Guantanamera Cigars Company v. SMCI Holding, Inc

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

CASE NO. 21-cv-21714-GOODMAN

[CONSENT]

GUANTANAMERA CIGARS COMPANY,

a Florida corporation,

Plaintiff,

v.

SMCI HOLDING, INC., et al.,

Defendants.

_________________________________________________/

OMNIBUS ORDER ON PLAINTIFF’S DAUBERT MOTIONS

Plaintiff Guantanamera Cigars Company (“Guantanamera” or “Plaintiff”),

manufacturer of a cigar bearing the name “DUO”, filed a three-count lawsuit against

Defendants SMCI Holding Inc., Swedish Match North America, LLC, Swedish Match

USA, Inc. (collectively, “Swedish Match”), Sam’s West, Inc. d/b/a/ Sam’s Club, and Costco

Wholesale Corporation based on the production, sale, and marketing of cigarillos bearing

the name “DUOS.” [ECF No. 1]. Plaintiff sued Defendants for federal Trademark

Infringement, federal Unfair Competition, and common law Trademark Infringement. Id.

Defendants filed a two-count Counterclaim against Plaintiff for: (1) Declaratory

Judgment on Trademark Infringement and (2) Declaratory Judgment on Fair Use.1 [ECF

No. 36].

In support of their defense and counterclaims, Defendants enlisted three experts:

(1) Rushabh Patel, a CEO with more than a decade of experience in sales, marketing,

business strategy, and managing the day-to-day operations of cigar and smoking

product/accessory companies; (2) Robert Leonard, a tenured professor of linguistics at

Hofstra University; and (3) Charles Taylor, a professor of marketing at the Villanova

School of Business, and former President of the American Academy of Advertising.

Plaintiff filed three Daubert2 motions seeking to exclude the entirety of the

testimony and opinions of Rushabh Patel, Robert Leonard and Charles Taylor. [ECF Nos.

163; 164; 167]. Each Daubert motion has been fully briefed with a response [ECF Nos. 178;

180; 181] and a reply [ECF Nos. 185; 186; 187].

For the reasons outlined below, the Undersigned grants in part and denies in part

Plaintiff’s Motion to Exclude the Testimony of Rushabh Patel [ECF No. 163]; denies

Plaintiff’s Motion to Exclude the Testimony of Robert Leonard [ECF No. 164]; and grants

in part and denies in part Plaintiff’s Motion to Exclude the Testimony of Charles Taylor

1 Defendants’ first counterclaim included eight counts. [ECF No. 12]. In Defendants’

Amended Answer and Counterclaim, they left only these two counts from the original.

2 Daubert v. Merrell Dow Pharmaceuticals Inc., 509 U.S. 579 (1993).

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[ECF No. 167].

I. CLAIMS AND INTRODUCTION

Guantanamera has been in the cigar industry since 1997. It produces many

different types of cigars, including, relevant to this case, cigars bearing the “DUO” mark

as an identifier. Guantanamera began producing, marketing, and selling its “DUO” cigars

in 2008 and has been continuously and exclusively using the mark since its inception. On

August 4, 2009, Guantanamera registered U.S. Trademark Registration No. 3,664,534 for

“DUO” for use in connection with Cigars in International Class 34. The Registration

became incontestable in 2016.

In or about August 2020, Swedish Match, a multinational tobacco company,

launched a new cigar product bearing the term “DUOS.” Before launch, Swedish Match

conducted a trademark search for “DUOS” and the results returned Plaintiff’s live

trademark as the only one including terms “DUOS” or “DUO.”

Guantanamera’s “DUO” cigars are considered premium cigars, as defined by the

FDA. These cigars are handmade and contain foreign-grown tobacco. In contrast,

Swedish Match’s White Owl3-branded cigarillos do not qualify as premium cigars as

3 Swedish Match’s “DUOS” cigarillos were part of its White Owl branding and are

encompassed in this general description of Swedish Match’s products. Swedish Match no

longer markets its dual, complimentary-flavored, cigarillos as “DUOS” and, instead, now

uses the term “Pairs.”

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defined by the FDA. Its cigarillos are machine-made, mass produced, have non-tobacco

flavors added, and sell for as little as 99 cents for a package of two.

Plaintiff alleges that it is the owner of an incontestable trademark for the mark

“DUO” for use in connection with Cigars in International Class 34. It claims that Swedish

Match and the other Defendants adopted and used “DUOS” as a trademark in connection

with the sale of cigars. In Plaintiff’s view, the “DUOS” mark is confusingly similar to its

own “DUO” mark. In its prayer for relief, Plaintiff seeks compensatory or statutory

damages, a temporary and permanent injunction, attorneys’ fees and costs, and other

remedies that the Court may award.4

Defendants’ theory is that its “DUOS” mark is descriptive of the fact that its

product contains two complimentary-flavored cigarillos (i.e., berries and cream, mango

and pineapple, etc.). They contend that Plaintiff’s incontestable mark is weak and

unworthy of trademark protection. In Defendants’ view, despite their marketing of

similar products, there is very little, if any, overlap between the two product lines, and

they are each sold, marketed, and consumed in noticeably different ways.

In support of their theory, Defendants enlisted three experts to testify on the

linguistic meaning of the words “duo” or “duos”, the tobacco/cigar industry, and

4 In Plaintiff’s Rule 26 disclosure, it reveals that it is no longer seeking actual

damages and is instead seeking disgorgement, attorney fees, and the possible trebling of

damages. [ECF No. 169-9].

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marketing principles. Plaintiff seeks wholesale exclusion of each opinion and contends

that each expert has relied on unreliable or non-existent methods, bad or unreliable data,

or is not offering any actual expert testimony.

II. LEGAL FRAMEWORK

The district court has “broad discretion in determining whether to admit or

exclude expert testimony, and its decision will be disturbed on appeal only if it is

manifestly erroneous.” Evans v. Mathis Funeral Home, 996 F.2d 266, 268 (11th Cir. 1993).

Federal Rule of Evidence 702 governs the admission of expert testimony, as explained

and refined by the United States Supreme Court in Daubert v. Merrell Dow Pharms., Inc.,

509 U.S. 579, 582 (1993) and Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137 (1999). Under

this framework, district courts are charged with a gatekeeping function “to ensure that

speculative, unreliable expert testimony does not reach the jury.” McCorvey v. Baxter

Healthcare Corp., 298 F.3d 1253, 1256 (11th Cir. 2002).

Rule 702 provides that:

A witness who is qualified as an expert by knowledge, skill, experience,

training, or education may testify in the form of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other specialized knowledge will

help the trier of fact to understand the evidence or to determine a fact in

issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

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(d) the expert has reliably applied the principles and methods to the facts

of the case.

Fed. R. Evid. 702.

To fulfill its obligation under Daubert, a trial court engages in a three-part inquiry:

(1) whether the expert is qualified to testify competently; (2) whether the methodology

used to reach the conclusions is sufficiently reliable; and (3) whether the testimony assists

the trier of fact to understand the evidence or to determine a fact at issue. Rink v.

Cheminova, Inc., 400 F.3d 1286, 1291-92 (11th Cir. 2005).

As an overarching principle, the district court must “ensure that speculative,

unreliable expert testimony does not reach the jury.” McCorvey, 298 F.3d at 1256. “In order

to be admissible, an expert’s testimony must be based on ‘more than subjective belief or

unsupported speculation.’” Haggerty v. Upjohn Co., 950 F. Supp. 1160, 1167 (S.D. Fla. 1996)

(quoting Daubert, 509 U.S. at 590). There should be “[s]cientific method; good grounds

and appropriate validation.” U.S. v. Masferrer, 367 F. Supp. 2d 1365, 1371 (S.D. Fla. 2005).

