Earlier this year, Piloto Cigars, Inc., the parent company of Padrón, filed suit over a new product from Ted’s Cigars (Spalding Group, Inc.) and the Patrón Spirits Company.
The case was filed in the U.S. District Court for the Southern District of Florida on Jan. 14 and voluntarily dismissed at the request of Padrón on March 7, although a representative from Ted’s indicated that there were still pending manners and declined to comment further.
Padrón’s contention was that Ted’s and Patrón were infringing on the company’s trademark in the category of cigars. Padrón cited a 2009 complaint from Patrón, the alcohol company, when the cigar company filed an application for the Padrón mark in rum.
Patrón’s attorneys wrote the following in 2009:
[W]hen used in connection with rum …, PADRÓN is too similar to our client’s PATRON mark. We believe that the similarity between PADRÓN and PATRON, particularly with respect to the sound and pronunciation of the names, as well as the goods marketed thereunder, will cause confusion.
Padrón claims it let the mark expire and obviously has not entered the rum business to date.
It also argued specifically against the use of the term “PATRÓN CIGAR” including on glassware and other accessories.
Of note, according to the complaint Ted’s sold 17,859 cigars as of Jan. 3, 2014 and had over 30,000 in inventory and an order for an additional 20,000. Padrón told the court it makes approximately 6.5 million cigars per year.
Ted’s announced its Patrón Añejo Seasoned Cigar late last year. Ted’s makes cigars in partner with many alcohol companies including Dumante, Grand Marnier, Maker’s Mark and Sam Adams.