Case 0:23-cv-62373-WPD Document 8 Entered on FLSD Docket 02/09/2024 Page 1 of 11

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA
Case No.: 0:23-cv-62373-WPD/DIMITROULEAS

GURKHA CIGAR GROUP, INC.

Plaintiff,

v.

DAVIDOFF OF GENEVA USA, INC.

Defendant.
/

DEFENDANT, DAVIDOFF OF GENEVA USA, INC.’S

MOTION TO DISMISS PLAINTIFF’S COMPLAINT

Pursuant to Rule 12(b)(1) and (6) of the Federal Rules of Civil Procedure, Defendant,

DAVIDOFF OF GENEVA USA, INC., moves this Court to dismiss Plaintiff’s Complaint, upon

the following grounds:

INTRODUCTION

Defendant, Davidoff of Geneva USA, Inc. (“Defendant”), submits this memorandum of

law in support of its motion to dismiss the Complaint (“Compl.”) (ECF 1) filed by Plaintiff, Gurkha

Cigar Group, Inc. (“Plaintiff”). In the Complaint, Plaintiff sues Defendant for infringement of

registered trademarks Plaintiff does not own. Plaintiff also seeks a declaratory judgment asking

this court to approve a trademark application that Plaintiff did not file and over which this court

has no subject matter jurisdiction. Defendant’s motion to dismiss, under Rules 12(b)(1) and (6) of

the Federal Rules of Civil Procedure, is therefore based on lack of subject matter jurisdiction and

failure to state a claim.

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FACTS

Plaintiff’s Complaint asserts two claims, neither of which can survive dismissal: one for

infringement of registered trademarks (Counts I, II, and III) and one for a declaratory judgment

concerning a trademark application that is already the subject of a pending opposition in the

Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office

(“USPTO”) (Count IV). 1

Plaintiff’s Trademark Infringement Claims

Plaintiff claims that the word DRAGON and other terms that include the word DRAGON

are registered trademarks owned by a non-party to this civil action, K. Hansotia & Co., Inc.

(Compl. ¶¶ 1, 8). Plaintiff claims it is “the exclusive licensee” of that “family of DRAGON

trademarks” for use on cigars. (Compl. ¶ 7). Plaintiff also alleges that it plans to use the phrase

YEAR OF THE DRAGON in connection with cigars “to correspond with the Chinese lunar

calendar.” (Compl. ¶ 12). Plaintiff alleges that Defendant has used the phrase YEAR OF THE

DRAGON in connection with cigars. (Compl. ¶¶ 16, 19, 20). Plaintiff alleges that Defendant’s use

of the phrase YEAR OF THE DRAGON constitutes trademark infringement under Section 32(1)

of the Lanham Trademark Act, 15 U.S.C. § 1114(1), and entitles Plaintiff to damages (Compl.

Count I, ¶¶ 31-34). It also claims that Defendant’s use of the phrase YEAR OF THE DRAGON

constitutes unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and

entitles Plaintiff to an injunction. (Compl. Count II, ¶¶ 37-44).

Further, Plaintiff asserts a claim for “common law trademark infringement.” (Compl.

Count III, ¶¶ 45-49). Directly contrary to its earlier allegation that non-party K. Hansotia & Co.,

1
Declaration of Richard Lehv in Support of Motion to Dismiss is attached hereto as Exhibit “1” and incorporated by
reference.
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Inc. owns the DRAGON trademarks, Plaintiff claims in its common law infringement count that

“Plaintiff owns the DRAGON Trademarks.” (Compl. ¶ 47). Plaintiff claims that YEAR OF THE

DRAGON, as used by Defendant, is “confusingly similar to Plaintiff’s DRAGON Trademarks.”

(Compl. ¶ 48).