Reliability of the methodology requires “an exacting analysis of the proffered

expert’s methodology.” McCorvey, 298 F.3d at 1257. That analysis takes into consideration

a number of factors, including: (1) whether the expert’s methodology can be, and has

been, tested; (2) whether the expert’s scientific technique has been subjected to peer

review and publication; (3) whether the method employed has a known rate of error; and

(4) whether the technique is generally accepted in the scientific community. Rink, 400 F.3d

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at 1292; see also Quiet Tech. DC–8, Inc. v. Hurel–Dubois UK Ltd., 326 F.3d 1333, 1341 (11th

Cir. 2003).

These reliability factors, however, are non-exhaustive. Kumho Tire, 526 U.S. at 150;

Rink, 400 F.3d at 1292. Thus, “[i]n evaluating the reliability of an expert’s method . . . a

district court may properly consider whether the expert’s methodology has been

contrived to reach a particular result.” Rink, 400 F.3d at 1293 n.7. The burden of

establishing the reliability of an expert’s opinions rests on the proponent of that expert’s

testimony. U.S. v. Frazier, 387 F.3d 1244 (11th Cir. 2004). The party proffering the expert

also has the burden of “laying the proper foundation for the admission of the expert

testimony . . . and admissibility must be shown by a preponderance of the evidence.”

Allison v. McGhan Med. Corp., 184 F.3d 1300, 1306 (11th Cir. 1999).

“It is not the role of the district court to make ultimate conclusions as to the

persuasiveness of the proffered evidence.” Quiet Tech. DC–8, Inc., 326 F.3d at 1341. Thus,

the district court cannot exclude an expert because it believes the expert lacks personal

credibility. Rink, 400 F.3d at 1293 n.7. To the contrary, “vigorous cross-examination,

presentation of contrary evidence, and careful instruction on the burden of proof are the

traditional and appropriate means of attacking shaky but admissible evidence.” Quiet

Tech. DC–8, Inc., 326 F.3d at 1341 (quoting Daubert, 509 U.S. at 596).

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A less-than-perfect expert opinion may still be admitted, even if it contains gaps.

See In re Trasylol Prods. Liab. Litig., No. 08–MD–01928, 2010 WL 1489793, at *6 (S.D. Fla.

Feb. 24, 2010) (“Only if the expert’s opinion is so fundamentally unsupported that it can

offer no assistance to the jury must such testimony be excluded.”).

Furthermore, courts “must be careful not to conflate questions of admissibility of

expert testimony with the weight appropriately to be accorded to such testimony by the

fact finder.” Id. at *7 (quoting Quiet Tech DC–8, Inc., 326 F.3d at 1341).

On the other hand, courts do not hesitate to exclude purported expert testimony

which does not pass muster. See Allison, 184 F.3d 1300 (affirming summary judgment in

favor of silicone breast implant manufacturers and upholding district court’s exclusion

of proffered expert’s causation testimony under Daubert); Rink, 400 F.3d at 1286 (affirming

exclusion of expert testimony in products liability and toxic trespass claims against

pesticide manufacturer and therefore affirming summary judgment for defendant);

Frazier, 387 F.3d 1244 (finding trial court in criminal case did not abuse its discretion in

excluding proffered expert testimony from forensic investigator); Hendrix v. Evenflo Co.,

Inc., 609 F.3d 1183 (11th Cir. 2010) (affirming defense summary judgment for infant car

seat manufacturer in products liability lawsuit involving child who sustained traumatic

brain injuries and upholding trial court ruling which excluded expert testimony because

the experts were not sufficiently reliable).

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If a case is proceeding as a bench trial, the court’s gatekeeper function is relaxed.

While Daubert requires trial courts to act as “gatekeepers” to ensure a jury is not exposed

to “speculative, unreliable expert testimony,” McCorvey, 298 F.3d at 1256, these concerns

“are greatly reduced when the expert will testify during a bench trial,” Exim Brickell LLC

v. Bariven, S.A., No. 09-CV-20915, 2011 WL 13131317, at *4 (S.D. Fla. Mar. 11, 2011). As

stated by the Eleventh Circuit, “[t]here is less need for the gatekeeper to keep the gate

when the gatekeeper is keeping the gate only for himself.” United States v. Brown, 415 F.3d

1257, 1269 (11th Cir. 2005).

III. ANALYSIS

Although Defendants’ three experts each seek to offer opinions on largely distinct

topics, Plaintiff’s requests to exclude their testimony are indistinguishable in many

instances. As an overarching theme, Plaintiff alleges the expert opinions are an attempt

to evade the binding deposition testimony of Defendants’ 30(b)(6) witness, Brian Love,

about the meaning of the terms “duo” or “duos.” Plaintiff also complains that

Defendants’ experts ignore or undervalue record evidence that Plaintiff believes to be

either important or determinative of the parties’ claims. As its final common arguments,

Plaintiff attacks the reliability of the expert’s methodology or it claims that the subject

matter is inappropriate for expert testimony.

As will be discussed below, Plaintiff’s arguments are largely unavailing. Because

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many of Plaintiff’s arguments in support of exclusion are common across each expert

(e.g., the expert should have considered the focus group, the expert should have

considered the marketing materials, this study says no research has been done on the

topic, the expert ignored this fact, etc.), certain legal principles can be commonly applied

in the analysis. Before addressing the specifics of Plaintiff’s arguments, the Undersigned

will discuss one of those important legal principles:

“[I]t is not for the Court, on a Daubert motion, to determine the credibility and

persuasiveness of [an expert’s] opinions.” Goldberg v. Aon Risk Servs., Ne., Inc., No. 13-

21653-CIV, 2018 WL 4479437, at *7 (S.D. Fla. Sept. 12, 2018). Nor is it appropriate for the

Court to exclude otherwise admissible expert testimony on the basis that the opposing

party disagrees with the facts or evidence considered. Pods Enterprises, Inc. v. U-Haul Int'l,

Inc., 2014 WL 2625297, at *3 (M.D. Fla. June 12, 2014) (“PEI also argues that Dr. Wood

improperly weighted the data, included improper questions, and failed to employ proper

quality controls. These criticisms likewise go to the weight of her opinions, not their

admissibility.”); Hersh v. Cavache, Inc., No. 17-14212-CIV, 2018 WL 6978638, at *2 (S.D. Fla.

Aug. 23, 2018), report and recommendation adopted sub nom. Hersh v. United States, No.

17-14212-CIV, 2018 WL 6978628 (S.D. Fla. Dec. 7, 2018) (rejecting exclusion argument

even though the expert reports were possibly “based on incomplete or wrong

information”).

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“[I]n most cases, objections to the inadequacies of a study are more appropriately

considered an objection going to the weight of the evidence rather than its

admissibility.” Rosenfeld v. Oceania Cruises, Inc., 654 F.3d 1190, 1193 (11th Cir. 2011)

(internal quotation and citation omitted) (emphasis supplied); see also Quiet Tech DC–8,

Inc., 326 F.3d. at 1346 (quoting Bazemore v. Friday, 478 U.S. 385, 400 (1986)) (“Normally,

failure to include variables will affect the analysis' probativeness, not its admissibility.”).

This principle is well settled throughout the country. Wilmington v. J.I. Case Co.,

793 F.2d 909, 920 (8th Cir. 1986) (“Virtually all the inadequacies in the expert's testimony

urged here by [the defendant] [-- that the expert’s report was too small a sample of

evidence --] were brought out forcefully at trial . . . . These matters go to the weight of the

expert's testimony rather than to its admissibility.”); Ruiz-Troche v. Pepsi Cola of Puerto

Rico Bottling Co., 161 F.3d 77, 85 (1st Cir. 1998) (reversing district court’s decision to

exclude an expert’s testimony as unreliable even though there was scientific literature

which “cast doubt on [the expert’s] position”); Quiet Tech. DC–8, Inc., 326 F.3d at 1345

(rejecting the argument that an expert should be excluded because “the specific numbers

that [he] used were wrong”).

