A lawsuit has been filed in the United States District Court in Southern Florida by Drew Estate and former Deadwood Tobacco Company owner Vaughn Boyd against the current Deadwood Tobacco Company owners for the unauthorized use of the Deadwood Tobacco Company trademarks. For several years these trademarks had been licensed to Drew Estate, but the current owners of Deadwood Tobacco Company are saying otherwise.
The history of this case goes back to 2009 when Drew Estate created a single-store release for Vaughn Boyd’s Deadwood Tobacco Company (DTC) known as Sweet Jane. Around 2014, two other single-store releases were done for Boyd and Deadwood including Crazy Alice and Fat Bottom Betty. According to the complaint filed, the branding and blends were created by Drew Estate. These cigars were also marketed under the brand moniker, The Yummy Bitches.
In 2016, the decision was made to take the three Deadwood-branded cigars national. To accomplish this, Deadwood Tobacco Company (“DTC”, then owned by Boyd) and Drew Estate entered into an exclusive licensing agreement under which Deadwood Tobacco granted Drew Estate an exclusive worldwide license to, among other things, the DEADWOOD Marks, granting to Drew Estate the exclusive right to, among other things, make and sell cigars under the Deadwood Marks and other marks incorporating Deadwood Tobacco Company’s name, mark, logo, or signature or facsimile thereof. Drew Estate continued to market the three cigars collectively as The Yummy Bitches. During this time the Deadwood brand became quite successful in the Drew Estate portfolio. The license agreement also allowed Drew Estate to expand the offerings and in 2020 Leather Rose was added to the collection followed by The Girl With No Name in 2022.
In the interim in 2018, Boyd would sell 99% DTC to new owners. The following year, Boyd sold her remaining 1%. However, excluded from the sale were the Deadwood Cigar trademarks and the exclusive license agreement with Drew Estate. According to the complaint, an amendment was signed that gave Drew Estate the right to add to the family of marks exclusively licensed to Plaintiff Drew Estate and the new ownership of DTC understood it.
DTC has recently started to promote and sell cigars under the Deadwood Tobacco name. According to the complaint, the new owners of DTC did not obtain permission to market cigars with that name. The complaint references a letter to cigar retailers which says DTC positioned itself as the originator of the Yummy Bitches, and it ties a new brand narrative called Chasing the Dragon back to the Yummy Bitches – something the plaintiffs said DTC did not have permission to do and is a false representation on the origin of the Yummy Bitches brand.
According to the complaint, Drew Estate notified Defendant DTC in a letter dated January 27, 2023, that its use of Deadwood Cigar Marks including Deadwood Cigar Co. Chasing the Dragon, and misrepresentations that DTC is the originator of the Drew Estate’s Deadwood brand and the Yummy Bitches marks, constitute trademark infringement and false statements to the public and has demanded that such activity cease to avoid the likelihood of confusion and the Drew Estate letter also demanded public notice. On June 9, DTC responded saying the license agreement was unenforceable and has threatened its own litigation against Boyd and Drew Estate.
The cigars under Chasing the Dragon (Auntie, Zero, Midnight Oil) were produced by C.L.E. Cigar Company. Originally they were store exclusives, when they were released nationally, C.L.E. started handling the distribution.
This past week, halfwheel.com assessed one of the Chasing the Dragon cigars. Many people make comments to me about other media site reviews which I never understood because each is its own media element. This case is a little different. First I learned, Chasing the Dragon is a name that has connotations to illegal drugs (call me naive, I did not know that). Second, the comments to me were, “I didn’t know about this Drew Estate Cigar.” Third, I had little to no knowledge about C.L.E.’s involvement with this project. While Drew Estate promoted their partnership extensively to media, C.L.E. has been almost silent with the media in terms of understanding this project and its involvement. That was C.L.E.’s decision to make, but what I will say is outside retail channels, I’m not sure how many people were aware of the connection on the consumer or media channels.
In fairness, this was a story first broken and reported by the folks at halfwheel. When they broke the story, they reported on a comment by C.L.E. owner Christian Eiroa stating the brand name of Chasing the Dragon was changing to Asylum 867, but the names Auntie, Zero, and Midnight Oil are being kept. It seemed this was more of a response to the connotations of the Chasing the Dragon name.
Image Credit: Drew Estate
Originally posted on June 16, 2023 @ 2:17 pm