Professional Documents
Culture Documents
DCS LLC Vs 5.11 Complaint
DCS LLC Vs 5.11 Complaint
DIGITAL CONCEALMENT )
SYSTEMS, LLC )
)
)
Plaintiff, )
) CIVIL ACTION FILE NO.
v. )
) 4-11-cv-21 (CDL)
________________
5.11, INC. )
)
Defendant. )
Plaintiff, Digital Concealment Systems, LLC (hereinafter “DCS”) files this Complaint for
Declaratory Relief against defendant, 5.11, Inc. (hereinafter “5.11”) and alleges:
1. This is an action for declaratory relief and damages stemming from 5.11’s
February 14, 2011 “cease and desist” letter, a true and correct copy of which letter is attached
hereto as Exhibit “A”. The 5.11 “cease and desist” letter relates to the “A-TAC” trademark used
by DCS in connection with its camouflage patterns and the licensing of same to third party
manufacturers and retailers. This Court has subject matter jurisdiction pursuant to 28 U.S.C.
§1338; 28 U.S.C. §§2201 and 2202; as well as 15 U.S.C. §1121 relating to trademark
infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. §1125 et
seq. The amount in controversy exceeds the sum or value of $75,000 exclusive of interest and
costs and there is diversity of citizenship among the parties. Accordingly jurisdiction is
appropriate herein.
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2. Venue is proper in the District Court pursuant to 28 U.S.C. §1391 on either of the
following alternative grounds: (a) a substantial part of the events giving rise to the instant claim
for declaratory relief and subject matter thereof occurred in this District, including, without
limitation, that DCS received the “cease and desist” letter from 5.11 in this District, that counsel
for DCS received a copy of the “cease and desist” letter from 5.11 in this District, that DCS’s
principal place of business is located in this District, that DCS is a Georgia corporation [with its
registered agent located in this District], and that DCS adopted and commenced use of the
trademark that is the subject of the “cease and desist” letter in this District, and (b) 5.11 is subject
3. DCS is a limited liability company, organized and existing under the laws of the
State of Georgia, wherein DCS markets and advertises, and its licensees market, advertise and
sell, goods containing a DCS’s A-TACS camouflage pattern identified by the “A-TACS”
trademark that is the subject matter of 5.11’s “cease and desist” letter to DCS.
4. 5.11 is a corporation, organized and existing under the laws of the State of
California, with its principal place of business in Modesto, California. 5.11 and its licensees
and/or distributors are believed to sell boots and shoes in this District, directly, through
5. In its “cease and desist” letter to DCS, 5.11 demanded that DCS “(a) immediately
offering for sale, or selling uniforms, hats, shirts, boots, packs, gun slings or any other clothing,
accessories or products for law enforcement, the military, fire service, or public safety
professionals using the trademark A-TACS or any variation thereof; and (b) not again in the
future manufacture, cause to be manufactured, advertise, promote, market, distribute, offer for
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sale, or sell uniforms, hats, shirts, boots, packs, gun slings or other clothing, accessories or
products for law enforcement, the military, fire service, or public safety professionals using the
6. In its “cease and desist” letter to DCS, 5.11 states that “use by Digital
Concealment Systems and its licensees of a mark substantially similar to 5.11’s A.T.A.C.
trademark in association with tactical clothing, footwear, and accessories that directly compete
with 5.11’s tactical clothing, footwear, and accessories and are directed to the same consumers
for the same purposes through the same channels of trade will cause confusion, deception, or
mistake upon purchasers. As a result of the similarity of the marks and the use of those marks on
substantially identical products, purchasers will mistakenly believe that the tactical clothing,
footwear, and accessories co-branded with the ATACS trademark are in some manner related to,
associated with, approved by, or come from 5.11. This likelihood of confusion, deception or
mistake gives rise to liability for trademark infringement and unfair competition for Digital
Concealment Systems and its licensees.” The alleged violations for trademark infringement and
7. In addition to the “cease and desist” letter sent to DCS on February 14, 2011, 5.11
also sent “cease and desist” letters to licensees of DCS, including, to DCS’s knowledge, Propper
International, Danner, Inc., Tactical Assault Gear, and Blue Force Gear. In said “cease and
desist” letters, 5.11 stated “the use of confusingly similar A-TACS trademark in competition
with 5.11 gives rise to liability for trademark infringement and unfair competition. [DCS
Licensee] should be aware that every party involved with the manufacture, distribution, or sale of
products bearing an infringing trademark may be liable for infringement and unfair competition.”
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II. No Trademark Infringement of 5.11 Mark
8. In its “cease and desist” letters to DCS and its licensees, 5.11 contends that the
mark “A-TACS” owned by DCS is essentially confusingly similar to the mark “A.T.A.C.” owned
by 5.11.