Although the law is replete with cases discussing this principle, Plaintiff failed to

address it in its initial motions. Then, after being confronted with the issue by Defendants’

responses, Plaintiff continued to ignore the issue in its replies -- instead, often choosing

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to double-down on its dissatisfaction or disagreement with the considered expert opinion

evidence. As will be discussed below, large sections of Plaintiff’s arguments are premised

on a belief that Defendants’ experts should have considered certain facts or evidence. As

explained more thoroughly below, Plaintiff’s appropriate recourse in most instances is to

address the suspected faults, omissions, and lack of diligence during cross examination.

a. Rushabh Patel5

Patel is the CEO of Liv Sales, LLC and Aire Brands LLC, which market non-

nicotine and non-tobacco smoking products and accessories. He also launched and serves

as the CEO of Unitabac, LLC, which currently markets and sells premium hand-made

cigars, as well as non-tobacco/non-nicotine products, and previously sold mass-market,

machine-made cigars.

Patel has more than a decade of experience in sales, marketing, business strategy,

and management of the day-to-day operations of companies involved in both the mass-

market, machine-made cigar and premium hand-made cigar industries. Currently, he

oversees the day-to-day operation of Unitabac, including developing and executing

marketing strategies, maintaining relationships with trade partners (including wholesale

5 A copy of Patel’s most-recent expert report, including his qualifications, is filed in

full on CM/ECF, with no redactions. [ECF No. 163-2]. The Undersigned’s summary of

Patel’s background and opinions is derived from this exhibit. Although the document is

titled “Supplemented Expert Report,” Plaintiff indicates that the report and the other

documents authored by Patel are functionally identical.

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distributors and retail stores), overseeing all regulatory and intellectual property

activities, and sourcing products from overseas manufacturers. Unitabac has sold more

than 425 million mass-market, machine-made cigars and more than 2 million premium,

hand-made cigars.

Patel was retained to evaluate and offer his opinion on the following topics:

• Comparison of the markets -- including retail pricing, marketing,

distribution and sales issues for premium, hand-made cigars and mass-

market, machine-made cigars, including cigarillos.

• Comparison of the product profiles -- including product profiles,

product ingredients, and production methods between premium, hand-

made cigars and mass-market, machine-made cigars.

• Comparison of the typical purchasing environment and experience

between premium, hand-made and mass-market, machine-made cigars.

• Comparison of the demographics of premium, hand-made cigar

purchasers versus mass-market, machine-made cigar purchasers.

Plaintiff argues that Patel’s opinions and testimony should be excluded because

they are “the product of unreliable methods, unreliable purported evidence, lack data in

support, and are not the sort of ‘scientific, technical, or specialized’ opinions for which

expert testimony is appropriate.” [ECF No. 163]. In Plaintiff’s view, Patel “appears to

make it up as he goes along.” Id. Defendants summarize Plaintiff’s arguments as a two-

pronged attack: (1) a belief that Patel relied upon bad evidence; and (2) a belief that Patel’s

report is faulty. [ECF No. 178]. These arguments, Defendants say, are unpersuasive and

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ultimately raise questions that go only “to the weight that should be given to [Patel’s]

opinions, not their admissibility.” Id.

Patel’s Report is divided into four separate sections. Plaintiff’s arguments are

organized in kind.

First, Plaintiff argues for exclusion of the entirety of Patel’s Report’s Background

Section. Its argument begins with the same opening salvo from Plaintiff’s introduction:

the entirety of the section is “the product of unreliable methods, unreliable purported

evidence, lack data in support, and are not the sort of ‘scientific, technical, or specialized’

opinions for which expert testimony is appropriate” and Patel “seems to make it up as he

goes along.”

In the background section of Patel’s report, he provides the Food and Drug

Administration (“FDA”) definition of a “premium cigar,” information regarding

Plaintiff’s website description of its “DUO” cigar, and production information based on

his purchase of “DUO” cigars. Patel then compares the “DUO” cigars to the FDA

definition of “premium cigars” and determines that Plaintiff’s product falls within that

category. Further, Patel opines that the product also falls into a narrower subset of “ultra-

premium” cigars.

Although Plaintiff seeks to strike the entirety of the background section, it provides

only the “ultra-premium cigar” definition as an example of an opinion formed by only

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Patel’s purported ipse dixit6, rather than reliable methodology.

Patel provides very little information regarding how he reached the conclusion

that Plaintiff’s “DUO” cigars qualify as “ultra-premium” cigars. The only “evidence” he

cites supporting this contention is Plaintiff’s self-aggrandizing product-description on its

website and the price-point of the cigar, which Patel claims “would place this product at

the high end of the premium cigar market.” Defendants claim this opinion is admissible

and that Plaintiff is ignoring Patel’s analysis.

Although Defendants are correct that Plaintiff is downplaying Patel’s analysis,

Plaintiff is correct that Patel has not shown a reliable methodology. Certainly, as

Defendants argue, expertise can be based on experience; however, there must still be a

reliable methodology behind the expert’s opinion. Although there may be overlap

between these two considerations, the inquiry is not identical.

The Eleventh Circuit has summarized this interplay as follows:

6 “Ipse dixit is a Latin phrase that translates to “he said it himself.” Ipse dixit means

a person’s own assertion without relying on any authority or proof. It usually implies an

assertion of authority, as in a statement is true based on the speaker’s authority and not

back by any proof.” https://www.law.cornell.edu/wex/ipse_dixit (last visited March 23,

2022); see also Earle v. Ratliff, 998 S.W. 2d 882, 890 (Tex. Sup. Ct. 1999) (“An expert’s simple

ipse dixit is insufficient to establish a matter; rather, the expert must explain the basis of

his statements to link his conclusions to the facts.”) (emphasis added); Daubert v. Merrell

Dow Pharmaceuticals, Inc. (on remand), 43 F.3d 1311, 1316 (9th Cir. 1995) (observing that

the gatekeeping role requires a district court to make a reliability inquiry, and that “the

expert's bald assurance of validity is not enough”).

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Of course, the unremarkable observation that an expert may be qualified by

experience does not mean that experience, standing alone, is a sufficient

foundation rendering reliable any conceivable opinion the expert may

express. As we observed in Quiet Technology, “while an expert's

overwhelming qualifications may bear on the reliability of his proffered

testimony, they are by no means a guarantor of reliability. ... [O]ur caselaw

plainly establishes that one may be considered an expert but still offer

unreliable testimony.” 326 F.3d at 1241-42. Quite simply, under Rule 702,

the reliability criterion remains a discrete, independent, and important

requirement for admissibility.

Frazier, 387 F.3d at 1261 (en banc).

“If admissibility could be established merely by the ipse dixit of an admittedly

qualified expert, the reliability prong would be, for all practical purposes, subsumed by

the qualification prong.” Id.

In assessing the reliability of an expert’s particular opinion, the Court should

consider, to the extent possible: “(1) whether the expert's theory can be and has been

tested; (2) whether the theory has been subjected to peer review and publication; (3) the

known or potential rate of error of the particular scientific technique; and (4) whether the

technique is generally accepted in the scientific community.” Quiet Tech. DC–8, Inc., 326

F.3d at 1341. As mentioned previously, however, these factors are non-exhaustive. Id.

In this situation, Patel offers no information about why price impacts whether a

cigar qualifies as “ultra-premium” or why he chose the 75th percentile price-point as his

cutoff for “ultra-premium” cigars. He further offers no information about whether

ingredients, structure, location, manufacturing process, rarity, or any other factor plays a

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role in his definition of “ultra-premium.” Nor does he offer any information about

whether this is an accepted definition in the tobacco community.

At bottom, the Undersigned agrees with Plaintiff’s position that Patel seemingly

pulled this opinion out of thin air. If Patel has a basis to support his conclusion about

ultra-premium cigars, then he has not articulated it. Thus, Plaintiff’s motion should be

granted on this one specific point.

