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Yoga Pants For Your Feet Trademark Complaint PDF
Yoga Pants For Your Feet Trademark Complaint PDF
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v.
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Defendants.
GPC DHB
Civil Action No. '15CV1086
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THE PARTIES
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existing under the laws of the State of California, with its principal place of business
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Beach, CA 90266.
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Beach, CA 90266.
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This Court has jurisdiction over the subject matter of this action
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pursuant to 28 U.S.C. 1331 and 1338(a), as it arises under the trademark laws of
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the United States. This Court also has subject matter jurisdiction over the claims in
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this action that relate to trademark infringement, false designation of origin, and
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federal unfair competition pursuant to sections 34(a) and 39(a) of the Lanham Act
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and 15 U.S.C. 1116(a) and 1121(a), as these claims arise under the laws of the
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United States. The Court has supplemental jurisdiction over the claims in this
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Complaint which arise under state statutory and common law pursuant to 28 U.S.C.
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COMPLAINT
1367(a) because the state law claims are so related to the federal claims that they
form part of the same case or controversy and derive from a common nucleus of
operative facts.
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and factory outlet store locations in California with eight store locations in the
Southern District of California.1 In its most recent Form 10-K filing, Skechers stated
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that a significant portion of our net sales is derived from sales in California.
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7.
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this judicial district, including by selling and offering for sale products bearing/using
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the infringing advertising tag line in this judicial district and by committing acts of
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directly to consumers and/or retailers in this district, and selling footwear into the
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stream of commerce knowing such footwear products would be sold in this district.
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These acts of Skechers form a substantial part of the events or omissions giving rise
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to TerriKellys claim.
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portion of the events giving rise to this action took place in this judicial district.
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Skechers maintains six stores in San Diego County: one factory outlet store in
Carlsbad, one retail store in National City, and three factory outlet stores and one
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one factory outlet store in Calexico and one factory outlet store in El Centro.
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COMPLAINT
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BACKGROUND ON TERRIKELLY
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an entrepreneurial mom of six children with a passion for comfort and yoga. Ms.
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Kelly was not able to find a flip-flop with the same comfort and minimalistic style
of yoga wear, so she set out to create her own. Ms. Kelly developed a light weight
and amazingly comfortable flip-flop with a minimalist design. She created and
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applied for, and now owns, a federal trademark registration for the YOGA PANTS
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FOR YOUR FEET mark. The YOGA PANTS FOR YOUR FEET mark enjoys
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registration on the Principal Register of the United States Patent and Trademark
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footwear. TerriKelly LLC, the plaintiff in this action, is the owner by assignment of
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all rights, title, and interest in the YOGA PANTS FOR YOUR FEET mark from Ms.
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The federal trademark registration for the YOGA PANTS FOR YOUR
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YOGA PANTS FOR YOUR FEET mark also serves as constructive notice of a
claim of ownership.
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COMPLAINT
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Ms. Kelly realized that yoga pants for your feet was a unique and
perfect way to convey to consumers the comfort and minimalist design of her flipflops. Since at least as early as January 2014, she began to market her flip-flops by
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using that unique slogan on the product packaging of the flip-flops, as well as on
the TerriKelly website, as shown below.
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COMPLAINT
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yoga or the gym, and daily with their casual attire. Their durable design and high
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level of comfort has also led customers to use TerriKelly flip-flops for travel and
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Outdoor Retailers trade show in Salt Lake City, the Wanderlust yoga festival in
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Squaw Valley, and at various fairs and festivals. TerriKelly flip-flops have also
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COMPLAINT
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website as well as through specialty boutiques around the country and online at
Zulily.com and 11Maine.com. In just over one year of sales, TerriKelly flip flops
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the YOGA PANTS FOR YOUR FEET mark on various social media platforms
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YOUR FEET mark in connection with flip-flops, the public recognizes and
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associates the mark with TerriKelly, which has established extensive goodwill in the
slogan.
DEFENDANTS AND THEIR ACTIVITIES
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importance of trademark rights. To date, Skechers U.S.A., Inc. II owns nearly 300
live trademark applications and registrations with the U.S.P.T.O.
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2 billion dollars in net sales for 2014. Skechers footwear includes sandals, boots,
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and athletic and casual sneakers and is marketed to women, men, and children.
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Skechers owns and operates over 300 retail stores in the United States alone.
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of platforms such as social media, online, print, television, and trade shows.
Skechers also utilizes celebrity endorsements in its advertising campaign from
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COMPLAINT
celebrities such as Brooke Burke-Charvet, Demi Lovato, Mark Cuban, and Ringo
Starr.