Plaintiff’s Declaratory Judgment Claim

Plaintiff alleges that “Plaintiff applied to register the YEAR OF THE DRAGON trademark

for cigars.” (Compl. ¶ 51). (As we show below, Plaintiff did not apply to register this mark; the

Application was filed by K. Hansotia & Co., Inc.) Plaintiff goes on to allege that “Defendant

opposed Plaintiff’s application … by filing a Notice of Opposition.” (Compl. ¶ 53). (As we show

below, Defendant did not oppose this Application; the Notice of Opposition was filed in the TTAB

by Davidoff & Cie SA, a Swiss corporation, which is not a party to this civil action. Moreover,

neither Plaintiff nor Defendant is a party to the Opposition proceeding.)

Plaintiff alleges that the grounds for the Notice of Opposition are that YEAR OF THE

DRAGON “fails to function as a mark, is merely descriptive, and lacks priority.” (Compl. ¶ 53).

Plaintiff claims that “there is an actual present controversy and genuine dispute between Plaintiff

and Defendant with adverse legal interests over whether Plaintiff’s application to register the

YEAR OF THE DRAGON for cigars should be granted.” (Compl. ¶ 54). Plaintiff asks this court

to enter a “declaratory judgment finding that Plaintiff is entitled to register its YEAR OF THE

DRAGON trademark [and] that Defendant’s opposition to that registration be overruled and

rejected.” (Compl., “Wherefore” clause after ¶ 56).

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Plaintiff does not allege that the grounds for the Opposition are incorrect or explain why

the term YEAR OF THE DRAGON should be registered. Nor does it explain why the TTAB

should not decide the issue.

LEGAL STANDARDS

Defendant moves to dismiss the trademark infringement claims under Rule 12(b)(6) of the

Federal Rules of Civil Procedure for failure to state a claim for relief in that Plaintiff does not own

the DRAGON Trademarks; those are owned by a non-party. Therefore, Plaintiff lacks standing to

sue.

Plaintiff moves to dismiss the declaratory judgement claim because the parties in the

Opposition proceeding are entirely different from the parties in this civil action; because this court

lacks subject matter jurisdiction to decide a trademark opposition, which is the province of the

TTAB in the USPTO; and because the declaratory judgement claim fails to state a claim for relief.

Rule 12(b)(6) provides for dismissal of a complaint for “failure to state a claim upon which

relief can be granted.” Fed. R. Civ. P. 12(b)(6). To survive a motion to dismiss for failure to state

a claim, a complaint must “contain sufficient factual matter, accepted as true, to ‘state a claim to

relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.

Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the plaintiff

pleads factual content that allows the court to draw the reasonable inference that the defendant is

liable for the misconduct alleged.” Id. While a court is to accept as true all well-plead factual

allegations, it should not credit “mere conclusory statements” or “threadbare recitals of the

elements of a cause of action.” Id.

Rule 12(b)(1) provides for dismissal based on lack of subject matter jurisdiction. “[F]acial

attacks challenge subject matter jurisdiction based on the allegations in the complaint.” D.B.C.
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Corp. v. Nucita Venezolana, C.A., 464 F. Supp. 3d 1323, 1327 (S.D. Fla. 2020) (citation omitted).

On a motion to dismiss, courts may consider documents incorporated into the complaint

by reference and matters of which a court may take judicial notice, see Lozman v. City of Riviera

Beach, 713 F.3d 1066, 1075 n.9 (11th Cir. 2013), which includes records of the TTAB. See Restivo

v. Pennachio, 21-CV-23388 (JEM), 2022 WL 4355764, at *2 n.1 (S.D. Fla. Sept. 20, 2022) (same).

ARGUMENT

I. Plaintiff’s Claims for Trademark Infringement Should Be Dismissed

Plaintiff’s trademark infringement claims (Counts I, II, and III) should be dismissed

because Plaintiff does not own the registered trademarks it claims have been infringed. “To recover

for trademark infringement under § 1114, Plaintiffs must have standing to sue’” and “‘Section

1114(a) states that violators ‘shall be liable in a civil action by the registrant for the remedies

hereinafter provided.’” Heron Dev. Corp. v. Vacation Tours, Inc., 16-CV-20683 (FAM), 2017 WL

5957743, at *8 (S.D. Fla. Nov. 30, 2017) (quoting 15 U.S.C. § 1114(1)) (emphasis added). “‘The

majority of cases hold that the statute means what it says: only the federal ‘registrant’ has standing

to sue for infringement of a federally registered mark.’” Id. (quoting 6 J. Thomas McCarthy,

McCarthy on Trademarks & Unfair Competition § 32:3 (5th ed. 2023) (hereinafter “McCarthy”)).