However, this argument is unpersuasive as to the remainder of Patel’s opinions in

the background section of his report. But it is compelling as to a few other opinions, albeit

not additional ones in the background section.

Plaintiff does not identify with particularity any other unreliable opinion in Patel’s

background section. Other than its categorical introductory statement, Plaintiff makes no

attempt to explain how Patel’s method of opining on whether Plaintiff’s “DUO” cigars

are encompassed by the FDA’s definition of premium cigars is unreliable. Indeed, the

Undersigned finds no issue with Patel’s decision to provide the regulatory definition,

compare a sample of the product to the regulatory definition, and review Plaintiff’s

description of its product before determining Plaintiff’s product qualifies as a premium

cigar. This methodology -- combined with Patel’s extensive tobacco experience -- is more

than sufficient.

The next section of Patel’s report is titled “Market and Marketing of the Parties’

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Products.” Plaintiff contends that Patel continues to rely heavily on his unsupported

conclusion that “DUO” cigars fall under this non-existent “ultra-premium” category. It

continues by claiming that “[t]his section of Mr. Patel’s supplemented report, and in fact

the entire report, is filled with other similar and unsupported conclusions and

assumptions.”

As examples of these “unsupported conclusions and assumptions,” Plaintiff

emphasizes two sentences in Patel’s report: (1) a comment that Plaintiff’s box of “DUO”

cigars “included a repurposed tobacco leaf folded on top of the cigars . . . [to] presumably

accentuate the artisanal nature of those premium hand-made cigars” and (2) that

“[i]ndustry participants [Patel has] spoken with in the past estimate that at least 50% of

premium handmade cigars by dollar volume are sold through the online/mail order sales

channel.” In Defendants’ opinion, Plaintiff’s critiques on these comments are best left for

cross-examination and Patel’s experience is sufficient.

The Undersigned agrees with Defendants, in part. Patel’s comment about the

presumable purpose behind the leaf being placed in the packaging is an area of inquiry

for cross-examination, not exclusion. As Patel indicates, he has substantial experience in

the area of marketing these types of products. His assumptions on this subject are fairly

made and appropriate for expert testimony.

Patel’s hearsay testimony about what industry participants have informed him,

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however, is inadmissible. This statement is vague, unsupported by any referenced data,

and is not presented as a hypothetical or assumed fact. Defendants try to argue this

statement is based on his experience. But the claim itself reveals that this is inaccurate.

Patel is not basing his sales opinion on his own experience; he is basing it on the

experience of an unknown “industry participant.”

Plaintiff avers that the remaining sections of Patel’s report, which it characterizes

as “Defendants’ sales volumes, price points, or channels of trades,” are devoid of any

expert opinions and address no issues that are beyond the understanding of the average

lay person. Defendants’ response is that Plaintiff is mischaracterizing Patel’s report and

that Patel uses that data as a backdrop so that he can “compare[] the market and

marketing of Plaintiff’s product versus the market and marketing of Defendants’ product

in view of the most recent FDA/NIH Population Assessment of Tobacco and Health

(PATH) study data.”

Plaintiff’s attempt to characterize Patel’s report as a mere recitation of data falls

flat and is unsupported by the actual report. Although Patel refers to data surrounding

Plaintiff’s product and marketing, he does so in order to lead into another section in

which he contrasts Plaintiff’s apparent marketing strategy with that used by entities

marketing mass-market, machine-made cigars.

The Undersigned does not expect the average lay person to have an intimate

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understanding of the marketing motivations in the field of premium and machine-made

cigars. Patel’s opinions on this issue are quintessential expert testimony. Tershakovec v.

Ford Motor Co., No. 17-21087-CIV, 2021 WL 2592390, at *10 (S.D. Fla. May 12, 2021), report

and recommendation adopted in part, No. 17-21087-CIV, 2021 WL 3578011 (S.D. Fla. Aug.

13, 2021) (“When an issue before the court pertains to the effect of a marketing or

advertising campaign on a potential consumer, courts regularly permit expert testimony

to aid the jury on the precise topic of marketing strategies.”); Schwab v. Philip Morris USA,

Inc., No. CV 04-1945, 2005 WL 2401647, at * (E.D.N.Y. Sept. 29, 2005) (“Advertising

methodologies are esoteric; the average juror could be helped by an explanation of how

they work and were used by defendants.”).

The third section of Patel’s report addresses the comparisons of the products at

issue (i.e., Guantanamera’s “DUO” and Swedish Match’s “DUOS”). Plaintiff

characterizes this section of Patel’s report as falling into one of two categories: (1)

distinguishing facts between the products which are not in dispute; and (2) an “inexpert,

unqualified, and unsupported analysis of the use and meaning of Plaintiff’s registered

‘DUO’ trademark and Defendants’ infringing use of ‘DUOS.’” Defendants take the

position that Plaintiff’s arguments amount to little more than factual disagreements with

Patel’s report and are better left for cross examination.

Plaintiff first argues that Patel’s “distinction between premium cigars and

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cigarillos” is a “distinction without difference in the context of likelihood of confusion.”

This appears to be a relevancy argument. According to Plaintiff, “[t]he United States

Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) has

specifically found that cigars and cigarillos are legally identical products for the purpose

of a likelihood of confusion analysis.” In support of this position, Plaintiff cites Max Rohr,

Inc. v. Boxer Tobacco Company, Cancellation No. 92047286, docket entry 10, at p.5 (T.T.A.B.

Sep. 15, 2008).

Plaintiff’s reliance on this case -- even if it were germane to the Daubert analysis --

is misplaced. Although Plaintiff characterizes the decision as containing an explicit

holding by the TTAB, it neglects to mention that the Boxer Tobacco Company failed to

respond to Max Rohr, Inc.’s allegations. Thus, the TTAB’s “finding” was that

As a preliminary matter, we note that because respondent failed to respond

to petitioner's requests for admissions, each of the requests is deemed

admitted, and moreover each fact in the requests deemed admitted is

"conclusively established." Fed. R. Civ. P. 36(a)(3) and (b).

***

Respondent has admitted, and the evidence shows, that cigarillos and

cigars are legally identical products. As Mr. Workman testified, a cigarillo

refers to a size of cigar. Respondent's admissions, as well as the other

evidence of record, further establish that that [sic] the goods are sold in the

same channels of trade to the same classes of purchasers.

Max Rohr Inc., Cancellation No. 92047286, pp. 3, 5 (emphasis added).

Because the TTAB’s decision was issued on an uncontested issue and was based

21

on the specific and unique facts of that case -- which included allegations deemed

admitted via default -- the Undersigned does not consider it persuasive authority in

support of exclusion. Even if the case were persuasive, Plaintiff’s argument on the issue

would still be unavailing.

In considering whether there is a likelihood of confusion between two marks, the

Eleventh Circuit applies a multifactor test, evaluating the following seven factors:

(1) strength of the mark alleged to have been infringed; (2) similarity of the

infringed and infringing marks; (3) similarity between the goods and

services offered under the two marks; (4) similarity of the actual sales

methods used by the holders of the marks, such as their sales outlets and

customer base; (5) similarity of advertising methods; (6) intent of the

alleged infringer to misappropriate the proprietor's good will; and (7) the

existence and extent of actual confusion in the consuming public.

Tana v. Dantanna's, 611 F.3d 767, 774–75 (11th Cir. 2010).

Despite Plaintiff’s contentions, this section of Patel’s report directly addresses the

second, third, and fifth factor7. Specifically, Patel compares the ingredients, structure,

manufacturing method, and appearances of the two products. Although Plaintiff says

that these facts are not in dispute, lack of dispute is insufficient to exclude testimony. The

composition of cigars and the differences between the products is a matter outside the

knowledge of a layperson.

7 Both parties agree that much of Defendants’ advertising is done at point-of-sale.

Thus, depending on the evidence presented, the appearance of the product could have

an impact on the Court’s inquiry into the fifth factor.