9. Despite 5.11’s contention otherwise, the two marks are not confusingly similar.
10. In order for 5.11 to establish a case of trademark infringement, 5.11 must establish
that (i) “A.T.A.C.” is a valid, protectable trademark, (ii) 5.11 owns “A.T.A.C.” as a trademark,
and (iii) DCS’s mark is the same as or confusingly similar to the 5.11’s mark; and (iv) DCS’s use
of its confusingly similar mark was made without the consent of 5.11 in a manner that is likely to
cause confusion among ordinary users as to the source, sponsorship, affiliation, or approval of
11. DCS acknowledges that 5.11 maintains a Federal registration for the mark
“A.T.A.C.”, evidenced by United States Federal Registration No. 3,173,444 for “footwear;
12. DCS notes that when determining whether or not marks are the same or
substantially similar, they must be compared in their entirety. Due to the differences in spelling,
visual impression, phonetic pronunciation and associated goods and services, DCS maintains that
its mark is in no way “confusingly similar” with the mark owned by 5.11.
13. 5.11’s mark is visually different in that it contains periods intended to set off each
letter comprising the mark, has no hyphen and is made up of only four, not five, letters.
unitary name or word, but rather is pronounced by enunciating each letter making up the mark
(e.g. “ay-tee-ay-see”), just as 5.11’s name is pronounced “five-eleven”. On the other hand,
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DCS’s mark is pronounced as a blend of the letters incorporated therein (i.e. as a unitary name or
impression.
15. The goods and services offered under 5.11’s mark are associated with, and only
associated with, footwear and gloves, all of which are black or tan and, unlike the items produced
by DCS’s licensees, none of which contain now or in the past any camouflage patterns; although
5.11 has no Federal registration for the use of its mark in connection with gloves, which are also
only marketed and sold in black. After approximately six (6) years of use, 5.11 has only used its
mark in connection with footwear and gloves and has never associated any camouflage patterns
16. The DCS mark is used in connection with the licensing of camouflage patterns
under Class 045, and DCS owns United States Federal Registration No. 3,815,288 for use in
connection with “licensing of intellectual property in the field of camouflage patterns” in Class
045, which application was filed on January 26, 2009, and was published for opposition from
May 12, 2009 through June 1, 2009. DCS has also filed applications for registration of its mark
in connection with (1) “automotive and vehicular accessories especially adapted to fit
automobiles, namely, seat covers, steering wheel covers, seatbelt shoulder pads, sun visors, sun
visor covers, sun visor CD holders, litter bags, rooftop cargo bags, vehicle and ATV covers” in
Class 012, which application was filed on February 27, 2009, received Serial No. 77/680485 and
was published for opposition from December 12, 2009 through January 11, 2010, and (2)
“tactical and assault shirts, jackets, T-shirts, tops, pants, caps, hats, boots; tactical assault vests”
in International Class 025, which application was filed on February 22, 2011, and received Serial
No. 85/248017. Notwithstanding the applications in classes other than Class 045, DCS requires
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its licensees to only use its mark as a source identifier for the A-TACS pattern and not as a
17. Even if an association could be made between the DCS mark and the source of
goods containing the DCS patterns, it is well settled that the same or highly similar marks can be
used on different types of clothing items without creating a likelihood of confusion. See e.g., H.
Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp.l 483,228 U.S.P.Q. 814 (S.D.N.Y. 1986)
(ESPRIT on shoes was found to be strong enough to create confusion from use on shoes, but not
from use on wearing apparel); In re Shoe Works, Inc., 6 U.S.P.Q.2d 1890 (T.T.A.B. 1988) (no
likelihood of confusion between PALM BAY women’s shoes and PALM BAY shorts and pants).
If the use of the popular ESPRIT and PALM BAY marks on clothing did not create a likelihood
of confusion with the identical marks on shoes, one would logically conclude that the use of A-
TACS on clothing and accessories would not create confusion with 5.11’s shoes and gloves. See
also McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir. 1979) (no
likelihood of confusion between senior user’s DRIZZLER for men’s golf jackets and junior
user’s DRIZZLE for women’s overcoats and raincoats); A&H Sportswear, Inc. v. Victoria’s
Secret Stores, Inc., 166 F.3d 191, 49 U.S.P.Q.2d 1493 (3d Cir. 1999) (no likelihood of confusion
between senior MIRACLESUIT for swimwear versus junior MIRACLE BRA on lingerie).
18. As shown above, due to the differences in sound, visual comparison, commercial
impression and goods associated therewith, there is no likelihood of confusion between the DCS
19. No other element essential to an actual infringement upon the 5.11 trademark
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III. No Unfair Competition
20. In order to establish a claim for unfair competition, under the Lanham Act, 5.11
must show (1) DCS uses a word, name, symbol, device, or combination, (2) in interstate
21. As established above, DCS’s use of its marks are not likely to cause confusion as
22. Because 5.11 cannot establish likelihood of confusion between the marks, no
claim for unfair competition as to the 5.11 trademark arises from DCS’s use of its trademark.
allegations of trademark infringement by its competitor without good cause and in bad faith, and
by sending “cease and desist” letters to DCS’s licensees without good cause and in bad faith.