In Heron, applying this reasoning, the court found that because the plaintiff at issue “concede[d]

that it is not the registrant” it did not have standing to bring its claims for infringement of the

registered marks in the case, and dismissed those claims. Id. at *9. Here, Plaintiff pleads it is merely

an exclusive licensee – not the registrant – for the DRAGON Trademarks, which form the basis

for all its infringement claims. See Compl. ¶ 1, 7. Thus, as in Heron, the complaint should be

dismissed.

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In the common law infringement claim, Plaintiff pleads that “Plaintiff owns the DRAGON

Trademarks” (Compl. ¶ 47). However, this conflicts with prior paragraphs in the Complaint stating

that “K. Hansotia & Co., Inc. is the registered owner of the family of DRAGON Trademarks” and

Plaintiff is merely “the exclusive licensee of the mark[s].” (Compl. ¶¶ 1, 7). Since, by Plaintiff’s

own admission (confirmed in the records of the USPTO), it is not the owner of the marks, the

common law infringement claim fails to state a claim upon which relief can be granted. See

Mishiyev v. Cierra, 21-CV-0162 (SPC)(MRM), 2021 WL 2949526, at *4-5 (M.D. Fla. July 14,

2021) (dismissing both federal and common law claims for infringement where a plaintiff lacked

standing to sue based on a federally-registered trademark because the plaintiff had “no ownership

interest in the mark”).

II. Plaintiff’s Claim for Declaratory Judgment Should Be Dismissed.

Plaintiff’s claim for declaratory judgment should be dismissed on at least four grounds: (1)

Plaintiff fails to state a claim upon which relief can be granted, given the Opposition involves

entirely different parties; (2) this court lacks subject matter jurisdiction under the Lanham Act to

rule on a pending trademark application; (3) without subject matter jurisdiction, there can be no

claim under the Declaratory Judgment Act; and (4) the complaint fails to allege basic facts to show

that Plaintiff is entitled to a declaratory judgment.

1. The parties in the trademark opposition are entirely different than the parties here.

K. Hansotia & Co., Inc. filed Application Serial Number 97654208 in the USPTO on Oct.

29, 2022 (not February 28, 2023, as Plaintiff claims) to register YEAR OF DRAGON (not YEAR

OF THE DRAGON, as Plaintiff claims) for use in connection with “Cigars; Tobacco” in Class 34.

(Trademark Application Ser. No. 97654208, annexed as Exhibit A to Declaration of R. Lehv

(“Lehv Decl.”). Plaintiff notes that its “YEAR OF THE DRAGON cigars correspond with the
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Chinese lunar calendar.” Compl. ¶ 12. On November 15, 2023, Davidoff & Cie SA (not Defendant)

instituted a proceeding before the TTAB opposing K. Hansotia & Co., Inc.’s application. (Lehv

Decl. Ex. B).

The Notice of Opposition explains, “By tradition, the Chinese zodiac assigns an animal

(and its purported characteristics) to each year in a repeating twelve-year pattern in the following

order: Rat, Ox, Tiger, Rabbit, Dragon, Snake, Horse, Goat, Monkey, Rooster, Dog, and Pig.”

(Lehv Decl., Ex. B ¶ 4). It goes on to say that “February 10, 2024, marks the beginning of the next

YEAR OF THE DRAGON in the cycle.” (Id. ¶ 5). Further, it says that phrases like YEAR OF

THE DRAGON “are informational designations of the year in which the goods were made or

offered to the public or the services were rendered or offered, used as a marketing tie-in with Lunar

New Year celebrations”; “are no different than using the corresponding numerical year (such as

‘2012’ or ‘2024’)”; and are used in connection with all kinds of products. (Id. ¶¶ 6-7). Indeed, the

Opposer itself used YEAR OF THE DRAGON on cigars in connection with the previous Year of

the Dragon, 2012. (Id. ¶ 8).