22

However, there are discrete portions of this section of Patel’s report that warrant

exclusion. Specifically, and for the same reasons mentioned earlier, Patel may not

categorize Plaintiff’s product as an “ultra-premium” cigar. Second, Patel may not offer

this opinion:

In my experiences, the sophisticated premium cigar consumer would

understand the term “duo” is a reference to a “double maduro” cigar either

utilizing a “double maduro” wrapper or incorporating two maduro leaves

in the construction of the cigar. In my opinion, Plaintiff’s use of duo in

combination with the name “double maduro” emphasizes the double

nature, and that the product is double/duo product, meaning it contains a

more full-bodied tobacco leaf wrapper.

Although Patel certainly appears qualified to offer this opinion, he provides no

background about his experience that explains the opinion. Instead, he relies on only his

ipse dixit, which may be sufficient when the experience is obviously sufficient to serve as

the sole foundation,8 but it is insufficient when the basis of the opinion cannot be easily

derived from a review of Patel’s background.

The rest of Plaintiff’s arguments address its disagreements with conclusions and

seeming inconsistencies. For example, Plaintiff takes issue with Patel’s statements about

8 For example, directly before this opinion, Patel discusses the meaning of the term

“double maduro” within the cigar industry. It is obvious to the Undersigned that an

individual with more than a decade of experience in an industry would understand

industry terminology. To contrast, it cannot be assumed that an individual with

experience in an industry will always understand how a member of the public would

interpret the mark on a cigar if he had no prior experience.

23

the differences of the products and says that Patel admits his company has sold both

products and that other trademark registrations apply to both products -- which Plaintiff

argues means that the public can attribute the products to a single source. Plaintiff can

address these issues on cross-examination.

In the fourth section of Patel’s report, he “compar[es] [] the typical purchasing

environment and customer experience.” Plaintiff calls this the “least ‘expert’ section” of

Patel’s report and refers to his opinion as a “farce.” Defendants’ arguments in response

remain steady: Plaintiff’s issues are appropriate for cross-examination, not for exclusion.

In this section, Patel provides the foundational background upon which his

opinion is based. After explaining his work with distributors and his visits to “several

thousand retail stores,” Patel explains the typical purchasing experience of premium

cigars and compares it to the typical purchasing experience of machine-made mass-

produced cigars. He describes the environment of the store, the storage of the cigars, the

usual placement of the cigars, and the overall customer experience when purchasing

cigars, whether premium or machine-made.

Although Plaintiff directly challenges a small section of Patel’s report as lacking

foundation (despite making a categorical statement that the entire section is unreliable),

its main arguments are alleged conflicts in the report and testimony it claims contradicts

Patel’s findings.

24

In one of its few specific complained-of portions, Plaintiff attacks Patel’s statement

that

it is widely believed that greater than 50% of sales of premium hand-made

cigars are generated online. Based on this knowledge, Plaintiff likely

secures a large percentage of their [sic] sales through their online store and

direct purchase at Plaintiff’s Guantanamera cigar lounge, with the

remaining sales coming from limited distribution at other boutique tobacco

shops.

Defendants’ only argument in response is that this matter is best left for cross-

examination. I disagree. Patel’s statement on this issue lacks sufficient reliability and

methodology and does not appear to be based on Patel’s experience or knowledge.

Similarly, Patel’s statement that “[b]ased on [his] knowledge and experiences,

Plaintiff’s premium hand-made cigars are not sold in the same locations as mass-market

machine-made cigars, and the experience in purchasing Plaintiff’s cigars is very personal

and tailored to a knowledgeable and discerning smoker” has no stated reliable

methodology. Patel admits early on in his report that he has little prior experience with

Plaintiff’s specific cigar. Thus, while Patel may testify as to the general experience in

purchasing a premium cigar, he cannot testify as to the specific experience when

purchasing Plaintiff’s cigar.

The Undersigned rejects Plaintiff’s remaining arguments about contradictions in

the report or with other evidence in the case. It may address those issues via cross-

examination.

25

In the final section of Patel’s report, he discusses the demographics of individuals

who purchase premium and economy cigars. Plaintiff agrees that this area is ripe for

expert testimony but claims that Patel again turns to his own ipse dixit and unsupported

conclusions. In reality, Plaintiff’s argument is that Patel’s opinion focuses on the industry

in the abstract and it claims that Patel’s report does not address Plaintiff’s specific

customer base.

This is insufficient to warrant exclusion.

The Court’s gatekeeper role is not intended to supplant that of the fact-finder:

“[v]igorous cross-examination, presentation of contrary evidence, and careful instruction

on the burden of proof are the traditional and appropriate means of attacking shaky but

admissible evidence.” Allison, 184 F.3d at 1311 (quoting Daubert, 509 U.S. at 596)

(alterations in original). “Indeed, ‘in most cases, objections to the inadequacies of a study

are more appropriately considered an objection going to the weight of the evidence rather

than its admissibility.’” Quiet Tech. DC–8, Inc., 326 F.3d at 1345 (quoting Hemmings v.

Tidyman's Inc., 285 F.3d 1174, 1188 (9th Cir. 2002)).

Patel’s opinions in this section are based on sufficient data and experience and

sufficiently tied to the facts of the case.

In conclusion, Patel may not offer his opinions: (1) that Plaintiff’s “DUO” cigar

qualifies as an “ultra-premium” cigar; (2) what “industry participants” have informed

26

him about sales; (3) how a consumer would interpret the term “duo”; (4) the wide belief

about the prevalence of online premium cigar sales; or (5) the usual experience in

purchasing Plaintiff’s specific product. Plaintiff’s motion is denied in all other respects.

b. Robert Leonard9

Robert Leonard received a Ph.D. in linguistics from Columbia University in 1982.

He is a tenured Professor of Linguistics at Hofstra University and has taught linguistics

at the college level for nearly 35 years. In addition to his employment as a professor,

Leonard provides consulting linguistic services to the FBI, Joint Terrorism Task Force,

police, and counter-terrorism units throughout the world.

He has authored, co-authored, and lectured on a variety of topics in the field of

linguistics. In addition, he has previously been qualified as an expert in linguistics in

multiple federal and state courts.

Leonard was retained by Defendants to “determine if the word ‘duos’ [defined as

“a duet,” “a pair,” and “two things in close association”] in the disputed use of ‘White

Owl Duos’ shares this semantic and function and thus provides information consistent

with these definitions about the product.” To accomplish this task, Leonard compared

9 A copy of Leonard’s expert report, including his qualifications, is filed in full on

CM/ECF. [ECF No. 164-2]. The Undersigned’s summary of Leonard’s background and

opinions is derived from this exhibit.

27

two competing hypotheses: (1) “Hypothesis 1: The word ‘duos’ in White Owl Duos

provides information about the product”; and (2) “Hypothesis 2: The word ‘duos’ in

White Owl Duos does not provide information about the product.”

As characterized by Plaintiff’s and Leonard’s conclusion, Leonard’s report was

meant to “prepare a linguistic analysis to investigate the meaning and usage in American

English and American Spanish of the lexical item ‘duo(s).’” Plaintiff’s opening argument

in favor of exclusion is identical to its argument in support of excluding the entirety of

Patel’s report: Leonard’s opinions should be excluded “because they are the product of

unreliable methods, unreliable purported evidence, lack data in support, and are not the

sort of ‘scientific, technical, or specialized’ opinions for which expert testimony is

appropriate.” [ECF No. 164].

Plaintiff’s primary argument in favor of excluding Leonard’s opinion is that it is a

sham opinion meant to contradict Swedish Match’s 30(b)(6) representative’s sworn

deposition testimony that “DUO” and “DUOS” are singular and plural versions of the

other and their primary meaning is “two people singing together.” As fallback

arguments, Plaintiff contends that Leonard’s report is unreliable because (1) he did not

consider a Swedish Match focus group or a marketing agency PowerPoint; (2) he deviated

from the Meriam-Webster definition of the word duo; (3) he “smuggled” in irrelevant

uses of the term “duo”; and (4) Leonard’s analysis does nothing to enlighten the Court to

28

the issues.

