Connecticut Valley Tobacconist, a retail operation in Enfield, Conn. and parent company of the Old Battleground line of cigars, has taken issue with La Flor Dominicana’s usage of the words Mysterio and Mysterioso, as well as with a retailer who sells both brands’ versions.
In a suit filed August 22 in United States District Court for the Eastern District of Pennsylvania, Connecticut Valley Tobacconist LLC claims that Premium Imports Inc., d/b/a La Flor Dominicana, and PBK Smokers LLC, d/b/a Harry’s Smoke Shop, are in violation of trademark infringement, false designation of origin, unfair competition and other relief arising under 15 U.S.C.A. §§ 1051 et seq. (the “Lanham Act”) and the common law of the Commonwealth of Pennsylvania.
The source of the suit involves the Mysterioso trademark, which Connecticut Valley Tobacconist has been using since January 2003 for a line of cigars that feature perique tobacco from Louisiana. On August 11, 2006, Connecticut Valley Tobacconist filed for registration of the mark with the United States Patent & Trademark Office, and on July 10, 2007 the mark was officially registered. On July 12, 2012, the company submitted a Declaration of Use Affidavit to the USPTO that affirmed the Mysterioso mark was still being used, and on July 28, 2012, the USPTO accepted that declaration.
The suit alleges that in or around 2007, La Flor Dominicana began to use the word Mysterio for a line of cigars, a name that could not be registered with the USPTO. La Flor Dominicana did not have the permission or license from Connecticut Valley Tobacconist to use the mark, which was seen as being likely to cause confusion among customers, sellers and other in the cigar market and industry.
Connecticut Valley Tobacconist says that in July and August of 2007, it sent cease and desist letters to La Flor Dominicana which were ignored. In 2013 the La Flor Dominicana Mysterioso line was introduced, a limited edition version of the Mysterio that featured an intricate band design.
The suit goes onto say that because of La Flor Dominicana’s size and stature in the industry, reverse confusion was likely to occur at the retail level, in other words implying that consumers and retailers might think that Connecticut Valley Tobacconist was unlawfully using a mark owned by La Flor Dominicana. Because Harry’s Smoke Shop has been selling and marketing the trademark infringing cigars to its customers, it too is seen to be guilty of willful and unlawful acts.
As relief for the infringement, Connecticut Valley Tobacconist is asking for compensatory damages along with the defendants’ profits and “reasonable royalties for the infringing use of the Mysterioso trademark,” as well as that all products bearing the infringing marks–Mysterio and Mysterioso–be delivered up for destruction.
No timeline for this case has been established by the court, other than a due/set date of December 22, 2014.
Both companies’ cigars have been in the news recently, as Connecticut Valley Tobacconist’s Mysterioso got a new packaging treatment in advance of this year’s IPCPR Convention and Trade Show, an eight-count solid wood box that featured cigars in glass tubes. La Flor Dominicana has already announced that the Mysterioso will return for 2014 after debuting prior to the 2013 holiday season. It was reviewed on halfwheel in December 2013.