Fight Over 'X'

Fight Over 'X'

By Janet Leiser

Senior Editor

Fuente Cigar Ltd., one of the largest family-owned premium hand-rolled cigar companies in the world, is trying to stop Hoja International LLC from selling a new cigar called "Pyramide XXX."

Fuente filed a federal trademark infringement complaint July 25 in Tampa against Hoja and Edward Nikka, Hoja's managing member, alleging the name of Hoja's new cigar wrongly capitalizes on the Fuente family reputation established through nearly 100 years of hard work on the part of four generations.

"In recent years, Fuente Cigar's products have enjoyed unprecedented popularity," states the complaint. "Independent surveys show that Fuente Cigar's brands are some of the best selling and the hottest (most sought after) cigars in the American market."

Fuente sells OPUSX, FORBIDDEN X, PERFECXION X and other cigars marked with X or XXX, for which it holds U.S. trademarks, according to the complaint.

Arturo Fuente learned cigar making in Cuba prior to immigrating to Ybor City. In 1912, he started rolling and selling handmade cigars in Tampa.

After his factory burned down in the 1940s, Arturo Fuente worked out of the family's house.

His son, Carlos Fuente Sr., grew up in the business. Carlos Sr. told trade publication Cigar Aficionado in 1995 that as a child he rolled 50 cigars each afternoon after school and prior to going out to play. Now his son Carlos Jr. is also in the business.

In the early 1990s, the family began growing tobacco in the Dominican Republic. In fact, Fuente Cigar had ignored naysayers to become the first company to grow tobacco successfully on the island, according to the complaint.

The Fuente family worked throughout the late 1980s and early 1990s to develop the Fuente OPUSX cigar, made with Dominican tobacco.

"This top-priority, high-profile development effort was known throughout the cigar industry as 'Project X,' according to the complaint. "The cigar industry and its consumers alike understood the importance of the special cigar and there was much publicity regarding Project X."

After the tobacco was grown at their farm, Chateau de la Fuente, the company picked 30 of its "most skilled and highly trained artisans" to roll the OPUSX.

"The result of Fuente's years of effort and multimillion-dollar investment is a cigar brand that is extraordinarily sought after among cigar aficionados," the lawsuit states.

Forbes magazine described the cigar, introduced in 1995, as "a 100% Dominican cigar that Castro himself would envy," according to the complaint. The cigar is consistently ranked in the 90s on a scale of 1 to 100 by Cigar Insider and Cigar Aficionado. "As a result, the Fuente OPUSX cigar and trademarks have become perhaps the most famous in the cigar industry."

Demand for OPUSX cigars exceeds an annual supply of 600,000 to 700,000, the complaint states. That's why Fuente asks its retailers to limit sales of the cigars to two per customer. Retail prices usually range from $8 to $14.50, depending on the size and shape. But they often sell for more.

"Unfortunately with the fame, popularity and goodwill have come those who desire to unjustly benefit from all of the hard work, effort, time and money that it has taken to create the fame and goodwill of the Fuente family's of X marks," it states. "In the past few years, Fuente has been forced to bring numerous suits against counterfeiters and infringers of its X family of marks."

In the late 1990s and early 2000s, the company fought a battle with competitor Opus One over the OPUSX trademark in Tampa federal court. That eventually ended in an undisclosed settlement.

In the lawsuit against Hoja International, Fuente is represented by Tampa lawyer William C. Guerrant and Patrick J. Risch of Hill, Ward & Henderson PA and Atlanta intellectual property lawyer Virginia L. Carron of Atlanta's Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

"As a result of defendants' conduct, the public is likely to believe that defendants' products are somehow sponsored by, authorized by or affiliated with Fuente," states the complaint.

In recent years, the cigar industry has experienced a "mini-boom" as young adults have become interested in cigars, states the complaint. These young adults often gather their information from the Internet, which means "they're particularly susceptible to confusion as to the source of cigars, especially when new cigars are released bearing marks that are similar to well established, popular brands."

The cigar company contends that "because of its moral and legal obligation to protect its customers from confusion, Fuente has been forced to send cease and desist letters" to companies improperly using the X mark.

The registered agent for Hoja International, Barry Oliver Chase, a Miami lawyer, did not return a telephone call prior to deadline.