None of these arguments are persuasive. Indeed, as Defendants note in their

response, most of Plaintiff’s complaints are fodder for cross-examination, not exclusion.

Plaintiff first takes issue with Leonard’s conclusion, which is summarized as

follows: “the word ‘duos’ in White Owl Duos provides information about the product . .

. [and] this use is similar to other third-party uses of ‘duo’ (and related variants) in

product names.” According to Plaintiff, this conclusion is Defendants’ attempt to recover

from the following deposition exchange with Swedish Match’s 30(b)(6) representative:

Q: What’s the primary meaning of DUOS in your mind?

A: Two people singing together.

Q: Is DUOS the pleural [sic] of the word “DUO”?

A: Yes

Q: Do you think the word “DUO” and “DUOS” have the same meaning?

A: As I said, one is the pleural [sic], yes.

Plaintiff says this exchange has bound Defendants to this definition because one

of the 30(b)(6) topics was “[t]he similarity of meaning between ‘DUO’ and ‘DUOS.’”

Plaintiff cites two cases for the proposition that an expert cannot contradict a party’s

testimony. Neither case, however, furthers Plaintiff’s argument.

In In re Knickerbocker, 827 F.2d 281, 289 (8th Cir. 1987), the expert’s testimony was

29

not admitted for many reasons, including that his estimation of production costs had

flawed methodology and contradicted the facts witness’ testimony of the actual

production costs. The Court did not rely on any type of flat-out legal rule holding that an

expert’s opinion could never contradict the testimony of the party whose law firm

retained the expert.

Moreover, the appellate court ultimately held that the expert’s testimony about

future revenues was not so speculative and conjectural as to render it insufficient to

support a damages award, Therefore, it vacated the trial court’s order granting the

defendant’s motion for a j.n.o.v., finding that there was evidence from which the jury

could have derived a lost profits award -- by comparing the Knickerbockers’ own

testimony about production costs and land set asides with the expert’s testimony about

projected revenues.

Plaintiff’s second case warrants even less consideration. In Arnold v. Krause, Inc.,

233 F.R.D. 126, 130 (W.D.N.Y. 2005), contrary to Plaintiff’s assertion, there was no ruling

on the issue for which Plaintiff cites the case. Although the defendant in that case argued

that the expert’s testimony contradicted the plaintiff’s testimony, it did so as evidence of

prejudice justifying exclusion based on a late disclosure. Thus, the ruling was on the

prejudice conferred by the late disclosure of a report, not on the contradictions within the

report.

30

Defendants briefly respond to Plaintiff’s contention and state that this was an

improper line of questioning, and that the answer was merely the personal opinion of the

witness. However, the Undersigned need not address that issue. Regardless of whether

the 30(b)(6) answer was a personal opinion of the designee or a binding declaration by

Swedish Match, the answer does not address the salient inquiry or render Leonard’s

report irrelevant or contradictory.

In trademark disputes, the distinctiveness inquiry is based on how the consumer

would interpret the logo or the product, not the manufacturer. See Investacorp, Inc. v.

Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1523 (11th Cir. 1991)

(“[S]uggestive term suggests the characteristics of the service and requires an effort of the

imagination by the consumer in order to be understood as descriptive . . . . Also probative

of the descriptiveness of a mark is the idea that is conveyed to the observer by the plain

dictionary definition of the formatives comprising the mark.” (emphasis added)); Engage

Healthcare Commc'ns, L.L.C. v. Intellisphere, L.L.C., 792 F. App'x 178, 187 (3d Cir. 2019) (“It

would be readily apparent to the average consumer that “Peer-Spectives” stands for “Peer

Perspectives.” (emphasis added)).

Leonard’s opinion addresses the consumer perspective issue and Plaintiff makes

no attempt to argue that this is not the proper consideration in its Reply. Thus, it is of no

consequence for purposes of admissibility that the 30(b)(6) representative gave this

31

testimony, even if it constitutes proper evidence of Swedish Match’s state of mind (which

is an issue not currently before the Court).

Plaintiff’s next two arguments -- the failure to consider the focus group study or

the PowerPoint and the improper weight given to the certain dictionary definitions -- are

both fact-based attacks on Leonard’s report. Specifically, Plaintiff claims that Leonard’s

report is unreliable because (1) it did not reference a Swedish Match focus group in which

50% of participants did not realize there were two cigars in the packaging; (2) it did not

reference an internal marketing PowerPoint slide depicting a singing couple as a “duo”

example; and (3) it deviated from the Meriam-Webster and American Heritage

definitions.

Plaintiff and Defendants argue at length about the factual specifics of the focus

group and PowerPoint, and each alleges the other side has misrepresented the data.

However, the Undersigned need not address these issues because it is a well-settled view

that Plaintiff’s arguments are insufficient grounds to exclude expert testimony. See Fed.

R. Evid. 702 Advisory Committee Note (“When facts are in dispute, experts sometimes

reach different conclusions based on competing versions of the facts. The emphasis in the

amendment on ‘sufficient facts or data’ is not intended to authorize a trial court to exclude

an expert's testimony on the ground that the court believes one version of the facts and

not the other.”); Hemmings v. Tidyman's Inc., 285 F.3d 1174, 1188 (9th Cir. 2002) (“[I]n most

32

cases, objections to the inadequacies of a study are more appropriately considered an

objection going to the weight of the evidence rather than its admissibility.”).

These types of complained-of flaws (if they even are flaws in the first place) are

similar to the “flaw” addressed in Quiet Tech. DC–8, Inc., 326 F.3d at 1345, where the

Eleventh Circuit upheld the district court’s decision to admit evidence challenged as

“fail[ing] to use the proper equation” and “that the specific numbers [the expert] used

were wrong” because these types of “alleged flaws in [an expert’s] analysis are of a

character that impugn the accuracy of his results, not the general scientific validity of his

methods.”

Just as in Quiet Tech and other cases where a party has cried foul over the data

considered, Plaintiff can address on cross-examination the importance of the focus-group

study, the PowerPoint presentation, and the dictionary definitions.

Plaintiff’s next argument focuses on data it claims Leonard should not have

considered -- use of the term “duo” on non-cigar related products and businesses. As part

of Leonard’s analysis, he examined products where he determined a company used the

word “duo” to describe the fact that the product had two of something (i.e., two uses,

two flavors, two features, etc.). Plaintiff refers to these references as unauthenticated and

irrelevant.

Both of Plaintiff’s arguments on this issue are unpersuasive. Certainly, Plaintiff

33

can question Leonard on his knowledge of these products and how they are advertised

or made available. But Plaintiff has provided no authority that Leonard must include in

his report information about whether he purchased, used, or personally viewed the

product. Indeed, the law does not require this level of detail in expert reports. Kleiman v.

Wright, No. 18-cv-80176, 2020 WL 6729362, at *7 (S.D. Fla. Nov. 16, 2020) (“Rule 26(a)(2)(B)

does not require that a report recite each minute fact or piece of scientific information that

might be elicited on direct examination to establish the admissibility of the expert opinion

under Daubert. Nor does it require the expert to anticipate every criticism and articulate

every nano-detail that might be involved in defending the opinion on cross examination

at a Daubert hearing.”) (internal quotations omitted)).

The Undersigned also rejects Plaintiff’s unelaborated relevancy argument.

Leonard details his methodology in his report and explains that part of the process is to

examine the manner in which the word is used in a culture. This falls in line with that

methodology.

