum. The complaint alleges a fourth brand—Deadwood Tobacco Co. Double Sweet—was also sold via the South Dakota retail store and the store’s website. The plaintiffs claim that Deadwood Tobacco Co. received no permission to use the Deadwood Tobacco Co. for these cigars, which they claim violates the legal agreements regarding Drew Estate’s license.

Furthermore, the plaintiffs allege that Deadwood Tobacco Co. falsely claimed that Deadwood Tobacco Co. was the creator of the Yummy Bitches brand, one that Drew Estate sells, while promoting the new Chasing the Dragon cigar.

Drew Estate claims that it sent a letter to Deadwood Tobacco Co. on Jan. 27, 2023, alleging the infringement of the Deadwood trademarks and demanding that Deadwood Tobacco Co. inform the public about what Drew Estate perceives to be false claims regarding Yummy Bitches. The plaintiffs say that Deadwood replied on June 9, 2023, claiming that the licensing agreements were invalid, that Deadwood could sell cigars under the Deadwood name and threatening legal action of its own.

The plaintiffs are asking for the court for various actions including to:

• Invalidate Deadwood Tobacco Co.’s trademarks regarding the four brands they claim are in violation;
• Find that Deadwood Tobacco Co. is infringing on their trademark rights;
• Order Deadwood Tobacco Co. to “issue a public notice that it is not the “originator” of THE YUMMY BITCHES marks and has no rights in the DEADWOOD CIGAR Marks in connection with cigars and cigar products;”
• Enjoin Deadwood Tobacco Co. from further acts of infringement;
• Order that all infringing products and marketing materials be destroyed
• Award damages and attorneys fees.

It would appear that the lawsuit already has had an effect on the products in question. Earlier today, Christian Eiroa of Asylum/CLE posted the following comment on a review of the Deadwood Tobacco Co. Chasing the Dragon Midnight Oil:

Dear Halfwheel and Readers,

Please note that this information is no longer current.

The brand name is now ASYLUM 867. The names ZERO, MIDNIGHT OIL and AUNTIE as well as the sizes and blends remain the same as created by Wild Bill (and his staff), owner and operators of DEADWOOD TOBACCO COMPANY and CIGAR BAR in Deadwood, S.D.

No other information is available at this time.

Sincerely,

Christian Eiroa

When asked for comment on the lawsuit, Drew Estate issued the following statement:

Drew Estate filed a lawsuit on June 14, 2023, against Deadwood Tobacco Company (“DTC”) in the U.S. District Court for the Southern District of Florida seeking relief for infringement of trademark and trade dress rights owned by Drew Estate, as exclusive licensee, and Vaughn Boyd, as our licensor, in connection with Drew Estate’s Deadwood Tobacco Co. cigar brand.

DTC recently introduced a brand of cigars that incorporated “Deadwood Tobacco Co.” in the branding and used a brand narrative and other statements by or on behalf of DTC connecting this brand to Drew Estate’s Deadwood Tobacco Co. line of cigars, creating significant confusion in the marketplace for both retailers and consumers.

The Deadwood Tobacco Co. branded cigars introduced by DTC are not manufactured by Drew Estate and are not related in any way to Drew Estate’s Deadwood Tobacco Co. brand of cigars.  Drew Estate believes that the confusion that resulted in the marketplace did a great disservice to our valued trade partners and the many loyal consumers who have come to know and rely upon the Deadwood Tobacco Co. brand of cigars manufactured and sold by Drew Estate as their cigar of choice.

While Drew Estate hoped to resolve this matter directly with DTC, such efforts were unsuccessful.  Thus, Drew Estate was compelled to bring this action as part of its continuing effort to avoid confusion in the marketplace for both our trade partners and the cigar consuming public they serve, and to protect our trademark and trade dress rights.

As this is pending litigation, Drew Estate will have no further comment on this matter.

When asked for comment, Rectenwald said he wished to first speak with his attorney.

Charlie Minato

I am an editor and co-founder of halfwheel.com/Rueda Media, LLC. I previously co-founded and published TheCigarFeed, one of the two predecessors of halfwheel. I have written about the cigar industry for more than a decade, covering everything from product launches to regulation to M&A. In addition, I handle a lot of the behind-the-scenes stuff here at halfwheel. I enjoy playing tennis, watching boxing, falling asleep to the Le Mans 24, wearing sweatshirts year-round and eating gyros. echte liebe.