S.D. Fla. 23-cv-62373 DCKT 000024 - 000 Filed 2024-06-10
S.D. Fla. 23-cv-62373 DCKT 000024 - 000 Filed 2024-06-10
Plaintiffs,
vs.
Defendant.
________________________________________________/
THIS CAUSE is before the Court upon Defendant Davidoff of Geneva USA, Inc.
(“Defendant”)’s Motion to Dismiss Plaintiffs’ Amended Complaint (the “Motion”) [DE 17]. The
Court has carefully considered the Motion [DE 17], Plaintiffs Gurkha Cigar Group, Inc.
(“Gurkha”) and K. Hansotia & Co., Inc. (“Hansotia”) (collectively, “Plaintiffs”)’s Response [DE
22], Defendant’s Reply [DE 23], and is otherwise fully advised in the premises.
I. BACKGROUND
This action arises from Defendant’s alleged unauthorized use of the YEAR OF THE
DRAGON mark to identify its cigars. See [DE’s 1, 12]. According to the allegations of the First
“DRAGON LORD” (collectively, the “Registered DRAGON Marks”) with respect to the sale of
cigars. FAC at ¶¶ 8–9. Plaintiff Gurkha is the exclusive licensee of the Registered DRAGON
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Marks for the sale of tobacco and other products. FAC at ¶ 8. Since about 2007, Plaintiffs have
continuously advertised, marketed, and sold cigars bearing the Registered DRAGON Marks.
FAC at ¶ 13.
Plaintiffs intend to advertise and sell YEAR OF THE DRAGON cigars to correspond
with the Chinese lunar calendar. FAC at ¶ 14. On or about October 29, 2022, Plaintiff Hansotia
filed an application in the United States Patent and Trademark Office (“USPTO”) to register the
mark YEAR OF DRAGON for cigars. FAC at ¶ 16; [DE 17-1]. On or about November 15, 2023,
Defendant’s affiliate, Davidoff & Cie SA, instituted a proceeding before the Trademark Trial and
Appeal Board (“TTAB”) opposing Hansotia’s application to register the YEAR OF DRAGON
trademark. FAC at ¶ 16; [DE 17-1]. 1 In the Notice of Opposition, Davidoff & Cie SA requests
that the TTAB deny Hansotia’s application to register the YEAR OF DRAGON trademark
because it fails to function as a mark, is merely descriptive, and because Hansotia lacks priority.
Meanwhile, Defendant began advertising, marketing, and selling cigars bearing a YEAR
OF THE DRAGON mark that is confusingly similar to Hansotia’s Registered DRAGON Marks
and unregistered YEAR OF DRAGON mark. FAC at ¶¶ 24–25. Defendant did not have
authorization or consent to use the YEAR OF THE DRAGON mark. FAC at ¶ 27.
Based on the foregoing, Plaintiffs instituted the instant action, bringing the following four
claims against Defendant: (1) Count I, by Plaintiff Hansotia, for violation of the Lanham Act (15
1
The Court takes judicial notice of the filings in the proceedings before the TTAB. The court may take judicial
notice of another court's docket entries and orders for the limited purpose of recognizing the filings and judicial acts
they represent. McDowell Bey v. Vega, 588 F. App'x 923, 926–27 (11th Cir. 2014) (finding that district court
properly took judicial notice of entries appearing on state court's docket sheet). Additionally, the Court may take
judicial notice of facts that are not subject to dispute because they are capable of accurate and ready determination
by resort to sources whose accuracy cannot be questioned. Fed. R. Evid. 201(b). See Universal Express, Inc. v. SEC,
177 F. App'x 52, 53 (11th Cir. 2006) (finding that a district court may consider public records without converting a
motion to dismiss into a motion for summary judgment). Plaintiffs do not appear to dispute the authenticity of the
TTAB documents attached to Defendant’s Motion to Dismiss.