Plaintiff’s final argument is that Leonard’s report does nothing to enlighten the

Court as to any of the issues in this case. Plaintiff explains that “descriptive” and

“suggestive” are legal terms and “the ultimate question is not whether “DUOS” . . . is

capable of conveying information about the product to the consumer.” Although it is

accurate to say that “descriptive” and “suggestive” have legal meanings, whether

34

something is “descriptive” or “suggestive” is a question of fact. Welding Servs., Inc. v.

Forman, 509 F.3d 1351, 1357 (11th Cir. 2007) (“Distinctiveness is a question of fact, whether

the question is inherent distinctiveness or acquired distinctiveness.”).

The manner in which the public interprets the word “duo” or “duos” is directly

relevant to the case -- and possibly the primary issue in the case. By Plaintiff’s own logic,

here, it is entirely irrelevant whether the public could glean any information from a mark.

If accepted, then this reasoning would render the focus group evidence and 30(b)(6)

testimony that Plaintiff repeatedly references in its pleadings also irrelevant to any of the

issues. Plaintiff’s argument on this point is nothing more than an argument on the merits

of the case masquerading as a Daubert request.

Accordingly, Plaintiff’s motion about Leonard is denied in its entirety.

c. Charles Taylor10

Charles Taylor is a Professor of Marketing at Villanova University with a Ph.D. in

Marketing from Michigan State University. He has published more than 100 articles in

peer-reviewed academic journals and served in leadership roles for multiple

marketing/advertising entities. He is primarily interested in the research areas of

advertising and legal issues in marketing, including the marketing of alcohol and

10 A copy of Taylor’s expert report, including his qualifications, is filed on CM/ECF.

[ECF No. 167-2]. The Undersigned’s summary of Taylor’s background and opinions is

derived from this exhibit.

35

tobacco. In the tobacco field, he has published journal articles, produced conference

papers, and lectured on topics related to tobacco marketing.

Taylor was retained to offer opinions on the following topics:

1. Assessing informational and promotional uses of “duo”.

2. Assessing the brand equity of White Owl.

3. Importance of the differences in marketing, demographics, and

consumer behavior as it pertains to mass-market and premium cigars;

and

4. Impact on internet searching and purchasing behavior for the parties’

products.

Plaintiff begins by levying the same accusation against Taylor that it did against

Defendants’ other experts: Taylor’s opinions should be excluded “because they are the

product of unreliable methods, unreliable purported evidence, lack data in support, and

are not the sort of ‘scientific, technical, or specialized’ opinions for which expert

testimony is appropriate.” [ECF No. 167]. Similarly, many of the substantive arguments

made are identical to those asserted in Plaintiff’s other Daubert motions.

Plaintiff’s arguments can be summarized as follows: (1) Taylor’s report is an

attempt to offer an improper legal conclusion; (2) Taylor’s report contradicts Swedish

Match’s 30(b)(6) testimony; (3) Taylor failed to consider certain evidence, considered

unreliable evidence, and made incorrect statements; (4) Taylor’s marketing,

demographics, and consumer behavior section is based on unsound principles and facts;

36

and (5) Taylor’s Internet search is unreliable.

To begin, Plaintiff’s motion is largely devoid of specific attacks on discreet

opinions (as opposed to the underlying evidence or facts). Likewise, other than its

standard of review section, the motion is also largely devoid of any substantive legal

analysis and, at times, reads more like a closing argument than a Daubert motion. Plaintiff

rarely addresses or articulates alleged deficiencies in the methodology or explains what

makes the evidence unreliable beyond stating that it believes the data to be unreliable.

The majority of Plaintiff’s arguments are akin to requesting exclusion of an expert

because another expert reached a contrary conclusion. That is not a legitimate argument,

nor is it sufficient to preserve arguments. The role of the Court is not to read through a

report and identify for itself flaws and impermissible conclusions. If Plaintiff thinks there

is an improper legal conclusion, then it must identify the legal conclusion; merely giving

one example of a purported legal conclusion and then requesting wholesale exclusion of

the entire report is insufficient to preserve an argument beyond the identified portion.

Because Plaintiff’s bases for exclusion overlap across different sections of Taylor’s

report, I will organize this section of the Order by legal grounds, rather than by section.

i. Legal Conclusions

Plaintiff argues that Taylor’s “report is an attempt to supplant the role of the Court

and to offer improper legal conclusions.” It provides the following illustration of a

37

purported impermissible legal conclusion within Taylor’s report:

[a] key issue in this case is whether Swedish Match’s use of the term ‘Duos’

is used for descriptive and informative purposes as opposed to as a part of

a brand name. Based upon my research and investigation it is my opinion

that Swedish Match’s White Owl brand is using the word ‘duos’ in the

context of its marketing efforts to refer to two, or a pair, of cigarillos, and

not as a brand name designed to differentiate itself from its competitors and

build brand equity.

In support of its position, Plaintiff cites a single case, N. Palm Motors, LLC v. Gen. Motors

LLC, No. 9:19-CV-80872, 2020 WL 6384308, at *3 (S.D. Fla. Oct. 30, 2020), with no analysis

or discussion of the holding. A review of the case reveals it offers little support for

Plaintiff’s argument other than to explain the unremarkable principle that a legal

conclusion is an impermissible topic for an expert.

This lack of specific legal support (through the citation of precedent or other case

law authority) is unsurprising. As mentioned earlier in this Order, it is well settled that

the issue of distinctiveness is a question of fact. FN Herstal SA v. Clyde Armory Inc., 838

F.3d 1071, 1084 (11th Cir. 2016) (“Distinctiveness and [t]he existence of secondary

meaning” are “question[s] of fact.”); Welding Servs., Inc., 509 F.3d at 1357 (“Distinctiveness

is a question of fact, whether the question is inherent distinctiveness or acquired

distinctiveness.”); Coach House Rest., Inc. v. Coach & Six Restaurants, Inc., 934 F.2d 1551,

1559-60 (11th Cir. 1991) (“Both the distinctiveness categorization and the existence of a

secondary meaning are questions of fact.”).

38

ii. 30(b)(6) Deposition

Plaintiff repeats its belief that Swedish Match’s 30(b)(6) witness’ deposition

testimony bound Defendants to the “fact” that duo or duos means two people singing

and Taylor’s report seeks to contradict this testimony. The Undersigned rejected this

argument as applied to Leonard and rejects it again for the same reasons here.

iii. Evidence Consideration

Most of Plaintiff’s requests for exclusion focuses on Taylor’s consideration/non-

consideration of evidence. Specifically, Plaintiff complains that (1) Taylor did not use his

own focus group or consider record evidence of Swedish Match’s focus group and

deposition testimony from advertising agency; (2) Taylor’s report is based on faulty

evidence; and (3) Taylor misrepresents Defendants’ and Plaintiff’s products’ appearance.

Defendants aver in response that, like many of Plaintiff’s other arguments, these

arguments go to the weight of the testimony, not its admissibility.

Plaintiff’s unmet desire for Defendants’ experts to consider and reference Swedish

Match’s focus group or the testimony of an advertising executive is insufficient to warrant

exclusion. Plaintiff has presented no legal or evidentiary basis supporting the principle

that a marketing expert must reference focus groups in his opinion or that focus groups

are the only acceptable foundation for a marketing opinion. The only thing before the

Court is unsubstantiated attorney argument that a marketing expert should consider

39

these things. This is insufficient to justify exclusion.

In this same vein, Plaintiff complains that Taylor allegedly incorrectly opined that

“[t]he term ‘Duos’ is never used alone on Swedish Match products; as part of the

company’s strategy it is always used in conjunction with the White Owl brand name . . .

.” After quoting the sentence, Plaintiff references photos which purport to show the

“DUOS” mark sans White Owl brand (with no evidence that the expert has viewed these

photos) and argues that the expert is wrong. Certainly, this could be a powerful point to

make during cross-examination. But it is not sufficient to support a ruling of exclusion.

