Clever Or Contemptuous? The “Great Injunction Cigarros” Trademark

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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FritzIn its recent decision in Cigar King v. Corporacion Habanos, the Federal Circuit Court of Appeals affirmed the cancellation of Cigar King’s trademarks after it failed to comply with discovery orders.  This was only the latest in a long line of trademark disputes between cigar brands, and is by no means the first example of a stogie manufacturer that had a complicated relationship with a court order. Perhaps the party with the most chutzpah in this regard was the Fritz Brothers Company of Cincinnati.

In 1887, the Fritz Brothers began selling “Great Republic Cigarros.” Their competitor, the New York-based George P. Lies Company, was not happy about this, because it had already been selling “Grand Republic Cigarros” for ten years, and had registered its mark with the U.S. Patent Office. To make matters worse, the Fritz brothers appeared to have modeled the Great Republic packaging after the Grand Republic packing, including a similar cedar box, similar embossed seal, and a similar label inside the box with an image of a seated “goddess” (Grand Republic featured the “goddess of liberty;” Great Republic the “goddess of  industry”). The George P. Lies Company instituted trademark proceedings. An Ohio court found that there was a likelihood of confusion between the two products, and issued an injunction against the Fritz Brothers’ continued sale of the “Great Republic” cigars.

greatrepublic“Hoping to escape” the injunction, the Fritz Brothers brazenly relabeled their product “Great Injunction Cigarros,” and put them right back on the market. Other than the name, the packaging remained the same. L.J. Daniel, a cigar merchant in Georgia, began distributing the defiant product pursuant to an indemnification agreement with the Fritz Brothers. The George P. Lies Company brought a new trademark infringement suit against Mr. Daniel in Georgia.

Daniel asserted that he was not bound by the prior Ohio injunction and, in any event, he was not violating it.  Daniel argued, among other things, that the name “Great Injunction” had not confused anyone. On the contrary, the name advertised to his customers that there was a trademark controversy, and therefore a difference, between the two brands. The Judge agreed with Daniel, and the Supreme Court of Georgia subsequently affirmed. The case was Lies v. Daniel, 82 Ga. 272 (1888).

Sadly, this author was unable to locate a photograph of the “Great Injunction” product, and it doesn’t appear to be on the market anymore. On the bright side, the name is just sitting there unused; perhaps a great rebranding opportunity for the Cigar King.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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