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U.S.C. § 1114); (2) Count II, by both Plaintiffs, for violation of the Lanham Act (15 U.S.C. §
1125(a)); (3) Count III, by both Plaintiffs, for common law trademark infringement; and (4)
Count IV, by both Plaintiffs, seeking a declaration that Plaintiff Hansotia is entitled to register its
YEAR OF DRAGON trademark and that the opposition to that registration by Defendant’s
On March 7, 2024, Defendant filed the instant motion to dismiss, seeking dismissal of
Count IV for declaratory judgment for lack of subject matter jurisdiction and failure to state a
lacks subject matter jurisdiction. See Fed. R. Civ. P. 12(b)(1). A party can move to dismiss a
claim under Rule 12(b)(1) for lack of subject matter jurisdiction by either facial or factual attack.
McElmurray v. Consolidated Gov't of Augusta–Richmond County, 501 F.3d 1244, 1251 (11th
Cir. 2007). “A facial attack on the [claim] requires the court merely to look and see if the [party]
has sufficiently alleged a basis of subject matter jurisdiction, and the allegations in his [claim]
are taken as true for the purposes of the motion.” Id. (quotations and citations omitted).
The standard for a facial attack is the same as for a motion to dismiss for failure to state a claim
under 12(b)(6). See Lawrence v. Dunbar, 919 F.2d 1525, 1529 (11th Cir. 1990). By contrast, a
factual attack on a claim challenges the existence of subject matter jurisdiction using extrinsic
evidence, such as affidavits or testimony. Id. The burden for establishing federal subject matter
jurisdiction rests with the party bringing the claim. See McCormick v. Aderholt, 293 F.3d 1254,
Rule 8(a)(2) requires “a short and plain statement of the claim showing that the pleader is
entitled to relief,” in order to “give the defendant fair notice of what the ... claim is and the
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grounds upon which it rests.” Conley v. Gibson, 355 U.S. 41, 47 (1957). Under Rule 12(b)(6), a
motion to dismiss should be granted only if the plaintiff is unable to articulate “enough facts to
state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007) (abrogating Conley, 355 U.S. at 41). “A claim has facial plausibility when the pleaded
factual content allows the court to draw the reasonable inference that the defendant is liable for
the misconduct alleged.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (citing Twombly, 550
U.S. at 556). The allegations of the claim must be taken as true and must be read to include any
theory on which the plaintiff may recover. See Linder v. Portocarrero, 963 F. 2d 332, 334–36
(11th Cir. 1992) (citing Robertson v. Johnston, 376 F. 2d 43 (5th Cir. 1967)). However, the court
need not take allegations as true if they are merely “threadbare recitals of a cause of action's
elements, supported by mere conclusory statements.” Iqbal, 129 S. Ct. at 1949. In sum, “a
district court weighing a motion to dismiss asks ‘not whether a plaintiff will ultimately prevail
but whether the claimant is entitled to offer evidence to support the claims.’” Twombly, 550 U.S.
at n. 8 (quoting Scheuer v. Rhodes, 416 U.S. 232, 236 (1974), overruled on other grounds, Davis
III. DISCUSSION
In Count IV, Plaintiffs seek a declaratory judgment that Plaintiff Hansotia “is entitled to
register its YEAR OF DRAGON trademark (or YEAR OF THE DRAGON, if so amended)” and
“that the opposition to that registration by Defendant’s affiliate be overruled and rejected[.]” See
FAC at p. 12. Defendant moves to dismiss Count IV under Rule 12(b)(1), arguing that the Court
lacks jurisdiction because the claim involves a pending application, not a registered trademark.
Under the Lanham Act, “[i]n any action involving a registered mark the court may
determine the right to registration, order the cancellation of registrations, in whole or in part,
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restore canceled registrations, and otherwise rectify the register with respect to the registrations
of any party to the action.” 15 U.S.C. § 1119. Where there is not yet a registered mark, the
general rule “is that an applicant whose application is opposed before the Trademark Board
should not be allowed to short-circuit the administrative process by filing suit for declaratory
judgment in a federal court, asking the court … to decide the fate of the pending application.” 4
McCarthy on Trademarks and Unfair Competition § 30:113.50 (5th ed.). Plaintiffs, however, cite
to several non-binding district court cases that “recognize an exception to this general rule where
a sufficient nexus exists between the trademark application and a registered trademark at issue in
pending litigation.” See, e.g., Jax Soccer Holdings, LLC v. Full Sail, LLC, No.
