Guantanamera Loses Trademark Lawsuit Against Swedish Match Over “DUO”

Last week, a federal judge handed Swedish Match, Sam’s Club and Costco a victory in a trademark lawsuit brought on by Guantanamera Cigars Co.

Judge Jonathan Goodman, a magistrate judge for the U.S. District Court for the Southern District of Florida, ruled against the plaintiff in Guantanamera Cigars Co. v. SMCI Holding, Inc., et al. In 2021, Guantanamera filed a lawsuit against Swedish Match and the retailers because of the sale of White Owl Duos, which Guantanamera claimed infringed on its trademark for “DUO,” which it awarded in January 2009.

After mediation was unsuccessful in getting the parties to reach a settlement, Goodman presided over a bench trial in March of this year.

White Owl Duos were introduced in 2020. Swedish Match, which owns the popular cigarillo brand, packaged two different cigarillos with complementary flavors, like strawberry-and lemonade-flavored cigarillos, into a single foil pouch. The Guantanamera DUO Series is a premium, longfiller cigar that uses a 10-year-old Nicaraguan habano wrapper over a Honduran habano ligero binder and fillers from Nicaragua.

Goodman ruled that Guantanamera “was able to establish two of seven factors used to determine whether there is a likelihood of consumer confusion among cigar customers, it failed to tip the scales in its favor.” Seemingly the most central part of this decision is that Guantanamera “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” according to Goodman.

The judge wrote:

GCC did not provide any survey evidence or expert witness testimony concerning actual confusion or even a likelihood of confusion. Given the length of time that the parties’ products co- existed and WHITE OWL duos’ ample sales figures, the Court would certainly expect evidence of actual confusion if any consumers were actually confused. But there was none.

Plaintiff’s failure to come forward with evidence of actual confusion is not from a lack of effort. The president and founder of GCC testified that he and his lawyers actively monitored the marketplace for potential infringers of its DUO mark. The president also testified that he had continuous, daily interactions with his customers, and that he had personally visited convenience stores and gas stations on almost a weekly basis throughout the relevant time period. Yet, he admitted that he first learned of WHITE OWL duos cigarillos only through his attorneys in April 2021, a year after their introduction. This factor weighs in favor of Swedish Match.

Goodman ruled that because Swedish Match makes both cigarillos and premium cigars, a consumer could believe that White Owl’s DUO and Guantanamera’s DUO came from the same company. Furthermore, Swedish Match didn’t contest the strength of the trademark, another win for Guantanamera.

However, the difference in the products themselves, the differences in the places where they are sold, and the lack of evidence of any actual confusion were too much for Guantanamera to overcome in Goodman’s eyes. He ruled against Guantanamera on June 2 and formally dismissed the case yesterday.

“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, the lead attorney for the defendants, in a statement. An email sent to Guantanamera’s attorney seeking comment was not returned.

This was not the first time Guantanamera has sued over the DUO trademark. In 2018, the company sued Royal Agio Cigars over its Balmoral Serie Signaturas Dueto. That case was settled in 2020. Guantanamera was also involved in numerous legal disputes with Habanos S.A. over the Cuban company’s attempts to trademark “Guantanamera” in the U.S.