Vaughn Boyd v. Deadwood Tobacco Co.

── Vaughn Boyd v. Deadwood Tobacco Co. ── Court: Court of Appeals for the Eighth Circuit Date: June 08, 2026 Category: General United States Court of Appeals For the Eighth Circuit ___________________________ No. 25-1659 ___________________________ Vaughn Boyd; SWI-DE, LLC, doing business as Drew Estate Plaintiffs - Appellants v. Deadwood Tobacco Company, also known as Deadwood Tobacco Company Corporation; William Rectenwald Defendants - Appellees ____________ Appeal from United States District Court for the District of South Dakota - Western ____________ Submitted: October 22, 2025 Filed: June 8, 2026 ____________ Before SMITH, KELLY, and GRASZ, Circuit Judges. ____________ SMITH, Circuit Judge. Vaughn Boyd and the Drew Estate (collectively, Plaintiffs) sold to William and Jodene Rectenwald the Deadwood Tobacco Company pursuant to a Stock Purchase Agreement (Agreement), which withheld from sale three trademarks originally registered to the Deadwood Tobacco Company. Plaintiffs later sued the Rectenwalds and Deadwood Tobacco Company (collectively, Defendants) alleging infringement of their reserved trademark interests pursuant to the Lanham Act. Defendants denied these allegations. The district court 1 dismissed the action on forum non conveniens grounds after determining Plaintiffs’ claims arose out of the Agreement, which contains a forum selection clause. Plaintiffs appeal the dismissal. For the reasons discussed below, we affirm. I. Background A. The Trademarks Founded in 1996 by Jonathan Drew and Marvin Samelin in New York, Drew Estate originates and manufactures premium cigars. It ranks as one of the largest and best-known cigar producers in the world. Drew Estate has originated numerous notable and successful cigar brands, including ACID, Liga Privada, and Isla del Sol, among others. Drew Estate also owns and operates the largest cigar factory in Nicaragua and organizes events for the premium cigar community. Boyd founded the Deadwood Tobacco Company and Cigar Bar in 2006 in Deadwood, South Dakota. When Boyd opened her brick-and-mortar cigar shop and smoke lounge, she stocked and sold numerous brands of cigars. The store, however, did not produce any house brands. In 2009 Drew Estate and Deadwood Tobacco Company entered into an agreement to begin a new line of store-exclusive cigars originated by Drew Estate but bearing the Deadwood Tobacco Company name. Together, these companies produced Deadwood’s first house cigar, the Sweet Jane. Deadwood Tobacco Company registered a trademark with the United States Patent and Trademark Office under the mark DEADWOOD TOBACCO CO. SWEET JANE. Sweet Jane sold well, so the partners agreed to expand the line. They subsequently introduced two additional cigars under the marks DEADWOOD TOBACCO CO. FAT BOTTOM BETTY and DEADWOOD TOBACCO CO. CRAZY ALICE in 2013 and 2014, 1 The Honorable Camela C. Theeler, United States District Judge for the District of South Dakota. -2- respectively. The partners marketed and sold these cigars under their individual marks as well as collectively under the registered marks DEADWOOD, DEADWOOD TOBACCO, and DEADWOOD TOBACCO CO. To assist with marketing and product recognition, Drew Estate developed logos and branding for the cigars. Each cigar featured a calavera de azúcar, a skull motif associated with Día de Los Muertos, depicting a female character designed to represent the “strong, heartbreaking women from the brothels and barrooms of the seedy underbelly