Case 0:18-cv-60927-BB Document 1 Entered on FLSD Docket 04/24/2018 Page 1 of 8

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

EDUARDO ORTEGA,
An Individual,
ORTEGA PREMIUM CIGARS, INC.,
A Florida Corporation,

Plaintiff,

v. Case No.: TBD

RAI STRATEGIC HOLDINGS, INC.,

A North Carolina Corporation,

Defendant.
____________________________________/

COMPLAINT FOR TRADEMARK INFRINGEMENT OF

INCONTESTABLE FEDERAL TRADEMARK REGISTRATION NO. 3,137,263

Plaintiffs EDUARDO ORTEGA and ORTEGA PREMIUM CIGARS, INC., (“Plaintiffs”

or “Ortega Cigars”), through their undersigned counsel, file this Complaint against RAI

STRATEGIC HOLDINGS, INC., (“RSH” or Defendant”) for the willful trademark infringement

of Plaintiffs’ incontestable federal trademark registration in the mark VIBE. As grounds thereof,

Plaintiffs offer the following factual and legal support:

NATURE OF THE ACTION

1. Plaintiffs Ortega Cigars brings this action for violation of their rights under the

Lanham Act, 15 U.S.C. Sections 1114 & 1125(a), and the Common Law.

THE PARTIES

2. Plaintiff Eduardo Ortega is the sole owner of Ortega Premium Cigars, Inc., and

resides in Weston, Florida.

3. Plaintiff Ortega Cigars is a Florida corporation located and doing business in

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this district, namely, Weston, Florida.

4. Defendant RAI Strategic Holdings, Inc. (“RAI”) is a North Carolina

corporation, with a principal business located at 401 North Main Street, Winston-Salem,

North Carolina, 27102.

JURISDICTION AND VENUE

5. This is an action arising under the Trademark Act, 15 U.S.C. Sections 1114 &

1125(a) and the Common Law.

6. This Court has subject matter jurisdiction over these claims pursuant to 15 U.S.C.

Section 1121, and 28 U.S.C. Sections 1331, 1338(a) and 1338(b).

7. Venue is proper in this district under 28 U.S.C. Section 1391(b)(2) and (c)(2)

because the events giving rise to the claims occurred in this district, namely, Defendant

infringed upon Plaintiffs’ trademark in this district.

BACKGROUND FACTS

8. Plaintiff Ortega Cigars and its founder Plaintiff Eduardo Ortega have been involved

in the cigar industry for nearly 20 years.

9. Since at least as early as August 2005, Plaintiff Eduardo Ortega (through

predecessors in interest) adopted the mark VIBE in connection with tobacco products, namely,

cigars, and related goods. The rights to same are licensed to Plaintiff Ortega Premium Cigars.

10. Plaintiffs’ VIBE cigar products have been sold in bricks and mortar stores

throughout the United States and online.

11. As of August 8, 2016, both cigars and e-cigarettes are deemed tobacco products

subject to the Federal Food, Drug, and Cosmetic Act (“FD&C Act”) under the FDA. The FD&C

Act was amended by The Family Smoking Prevention and Tobacco Control Act (“Tobacco

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Control Act”). As such, all newly deemed tobacco products, including cigars and e-cigarettes are

subject to provisions of the Tobacco Control Act which provides the FDA with the authority to

regulate the manufacture, marketing, and distribution of tobacco products.

12. All newly deemed tobacco products are subject to the provision of the Tobacco

Control Act that automatically apply to all products that meet the statutory definition of a tobacco

product. One such provision provides that all newly deemed tobacco products must obtain

premarket authorization from the FDA, either via one of three premarket pathways or by obtaining

a Grandfather Determination.

13. Plaintiffs’ cigar products bearing the VIBE trademark have been determined to be

Grandfathered by the Food and Drug Administration.1 See Exhibit A.

14. On June 2, 2005, Plaintiffs’ predecessor in interest filed a United States trademark

application, Serial No. 78/642,490 for the mark “VIBE” for use in connection with “cigars,

cigarettes; little cigars; cigar humidors; cigar cutters; non-electric cigar lighters, not of precious

metals; and cigar ash trays, not of precious metals.” See Exhibit B.

15. The Plaintiffs’ trademark application included a claimed first use date of August 1,

2005. Id.

16. On August 29, 2006, the trademark application matured into Federal Trademark

Registration No. 3,137,263. Id.

17. On October 24, 2012, Plaintiffs predecessor in interest filed a Section 8 (aka

“declaration of continued use”) and Section 15 (aka “declaration of incontestability”) with the

United States Patent and Trademark Office. Id.

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To achieve FDA Grandfather Determination, a product must be commercially marketed in the United States, other
than exclusively in test markets as of February 15, 2007. “As of February 15, 2007,” is defined by the FDA to mean
on February 15, 2007. A FDA Grandfather Determination exempts a product from obtaining premarket authorization
from the FDA.

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18. On March 14, 2013, the United States Patent and Trademark Office issued a Notice

of Acceptance under Section 8 and a Notice of Acknowledgement Under Section 15. Id.

19. On February 17, 2016, Plaintiff Eduardo Ortega sought renewal of his registration

by filing a Section 8 (declaration of continued use) and Section 9 (renewal application). Id.

20. On April 26, 2016, the United States Patent and Trademark Office issued a

Notice of Acceptance Under Section 8 and Notice of Registration Renewal Under Section 9

and therefore renewed Registration No. 3,137,263 for an additional ten (10) year term. Id.

