Case 0:23-cv-62373-WPD Document 24 Entered on FLSD Docket 06/10/2024 Page 1 of 7

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

CASE NO.: 0:23-cv-62373-WPD

GURKHA CIGAR GROUP, INC.

and K. HANSOTIA & CO., INC.,

Plaintiffs,

vs.

DAVIDOFF OF GENEVA USA, INC.,

Defendant.
________________________________________________/

ORDER ON DEFENDANT’S MOTION TO DISMISS PLAINTIFFS’ AMENDED

COMPLAINT

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

Amended Complaint (“FAC”) [DE 12]:

Plaintiff Hansotia owns the registered trademarks “DRAGON,” “DRAGON FIRE,”

“DRAGONSLAYER,” “IMPERIAL DRAGON,” “RED DRAGON,” “ROYAL DRAGON,” and

“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.

FAC at ¶ 58; [DE 17-1]. That proceeding is still pending.

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

affiliate be overruled and rejected. See FAC.

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

claim. See [DE 17].

II. LEGAL STANDARD

Federal Rule of Civil Procedure 12(b)(1) allows for dismissal of a claim when the court

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,

1257 (11th Cir. 2002).

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

v. Scherer, 468 U.S. 183 (1984)).

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.

The Court agrees.

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

not cite any federal appellate decision recognizing such an exception.

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

dismissing a claim requesting denial of pending trademark applications:

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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involving a registered mark[.]” 15 U.S.C. § 1119. However, this broad grant of

discretion applies only to the “registrations” of a party to the action. Id. Because an
application for registration is not a registration, it appears that the unambiguous
language of the statute forecloses this Court's ability to review and adjudicate
applications for registration, regardless of their connection to the registered mark
involved in the litigation.

See U.S. All Star Fed'n, Inc., 2023 WL 2633338, at *4. The Court adopts this analysis and finds

that it lacks jurisdiction to adjudicate Hansotia’s pending trademark application.

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

Act provides, in pertinent part:

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

decision to entertain a declaratory judgment is discretionary.” Hackett & Assoc., Inc. v. GE

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’

claim for declaratory judgment.

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:

1. Defendant’s Motion [DE 17] is GRANTED.

2. Count IV for declaratory relief is DISMISSED WITHOUT PREJUDICE for lack

of subject matter jurisdiction.

3. Defendant shall file its answer to Counts I, II, and III of the First Amended Complaint

[DE 12] on or before June 24, 2024.

DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County, Florida,

this 10th day of June 2024.

Copies furnished to:

Counsel of record

2
Because the Court dismisses Count IV for lack of subject matter jurisdiction, the Court does not address
Defendant’s other arguments for dismissal.