619CV1885ORL78EJK, 2020 WL 13882094, at *2 (M.D. Fla. June 29, 2020); D.B.C. Corp. v.
Nucita Venezolana, C.A., 464 F. Supp. 3d 1323, 1332 (S.D. Fla. 2020); Restivo v. Pennachio,
No. 21-23388-CIV, 2022 WL 4355764, at *6 (S.D. Fla. Sept. 20, 2022). Notably, Plaintiffs do
While not all courts agree as to this issue, courts routinely dismiss declaratory judgment
claims regarding pending trademark applications in actions involving other registered marks in
the applicant’s family of marks. See, e.g., Island IP Acquisitions, LLC v. Antle, No. 22-81293-
BER, 2023 WL 7385162, at *8 (S.D. Fla. Nov. 8, 2023) (rejecting sufficient nexus exception as
inconsistent with the unambiguous language of Section 1119); U.S. All Star Fed'n, Inc. v. Open
Cheer & Dance Championship Series, LLC, No. 6:21-CV-2135-WWB-DCI, 2023 WL 2633338,
at *4 (M.D. Fla. Mar. 24, 2023) (same); Implant Innovations, Inc. v. Debbie, LLC, No. 06-
80913-CIV, 2007 WL 9701903, at *2 (S.D. Fla. July 9, 2007). As one court explained in
Section 1119 gives courts authority to take certain action, including the ability to
“determine the right to registration” or “rectify the register,” “[i]n any action
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See U.S. All Star Fed'n, Inc., 2023 WL 2633338, at *4. The Court adopts this analysis and finds
Even if the Court had jurisdiction to adjudicate applications for registration, the Court
would still decline to issue Plaintiffs’ request for declaratory relief. The Declaratory Judgment
In a case of actual controversy within its jurisdiction ... any court of the United
States, upon the filing of an appropriate pleading, may declare the rights and other
legal relations of any interested party seeking such declaration, whether or not
further relief is or could be sought. Any such declaration shall have the force and
effect of a final judgment or decree and shall be reviewable as such.
28 U.S.C. § 2201(a). “For a controversy to exist, ‘the facts alleged, under all the circumstances,
[must] show that there is a substantial controversy, between parties having adverse legal
interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.’”
Atlanta Gas Light Co. v. Aetna Cas. & Sur. Co., 68 F.3d 409, 414 (11th Cir. 1995) (quoting
Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941)). Further, “the
Capital Info. Tech. Sols., Inc., 744 F. Supp. 2d 1305, 1310 (S.D. Fla. 2010).
Here, Hansotia’s application is opposed by Davidoff & Cie SA, a non-party whose rights
would be affected by a determination by this Court regarding the relief sought in Count IV.
Plaintiffs cite no authority permitting the Court to issue a declaratory judgment under such
circumstances. Moreover, aside from conclusory allegations that Davidoff & Cie SA is an
affiliate of Defendant, Plaintiffs do not allege that Defendant has a substantial interest in the
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proceedings before the TTAB or that Defendant can adequately represent Davidoff & Cie SA’s
interests. These concerns further militate against the exercise of jurisdiction over Plaintiffs’
Accordingly, the Court will dismiss Count IV without prejudice for lack of subject matter
jurisdiction. 2
IV. CONCLUSION
Based on the foregoing, it is ORDERED AND ADJUDGED as follows:
3. Defendant shall file its answer to Counts I, II, and III of the First Amended Complaint
2
Because the Court dismisses Count IV for lack of subject matter jurisdiction, the Court does not address
Defendant’s other arguments for dismissal.