Accordingly, the Notice of Opposition asks that registration of YEAR OF DRAGON be

refused on the grounds that YEAR OF DRAGON “fails to function as a mark, in that it is merely

informational as to the year in which the Applicant’s goods are offered”; “the term YEAR OF

DRAGON is merely descriptive”; and “[i]f YEAR OF DRAGON is nevertheless found to be a

trademark, Applicant may not register it because Applicant does not have priority, Opposer having

previously used the phrase YEAR OF THE DRAGON in connection with the year 2012.” (Lehv

Dec., Ex. B ¶¶ 11, 13, 15); see also Compl. ¶¶ 15, 53 (referencing “opposition number 91288234”).

Thus, Plaintiff’s declaratory judgment claim involves the wrong parties. The parties to the

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Opposition are K. Hansotia & Co., Inc., the Applicant, and Davidoff & Cie SA, the Opposer.

Plaintiff and Defendant are not parties to the Opposition. See Lehv Decl., Exs. B (Notice of

Opposition) and C (Answer to Notice of Opposition). Plaintiff obviously has no standing to ask

for a declaratory judgment with respect to a trademark application it did not file, and which is

owned by a non-party to this civil action. At the same time, the declaratory judgment claim does

not state a cause of action against Defendant, which did not oppose the YEAR OF DRAGON

Application and is not a party to the Opposition proceeding.

2. No subject matter jurisdiction.

The declaratory judgment claim amounts to an attempt to remove the pending Opposition

proceeding from the TTAB to a district court. There is no statutory basis for such a procedure.

Section 13 of the Lanham Act, 15 U.S.C. § 1063, provides that opposition proceedings are filed in

the TTAB. It does not provide for removal of such proceedings to a district court or for concurrent

jurisdiction of such proceedings with the district courts. If, and only if, the TTAB issues a decision,

the losing party may appeal either to the U.S. Court of Appeals for the Federal Circuit or to a

district court. 15 U.S.C. §§ 1071(a)-(b). Thus, by the express terms of the Lanham Act, there must

be a “decision” by the TTAB before a party can appeal to the Federal Circuit or to a district court.

Here, there has been no decision by the TTAB.

Thus, “courts nationwide have generally held that they cannot preempt the PTO and cancel

a trademark application, as doing so infringes upon the PTO’s primary authority to adjudicate such

applications in the first instance.” D.B.C. Corp., 464 F. Supp. 3d at 1331-32; Zany Toys, LLC v.

Pearl Enters., LLC, 13-CV-5262 (JAP)(TJB), 2015 WL 404644, at *5 (D.N.J. Jan. 28, 2015)

(“[U]nder the clear language of the Lanham Act, no claim arises under either §§ 1119 or 1120 until

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the relevant party has acquired a trademark, not merely when a trademark application is filed.”);

Whitney Info. Network, Inc. v. Gagnon, 353 F. Supp. 2d 1208, 211 (M.D. Fla. 2005) (“the existence

of a pending application is not sufficient” for a declaratory judgment claim); GMA Accessories,

Inc. v. Idea Nuova, Inc., 157 F. Supp. 2d 234, 241 (S.D.N.Y. 2000) (“Idea Nuova cites no authority

for the proposition that § 37 permits a district court to cancel a pending trademark application.”);

Johnny Blastoff Inc. v. L.A. Rams Football Co., 48 U.S.P.Q.2d 1385, 1386 (W.D. Wis. 1998),

aff’d, 188 F.3d 427 (7th Cir. 1999) (“Because the PTO has yet to rule on the parties’ competing

federal applications for registration of the ‘St. Louis Rams’ mark, this court is without authority to

direct that body to grant or deny the pending applications.”); “[A]n applicant whose application is

opposed before the Trademark Board should not be allowed to short-circuit the administrative

opposition process by filing suit for declaratory judgment in a federal court, asking the court to

utilize Lanham Act § 37 to decide the fate of the pending application.” 5 McCarthy § 30:113.50.