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features celebrity and Dancing with the Stars Season 7 winner Brooke Burke-
Charvet and prominently uses TerriKellys YOGA PANTS FOR YOUR FEET mark
to promote its new shoe in the commercial. Skechers also uses the YOGA PANTS
FOR YOUR FEET mark in its description of the commercial online, as highlighted
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below.
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YouTube at https://www.youtube.com/watch?v=gwS1WqjeD4k.
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COMPLAINT
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TerriKellys YOGA PANTS FOR YOUR FEET mark in its social media advertising
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on platforms such as Facebook and Twitter. Shown below are Skechers Facebook
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and Twitter posts from January 17, 2015 using TerriKellys YOGA PANTS FOR
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COMPLAINT
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COMPLAINT
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COMPLAINT
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posts on Facebook and Twitter would have revealed TerriKellys YOGA PANTS
FOR YOUR FEET mark as the application was filed on May 23, 2014 seven
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TerriKellys YOGA PANTS FOR YOUR FEET mark was unique until
recent Form 10-K filing, provided that Skechers gross profit in 2014 was over a
billion dollars, an increase from over 800 million in 2013.
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Ringo Starr and Hall of Fame quarterbacks Joe Montana and Joe Namath to endorse
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its products.
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result, it is likely that consumers will be confused and deceived as to the source of
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TerriKellys YOGA PANTS FOR YOUR FEET mark and may believe that Skechers
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TerriKelly has not authorized Skechers to use its YOGA PANTS FOR
YOUR FEET mark. On March 25, 2015, Ms. Kellys counsel sent a cease and desist
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letter to Skechers counsel of record with the U.S.P.T.O. informing Skechers of its
infringement of the YOGA PANTS FOR YOUR FEET mark and demanding that
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COMPLAINT
Skechers immediately cease all use of the mark. A copy of the cease and desist letter
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Upon information and belief, to date, Skechers has not ceased all use of
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the YOGA PANTS FOR YOUR FEET mark in its advertising and marketing.
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FEET mark in its advertising and marketing to promote its Stretch-Fit Glider shoe.
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FOR YOUR FEET mark in connection with its advertising and marketing is likely
to cause confusion as to the source of its goods because Skechers is using the
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TerriKelly has registered its YOGA PANTS FOR YOUR FEET mark
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with the USPTO and has the exclusive right to use this mark in connection with its
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flip-flops and footwear. TerriKelly also has common law rights in this trademark in
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YOUR FEET mark continuously in connection with flip-flops and footwear products
since at least as early as January 31, 2014.
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TerriKelly has spent significant time, money, and effort advertising and
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YOGA PANTS FOR YOUR FEET mark, the mark has developed secondary
meaning as an indicator that TerriKelly is the source of the goods identified by the
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mark.
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for sale, and sales of its footwear through commercials and social media websites
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constitutes use of the YOGA PANTS FOR YOUR FEET mark in commerce.
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and deceive the public into believing that Skechers and its footwear are sponsored,
affiliated or associated with TerriKelly, when, in fact, they are not.
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Skechers uses the YOGA PANTS FOR YOUR FEET mark to confuse
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mark is likely to cause confusion, mistake, and deception as to the source of the
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in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.
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FEET mark, TerriKelly has suffered and continues to suffer great and irreparable
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Skechers conduct has been willful and in bad faith making this an
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for sale, and sales of its footwear through its commercials and social media websites
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constitutes use of the YOGA PANTS FOR YOUR FEET mark in commerce.
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Skechers uses the YOGA PANTS FOR YOUR FEET mark to confuse
and deceive the public into believing that Skechers and its footwear are sponsored,
affiliated or associated with TerriKelly, when, in fact, they are not.
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mark is likely to cause confusion, mistake, and deception as to the source of the
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in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.
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of the YOGA PANTS FOR YOUR FEET mark and without the consent of
TerriKelly, has and continues to willfully and intentionally violate 15 U.S.C.
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COMPLAINT
1125(a). Upon information and belief, this is an exceptional case within the meaning
of 15 U.S.C 1117.
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enjoined by this Court from further violation of TerriKellys rights, for which
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TerriKellys common law rights in its mark under California common law.
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Skechers infringement has caused and will continue to cause if not enjoined.
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(California Common Law and Cal. Bus. and Prof. Code 17200 et seq.)
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COMPLAINT
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knowingly, willfully, and maliciously with the intent to trade upon the good will of
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TerriKelly.