24. As the result of 5.11’s unfounded, baseless allegations and acts of bad faith, DCS
25. 5.11 is barred from making a claim of trademark infringement and unfair
26. Upon information and belief, 5.11 has been fully aware of DCS’s trademark and
the use thereof in connection with camouflage patterns on clothing, boots, shirts, T-shirts, pants,
jackets, etc. since at least as early as January 2009. Specifically, 5.11 was exposed to the
A-TACS pattern and A-TACS mark at the 2009, 2010 and 2011 SHOT Shows in Las Vegas,
Nevada, and the A-TACS website has been up and in operation since October 8, 2009.
27. Although 5.11 has known of DCS’ A-TACS pattern and the A-TACS mark for at
least two (2) years, if not longer, 5.11 has remained silent and/or has negligently failed to assert
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any rights or claims for trademark infringement. DCS has taken significant steps to market and
promote its A-TACS pattern and the A-TACS mark and has entered into multiple license
agreements for third party use of the A-TACS pattern and the A-TACS mark in connection with
various goods and services without objection from 5.11. Additionally, various DCS licensees
have also taken steps to and have manufactured significant inventories of their products
containing the A-TACS pattern, with such pattern to be marketed under the A-TACS mark
28. Only now that DCS and its licensees are on the verge of introducing a substantial
amount of already manufactured and purchased products containing the A-TACS pattern and A-
TACS mark into the marketplace has 5.11 decided to assert any claims for trademark
29. As a result of its intentional reticence or negligent failure to assert such rights,
5.11 is estopped under the Doctrine of Laches from raising any such issues of trademark
30. 5.11 has tortiously interfered with the contractual and business relations between
31. In order to establish tortious interference with business and contractual relations, a
party must establish (1) the existence of a contract subject to interference, (2) willful and
intentional interference, (3) interference that approximately causes damage, and (4) actual
damage or loss.
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32. DCS has entered into License Agreements between DCS and Propper
International, Danner, Inc., Tactical Assault Gear, and Blue Force Gear, establishing the
33. A copy of 5.11’s misleading, inaccurate, unfounded and malicious “cease and
desist” letter to Propper International is attached hereto as Exhibit “B”, substantially similar
copies of which were also delivered to Danner, Inc., Tactical Assault Gear, and Blue Force Gear,
upon reasonable belief and suspicion of DCS, establishing willful and intentional interference.
34. As a result of 5.11’s misleading, inaccurate, unfounded and malicious “cease and
desist” letters to DCS’s licensees, DCS’s licensees have upon information and belief ceased or
significantly curtailed the production, marketing and sale of and/or delayed the production,
marketing and sale of products containing the DCS A-TACS pattern and the A-TACS mark.
35. The curtailing and/or delay of such production, marketing and sales have caused
and will continue to cause a reduction in the royalties to be derived by DCS from the licensing of
VI. Defamation
36. As a result of 5.11’s misleading, inaccurate, unfounded and malicious “cease and
desist” letters delivered to DCS’s licensees, 5.11 has intentionally impuned and injured the
Count I
Declaratory Relief
37. DCS re-states and re-alleges paragraphs 1 through 35 above, and further alleges:
38. As a result of 5.11’s “cease and desist” letters to DCS and its licensees, an actual
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39. DCS has engaged the undersigned counsel to represent it in this matter for which
40. DCS is being threatened with an action for damages, preliminary and permanent
injunctive relief, the destruction of products bearing DCS’s trademark, and enhanced damages
and payment of 5.11’s attorney’s fees. DCS is in need of, and entitled to, a judicial declaration of
each party’s respective rights and liabilities as they pertain to DCS’s use of its trademark.
Count II
41. DCS re-states and re-alleges paragraphs 1 through 39 above, and further alleges:
42. DCS’s contractual and business relationships are being threatened by the
misleading, inaccurate and unfounded claims of 5.11, which have damaged and will cause
its camouflage patterns on uniforms, hats, shirts, boots, packs, gun slings and any other clothing,
accessories or products for law enforcement, the military, fire service or public safety
professionals do not infringe upon 5.11’s trademarks in use in connection with footwear/boots
and/or gloves;
(b) As shown above and in the exhibits hereto, no claim for unfair
competition as to 5.11’s trademarks arises from DCS’s use of its trademark in connection with
uniforms, hats, shirts, boots, packs, gun slings, and any other clothing, accessories or products for
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(c) DCS is otherwise without liability to 5.11, or any of its licensees or
assigns, stemming from DCS’s use of its trademark in connection with the above-referenced
(2) An award for damages in the amount of no less than $200,000.00 due to
5.11’s tortious interference with DCS’ business and contractual relationships with its licensees;
of DCS by 5.11;
(4) Injunctive relief requiring 5.11 to rescind any and all of its “cease and
desist” letters to DCS and to DCS licensee and requiring 5.11 to refrain from sending any such
(7) Any other relief the Court may deem just and appropriate.
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