Given that the Opposition remains pending, this Court lacks subject matter jurisdiction under the

Lanham Act to decide whether K. Hansotia & Co., Inc.’s Application for YEAR OF DRAGON

should be registered.

3. The Declaratory Judgment Act does not provide subject matter jurisdiction.

The Declaratory Judgment Act creates a remedy for a declaratory judgment in district court

only “[i]n a case of actual controversy within its jurisdiction.” 28 U.S.C. § 2201(a) (emphasis

added). “It is well-settled that the Declaratory Judgment Act is not itself an independent basis for

subject matter jurisdiction.” GMA Accessories, 157 F. Supp. 2d at 244 (citing Niagara Mohawk

Power Corp. v. Tonawanda Band of Seneca Indians, 94 F.3d 747, 752 (2d Cir. 1996)). Because there

is no subject matter jurisdiction, Plaintiff has no right to assert a declaratory judgment claim.

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4. The complaint fails to state why Plaintiff is entitled to a declaratory judgment.

Based on the prior three grounds, the declaratory judgment claim must be dismissed.

Moreover, Plaintiff has not even stated the basic elements of a claim for a declaratory judgment.

Under Rule 12(b)(6), the complaint must state plausible factual grounds for granting the relief it

seeks. Iqbal, 556 U.S. at 678;. Twombly, 550 U.S. at 570. Here, Plaintiff merely alleges that there

is an Opposition pending, summarizes the grounds for the Opposition, and asks this court to allow

YEAR OF DRAGON to be registered. Plaintiff utterly fails to allege that the grounds in the Notice

of Opposition are in any way incorrect or explain why K. Hansotia & Co., Inc. is entitled to a

registration. Nor does it explain why it needs a declaratory judgment at all, when the matter is

already before the TTAB. This failure to state the most basic elements of a claim is an additional

reason why the declaratory judgment claim must be dismissed.

RULE S.D. Fla. L.R. 7.1(a)(3) CERTIFICATION

The undersigned hereby certifies that he has attempted to confer in good faith with

counsel for Plaintiff and has been involved in ongoing settlement discussions with Plaintiff for

several weeks and unable to resolve differences, therefore resulting in the filing of this Motion to

Dismiss.

CONCLUSION

For the foregoing reasons, Plaintiff’s claims for infringement and declaratory judgment

must be dismissed.

Date: February 9, 2024 Respectfully submitted,

/ s/ Jeffrey W. Gibson
Jeffrey W. Gibson, Esq.
Florida Bar Number: 836818
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Primary email: [email protected]

Secondary email: [email protected];
[email protected]
MACFARLANE FERGUSON & MCMULLEN
201 N. Franklin Street, Suite 2000
Post Office Box 1531 (33601-1531)
Tampa, Florida 33602
Telephone: 813-273-4200, Fax: 813-273-4396
Local Counsel of Record for Defendant

FROSS ZELNICK LEHRMAN & ZISSU, P.C.

Richard Z. Lehv ([email protected])
Andrew Nietes ([email protected])
151 West 42nd Street, 17th Floor
New York, New York 10036
Tel: (212) 813-5900
Pro Hac Vice Motion Anticipated
Attorneys for Defendant, Davidoff of Geneva USA, Inc.

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that a true and correct copy of the foregoing has been furnished by

electronically with the Clerk of Court by using the CM/ECF system and by email to, Michael

Ehrenstein, Esq., [email protected]; [email protected]; Ehrenstein Sager,

2800 Ponce De Leon Blvd., Suite 1400, Coral Gables, FL 33134, Attorney for Plaintiff this 9th

day of February, 2024.

/s/ Jeffrey W. Gibson

Jeffrey W. Gibson, Esq.
Florida Bar Number: 836818
Local Counsel of Record

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