Another fight over the use of the letter “X” has broken out and this time it involves General Cigar Co. On July 5, the law firm representing Arturo Fuente Cigar Co. sent a cease and desist letter to General Cigar requesting that the company immediately discontinue use of the X mark found on General’s new Bx3 CAD mark logo. According to Fuente, the prominent use of the letter “X” on the box and packaging of the CAO Bx3 constitutes infringement of its trademark, in particular for the Fuente Fuente OpusX cigar brand.
The letter addressed to the general states:
“We acknowledge and understand that the mark is used with the CAD house brand, but due to the prominent X, your use of the BX3 mark is likely to cause confusion with Fuente and its X marks for smoking articles. Thus, we ask that you cease using this brand and any other Fuente brand, so that consumers are not misled into believing that your cigars are associated with or manufactured, licensed or endorsed by Fuente.
In response, General filed a lawsuit for declaratory judgment on July 11 in the United States District Court for the Eastern District of Virginia against Fuente Cigar Ltd. and Fuente Marketing Ltd. General requests a statement that its CAD mark Bx3 does not infringe Fuente. trademarks.
General argues that other CAD brands, particularly CAD Lx2 and CAD Mx2, have been in the market for over a decade, and both incorporate the letter “X” into their respective trade dress and logos, such as the Bx3. Fuente, says General, has never had any legal issues with these marks in the past.
“Fuente’s request ignored General Cigar’s longstanding use of X as a trademark motif in connection with CAO cigars, including CAO Lx2 and CAO Mx2,” General said in a statement. “Most importantly, Fuente ignored the obvious: consumers could never confuse the parties’ respective trademarks and trade dress.
General’s use of the letter “X” on the new BX3 mark is more prominent than on previous CAD marks.
Fuente Fuente Opus X
Regis Broersma, senior vice president of General’s parent company, Scandinavian Tobacco Group, calls Fuente’s position “baseless”, adding that Fuente has never had a problem with previous CAD marks that used the “X” pattern. “.
“The point is that CAO has a series of legacy brands with ‘X’ in their name and trade dress, including CAO Lx2, CAO Mx2 and others, which have co-existed with the Fuente brands for many years.”
Fuente President Carlos Fuente Jr. answered questions about the Battle of cigar lover. “We are a family owned and operated cigar factory. It’s another David versus Goliath affair,” he said. “I am very disappointed with very, very few of my colleagues.”
It wouldn’t be the first time Fuente has sued another cigar company for using the letter “X.” In 2007, Fuente took legal action against Gurkha’s use of crossed swords on a series of cigar boxes, claiming that the design of the swords and tin resembled the OpusX insignia too much. The two companies settled in 2008. Some may recall back in 2005 when Fuente sued the now defunct EO trademarks for its use of an “X” on the Serie X line. Those cases, however, targeted small businesses. Today, Fuente is embroiled in a legal battle with one of the biggest tobacco companies in the world.
“We look forward to advancing our position in federal court,” Broersma said.