21. Plaintiff Eduardo Ortega’s federal trademark is currently registered, live and

subsisting and fully enforceable. Id.

22. On May 11, 2016, Defendant filed a trademark application, Serial No.

87/033,226, for VUSE VIBE for use in connection with “electronic cigarettes; electronic

cigarette components, namely, pre-filled tanks and replacement tanks filled with nicotine

and/or other flavorings in liquid form for use with electronic cigarettes and other oral

vaporizers for smoking.” See Exhibit C.

23. On June 10, 2016, the Trademark Examiner assigned to Defendant’s

trademark application issued a formal Office Action (a formal objection/rejection to the

application) because of a likelihood of confusion with Plaintiff Eduardo Ortega’s Federal

Trademark Registration. Id.

24. On August 16, 2016, Defendant’s trademark counsel filed a response to the

June 10, 2016 Office Action. In that response, Defendant’s trademark counsel claimed that

there was no likelihood of confusion. Id.

25. On September 12, 2016, the Trademark Examiner again rejected Defendant’s

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arguments and renewed the substantive rejection of Defendant’s trademark application

because of a likelihood of confusion with Plaintiff Eduardo Ortega’s Federal Trademark

Registration. Id.

26. Recognizing that they would not survive an appeal, Defendant’s counsel did not

respond to the renewed rejection and allowed for the application to become abandoned. Id.

27. Despite receiving not one, but two, formal Office Actions pointing out the

existence of Plaintiff’s Federal Trademark Registration as being in direct conflict, Defendant

willfully continued to use the VIBE trademark in United States commerce on similar goods, in

similar trade channels, and selling to similar if not identical consumers. See Exhibit D.

28. There is a strong likelihood of consumer confusion stemming from Defendant’s

unauthorized and willful infringement of Plaintiffs’ VIBE trademark.

29. The Defendants’ tobacco and related products offered under the VIBE and VUSE

VIBE marks are related to the tobacco and related products offered by Plaintiff under the mark

VIBE.

30. Defendant’s products prominently feature the mark VIBE and VUSE VIBE on

the product, the product’s accessories, and the product packaging such that the consumer views

VIBE as the front mark. Id.

31. The Defendant’s mark is similar in sight, sound, and appearance at Plaintiffs’

mark.

32. The Plaintiffs’ and Defendant’s products are similar, identical, or at least

reasonably related tobacco products. They are so similar that the FDA now maintains similar, and

in some cases identical, regulations and deadlines for both products.

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33. The Plaintiffs’ and Defendant’s products are both classified in International Class

34 (classifying tobacco products) by the United States Patent and Trademark Office.

34. Plaintiff’s and Defendant’s trade channels and customers are similar, and in many

cases identical. By way of example only, prominent cigar retailer JR Cigars sells a variety of

tobacco products including a wide variety of cigars and e-cigarettes including Defendant’s VIBE

product. See Exhibit E.

COUNT I
FEDERAL TRADEMARK INFRINGEMENT OF
INCONTESTABLE TRADEMARK REGISTRATION NO. 3,137,263

35. Plaintiffs reallege paragraphs 1-34 as if specifically recited herein.

36. Plaintiff Eduardo Ortega owns valid and incontestable Trademark Registration

No. 3,137,263 for the mark VIBE in International Class 34.

37. Plaintiffs have prior rights to the mark VIBE in connection with cigars/tobacco

products and related goods.

38. Defendant adopted a mark that is the same or confusingly similar to Plaintiffs’

mark such that consumers would likely confuse the two marks.

39. The harm to Plaintiffs is irreparable.

COUNT II
FEDERAL UNFAIR COMPETITION

40. Plaintiffs reallege paragraphs 1-34 as if specifically recited herein.

41. Plaintiff Eduardo Ortega owns valid and incontestable Trademark Registration

No. 3,137,263 for the mark VIBE in International Class 34.

42. Plaintiffs have prior rights to the mark VIBE in connection with cigars/tobacco

products and related goods.

43. Defendant adopted a mark that is the same or confusingly similar to Plaintiffs’

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mark such that consumers would likely confuse the two marks.

44. The harm to Plaintiffs is irreparable.

COUNT III
COMMON LAW TRADEMARK INFRINGEMENT

45. Plaintiff reallege paragraphs 1-34 as if specifically recited herein.

46. Plaintiffs have prior rights to the mark VIBE in connection with cigars/tobacco

products and related goods.

47. Defendant adopted a mark that is the same, or confusingly similar to, Plaintiffs’

mark such that consumers would likely confuse the two marks.

48. The harm to Plaintiffs is irreparable.

WHEREFORE, Plaintiffs respectfully request that the Court enter judgment in their favor

and against the Defendant for Federal Trademark Infringement, Federal Unfair Competition, and

under the Common Law and award damages, plus prejudgment interest, post judgment interest,

and any other relief the Court deems just and proper, including, but not limited to:

a) Compensatory damages or statutory damages;

b) A temporary and permanent injunction;

c) All costs and reasonable attorneys’ fees;

d) Other remedies that the Court may award

JURY DEMAND

Plaintiffs hereby demand a jury trial for all issues so triable.

Dated: April 24, 2018

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Respectfully submitted,

s/FRANK HERRERA
Frank Herrera
Florida Bar No. 494801
H New Media Law
809 North Dixie Highway,
Suite 202
West Palm Beach, Florida 33401
Tel.: (561) 841-6380
fherrera@hnewmedia.com