Plaintiff levies similar complaints elsewhere in its motion, complaining about

Taylor’s use of the word elaborate to describe Guantanamera’s “DUO” packaging, the

prominence of the term “DUO,” and the connection to Cuba via use of old-style

lettering.11 These arguments are unpersuasive for the same reasons Plaintiff’s other fact-

based attacks have been found unpersuasive.

Plaintiff then moves on to Taylor’s consideration of purportedly unreliable

11 The Undersigned is uncertain why Plaintiff is even contesting this statement. As

can be noted in Patel’s report, Plaintiff’s website characterizes its DUO cigars using some

of the following descriptors: “handmade . . . by skilled Cuban Master cigar rollers,” “hand

made with Cuban-seed Habano long-fillers . . . blended with . . . Cuban-seed Habano

Ligero,” “Guantanamera DUO is a magnificent premium cigar with a sophisticated

Cuban taste.” [ECF No. 163-2]. In sum, it seems obvious that Plaintiff is attempting to

connect Cuba to its product. An affirmation of this fact by an expert hardly seems

problematic.

40

evidence. For example, in Plaintiff’s view, Taylor’s reliance on websites to demonstrate

evidence that other tobacco companies used the term “duo” or “duos” on their products

is not credible because he did not engage in due diligence into each website, which

Plaintiff says renders the list inadmissible and irrelevant. Although Plaintiff distinguishes

between products Taylor purchased and those which he only discovered online, the

Undersigned need not address whether that distinction is germane. This is because

Plaintiff has cited no law supporting its position.

This fact was brought to Plaintiff’s attention in Defendants’ response. However, in

Plaintiff’s Reply, rather than provide pertinent legal authority, it continued to make fact-

based arguments on why it believes certain evidence is unreliable and cite general

Daubert principles. In fact, the only legal authority it cites on this issue was provided by

Defendants, CareFirst of Md v. First Care, 434 F.3d 263, 270 (4th Cir. 2006), which allowed

evidence of web-page printouts. Plaintiff argues this case is distinguishable but, after

attempting to do so, provides no authority that its preferred principle -- exclusion without

web-page printouts -- is legally sound.

“A party’s failure to cite legal authority in support of its position ‘suggests either

that there is no authority to sustain its position or that it expects the court to do its

research.’” Goldberg for Jay Peak, Inc. v. Raymond James Fin., Inc., No. 16-21831-CIV, 2017

WL 7791564, at *7 (S.D. Fla. Mar. 27, 2017) (quoting Rapid Transit Lines, Inc. v. Wichita

41

Developers, Inc., 435 F.2d 850, 852 (10th Cir. 1970)). The Court declines this invitation and

rejects Plaintiff’s argument based on the complete lack of legal authority. See United States

v. Heijnen, 215 F. App’x 725, 726 (10th Cir. 2007) (rejecting the appellant’s arguments for

failure to provide supporting legal authority); Anderton v. Avery Fin. Servs., No. 4:10–cv–

00392–EJL–CWD, 2011 WL 4584979, at *6 (D. Idaho Aug. 23, 2011) (same); Crews v. Sara

Lee Corp., No. 08–CV–113–LRR, 2009 WL 909236, at *1 (N.D. Iowa Mar. 31, 2009) (same).

As another complaint over Taylor’s factual considerations, Plaintiff argues that

Taylor compared the wrong White Owl products. In Taylor’s report, in support of his

view that “DUOS” is meant to inform the consumer that there are two cigars, he points

to the existence of other White Owl products he claims have descriptive titles: Minis

(small cigars), Swirls (mixed color wraps), Blunts (small cigars), and Sweets (sweet

tobacco). In Plaintiff’s opinion, Taylor should have compared “DUOS” to the following

White Owl products: Firecracker and Silver.

As before, Plaintiff offers no legal argument as to why this warrants exclusion.

Instead, it provides the legal definition of a descriptor and then makes conclusory

attorney argument that “DUOS”, Firecracker, and Silver are not descriptors. The Court

will not do Plaintiff’s legal research for it, nor will it accept Plaintiff’s “these facts are

better” argument as a basis for exclusion.

iv. Methodology

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Taylor’s report suffers from one of the same methodologic flaws present in Patel’s

report. As Plaintiff notes, Taylor also characterizes Plaintiff’s cigars as “ultra-premium”

or “super-premium.” This is impermissible for the same reasons Patel may not offer a

similar opinion.

In its only other methodology-focused argument, Plaintiff seeks exclusion of

Sections 3(c) through 3(f) of Taylor’s report. It claims that these opinions rely on nothing

more than Taylor’s ipse dixit. As Defendants note in their response, Taylor bases these

opinions on his experience. However, Defendants do not explain what in Taylor’s

experience justifies his opinions on the subject.

Experience, when properly explained, may be sufficient. For example, in Section

3(c), Taylor offers an opinion on retail stores and displays. One of Defendants’ other

experts, Patel, opined on a similar subject. In Patel’s opinion, he says it is based on his

visits to thousands of these stores and his meetings with multiple distributors. In Taylor’s

opinion, he says it is “[b]ased on his experience and knowledge.” Patel’s experience is

clearly sufficient. Taylor’s experience may or may not be sufficient.

Defendants’ response does very little to provide any information about how

Taylor’s experience enables him to offer these opinions. Likewise, however, Plaintiff does

very little to explain why Taylor’s experience is insufficient. Many of Plaintiff’s

complaints might be better illuminated had it had chosen to take a deposition. But

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instead, Plaintiff has chosen to seek blanket exclusion based solely on the report, which

isn’t required to have the level of detail Plaintiff desires. Kleiman, 2020 WL 6729362, at *7.

At bottom, neither side has made a compelling argument in support of exclusion

or admission. Therefore, this portion of Plaintiff’s request is denied without prejudice.

Before Taylor testifies about the opinions contained in Sections 3(c)-(f), Plaintiff may voir

dire him on the issues. Travelers Prop. Cas. Co. of Am. v. Barkley, No. 16-61768-CIV, 2017

WL 4867012, at *1 (S.D. Fla. June 2, 2017) (“Where a trial judge conducts a bench trial, the

judge need not conduct a Daubert (or Rule 702) analysis before presentation of the

evidence, even though [s]he must determine admissibility at some point.” (quoting

Kansas City S. Ry. Co. v. Sny Island Levee Drainage Dist., 831 F.3d 892, 900 (7th Cir. 2016)).

In sum, Plaintiff’s motion is denied in part, denied without prejudice in part, and

granted in small part. Taylor may not use the terms “super premium” or “ultra

premium” in reference to a category of cigars and Plaintiff is permitted to voir dire Taylor

before he offers any of the opinions contained in Sections 3(c)-(f) and may again raise that

limited objection during trial.

IV. CONCLUSION

Based on the foregoing, the Undersigned Orders as follows:

(1) Plaintiff’s Motion to Exclude Rushabh Patel’s testimony is granted in part and

denied in part. Patel may not offer his opinions: (1) that Plaintiff’s “DUO” cigar

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qualifies as an “ultra-premium” cigar; (2) what unidentified “industry

participants” have informed him about sales; (3) how a consumer would

interpret the term “duo”; (4) the so-called wide belief about online premium

cigar sales; or (5) the usual experience in purchasing Plaintiff's specific product.

Plaintiff's remaining requests are denied;

(2) Plaintiff's Motion to Exclude Robert Leonard’s testimony is denied;

(3) Plaintiff's Motion to Exclude Charles Taylor’s testimony is denied in part,

denied without prejudice in part, and granted in small part. Taylor may not

use the terms “super premium” or “ultra premium” in reference to a category

of cigars and Plaintiff is permitted to voir dire Taylor before he offers any of the

opinions contained in Sections 3(c)-(f) and may again raise that limited

objection during trial.

DONE AND ORDERED in Chambers, in Miami, Florida, on April 20, 2022.

LM

Jgnathan Goodman

UNITED STATES MAGISTRATE JUDGE

Copies furnished to:

All Counsel of Record

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