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enjoined by this Court from further violation of TerriKellys rights, for which
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(Unjust Enrichment)
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to its federally registered and common law YOGA PANTS FOR YOUR FEET mark;
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That the Court render a final judgment declaring Skechers has willfully
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That the Court render a final judgment declaring that Skechers has
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competing with TerriKelly and that Skechers actions were done willfully and
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knowingly;
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That the Court render a final judgment declaring Skechers has violated
California common law by unfairly competing with TerriKelly and that Skechers
actions were done willfully and knowingly;
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attorneys, successors, and assigns and all other persons in active concert or
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participation with any of them who receive actual notice of the injuction by personal
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using the YOGA PANTS FOR YOUR FEET mark, or any other
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flops;
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FEET mark;
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That Skechers actions be deemed willful and that this case be deemed
exceptional and the amount of damages be trebled and that the amount of profits be
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COMPLAINT
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Such other and further relief as this Court may deem just.
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Respectfully submitted,
FISH & RICHARDSON P.C.
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By:
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COMPLAINT
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Respectfully submitted,
FISH & RICHARDSON P.C.
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Dated:
By:
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COMPLAINT
TABLE OF EXHIBITS
Page #
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Exhibit A ..4
Exhibit B ..13
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COMPLAINT
EXHIBIT A
Exhibit A - Page 1
Exhibit A - Page 2
NEW ASSIGNMENT
NATURE OF CONVEYANCE:
Formerly
Terri Kelly
Execution Date
05/07/2015
Entity Type
INDIVIDUAL:UNITED STATES
Terrikelly LLC
Street Address:
1 Pauma Lane
City:
Palm Desert
State/Country:
CALIFORNIA
Postal Code:
92260
Entity Type:
PROPERTY NUMBERSTotal: 1
Property Type
Registration Number:
Number
4730442
Word Mark
YOGA PANTS FOR YOUR FEET
CORRESPONDENCE DATA
Fax Number:
8587775545
Phone:
8587775545
Email:
jamie@justtrademarks.com
Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent using a fax number, if provided; if that is
unsuccessful, it will be sent via US Mail.
Correspondent Name:
Jamie Shelden
Address Line 1:
1760 Suite F, PMB 220 Airline Highway
Address Line 4:
Hollister, CALIFORNIA 95023
NAME OF SUBMITTER:
Jamie Shelden
Signature:
/Jamie Shelden/
Date:
05/07/2015
Total Attachments: 1
source=Scan0009#page1.tif
RECEIPT INFORMATION
Exhibit A - Page 3
TM340652
05/07/2015
$40
Exhibit A - Page 4
EXHIBIT B
Sketchers USA Inc.s Infringement of the YOGA PANTS FOR YOUR FEET
Trademark
Exhibit B - Page 1
My client has invested a great deal of time, money and effort promoting its footwear and in
building an outstanding reputation for high quality, high comfort products. As a result of the
companys extensive advertising and social media marketing efforts, the YOGA PANTS FOR
YOUR FEET tagline and trademark has come, in short order, to embody substantial and valuable
goodwill.
It has recently come to Ms. Kellys attention that Sketchers began an apparently nationwide
advertising campaign for its new line of stretchable shoes using the YOGA PANTS FOR
YOUR FEET tagline. It also appears that the tagline is trending on Twitter in connection with
Sketchers new footwear line. As my client has substantial nationwide rights in this trademark
based on prior use and based on her federal trademark application, Sketchers use of the identical
tagline in connection with virtually identical products is likely to cause confusion among
consumers as to the source and/or sponsorship of your clients footwear products. Any
continued use of the YOGA PANTS FOR YOUR FEET trademark by Sketchers constitutes
trademark infringement in violation of federal law and state laws governing trademark
infringement and unfair business practices.
While we would like to believe that Sketchers was unaware of Ms. Kelly rights in the YOGA
PANTS FOR YOUR FEET trademark when the company chose to use the tagline in their
nationwide television advertising campaign, a cursory Google search quickly reveals multiple
references to Ms. Kellys products and the YOGA PANTS FOR YOUR FEET trademark. Until
the Sketchers television campaign, in fact, all Google search references were to Ms. Kellys
company, and no others. As I am sure you will understand, in order to protect her rights, my
client cannot permit Sketchers to continue to use the YOGA PANTS FOR YOUR FEET
trademark in any television, print, online or other advertising spots.
To avoid any consumer confusion, my client requires that Sketchers agree in writing that the
company will immediately cease all use the trademark and pull the currently running television
ad campaign and any other promotional uses of the YOGA PANTS FOR YOUR FEET tagline
immediately. We have copied litigation counsel on this notice and will expect immediate written
confirmation no later than Friday, March 27, 2015 that Sketchers will resolve this matter as
requested. Your clients prompt attention to this matter will prevent the need for further legal
action by my client.
Sincerely,
Terri Kelly