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5.11 v. Wal-Mart - Taclite Pro Pants PDF
5.11 v. Wal-Mart - Taclite Pro Pants PDF
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1.
2.
Wal-Mart is a corporation organized and existing under the laws of the State of
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Nanjing is a corporation organized and existing under the laws of the State of
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regularly conduct business in, and have committed the acts alleged herein,
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This Court has subject matter jurisdiction over this action pursuant
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to 28 U.S.C. 1331 and 1338, as it arises under the trademark laws of the
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United States. This Court also has subject matter jurisdiction over the claims in
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this action that relate to trademark infringement, trade dress infringement, false
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and 39(a) of the Lanham Act and 15 U.S.C. 1116(a) and 1121(a), as these
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claims arise under the laws of the United States. The Court has supplemental
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jurisdiction over the claims in this Complaint which arise under state statutory
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and common law pursuant to 28 U.S.C. 1367(a) because the state law claims
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are so related to the federal claims that they form part of the same case or
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within this judicial district, including by selling and offering for sale infringing
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trade dress infringement in this judicial district, including but not limited to
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and selling into the stream of commerce knowing such products would be sold
in California and this district. These acts of the Defendants form a substantial
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and (d).
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GENERAL ALLEGATIONS
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5.11 has been actively engaged in the manufacture and sale of high
quality tactical clothing, uniforms, and tactical gear and focuses on creating
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superior products that enhance the safety, accuracy, speed, and performance of
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5.11 leads the industry in innovative products that are built on a foundation of
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clothing, uniforms, and tactical gear that have enjoyed substantial success and
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Mark). The 5.11 Mark was registered with the U.S. Patent and Trademark
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associated with the following goods: clothing, namely, pants and shorts, in
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class 25. A true and correct copy of the certificate of registration of the 5.11
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identifies pants and shorts as emanating from, sponsored by, and/or authorized
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by 5.11.
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distinctive trademark identifying pants and shorts, (a) the public has come to
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recognize and identify products bearing the 5.11 Mark as emanating from 5.11,
(b) the public recognizes that products bearing the 5.11 Mark constitute high
quality products that conform to the specifications created by 5.11, and (c) the
5.11 Mark has established strong secondary meaning and extensive goodwill.
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dress in the overall design of the pants (TACTICAL PANTS Trade Dress).
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B, the TACTICAL PANTS Trade Dress has a unique design, which includes:
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the overall placement of the stitching, particularly at the front knees, front
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pockets, rear slash pockets, and cargo pockets; the shape and placement of rear
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slash pockets; the shape and placement of a front thigh patch pocket with flap
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closure on at least one leg; the shape and placement of a large cargo pocket with
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flap closure on each leg; and, the shape and placement of the gathered elastic at
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PANTS Trade Dress in association with its pants, (a) the public has come to
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recognize and identify pants bearing the TACTICAL PANTS Trade Dress as
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emanating from 5.11, (b) the public recognizes that products bearing the
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TACTICAL PANTS Trade Dress constitute high quality products that conform
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to the specifications created by 5.11, and (c) the TACTICAL PANTS Trade
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particularly at the pockets, the front knees and the back knees; the shape and
placement of front scoop pockets; the shape and placement of front thigh welt
pockets on each leg; and, the shape and placement of back yolk pockets.
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JEAN-CUT PANTS Trade Dress in association with its pants, (a) the public has
PANTS Trade Dress as emanating from 5.11, (b) the public recognizes that
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high quality products that conform to the specifications created by 5.11, and
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(c) the TACLITE JEAN-CUT PANTS Trade Dress has established strong
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TRAVERSE PANTS bearing distinctive trade dress in the overall design of the
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PANTS Trade Dress has a unique design, which includes: the overall placement
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at the knees, pattern surrounding the knee, and kick plate at the hem of each leg;
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the shape and placement of a hem-to-hem gusset; the shape and placement of a
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kick plate at the hem of each leg; a front button overlay; the shape and
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placement of rear zippered pockets; zippers on each back pocket with locking
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zipper head, reverse coil zipper, and zipper garages on each end; and, the shape
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and placement of a large cargo pocket with flap closure on each leg.
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TRAVERSE PANTS Trade Dress in association with its pants, (a) the public
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has come to recognize and identify pants bearing the TRAVERSE PANTS
Trade Dress as emanating from 5.11, (b) the public recognizes that products
bearing the TRAVERSE PANTS Trade Dress constitute high quality products
that conform to the specifications created by 5.11, and (c) the TRAVERSE
PANTS Trade Dress has established strong secondary meaning and extensive
goodwill.
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TACTICAL SHIRT bearing distinctive trade dress in the overall design of the
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SHIRT Trade Dress in association with its shirts, (a) the public has come to
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recognize and identify shirts bearing the TACTICAL SHIRT Trade Dress as
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emanating from 5.11, (b) the public recognizes that products bearing the
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TACTICAL SHIRT Trade Dress constitute high quality products that conform
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to the specifications created by 5.11, and (c) the TACTICAL SHIRT Trade
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5.11 manufactures and sells tactical bags under the name RUSH
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DELIVERY bearing distinctive trade dress in the overall design of the bag
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attached as Exhibit F.
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DELIVERY Trade Dress in association with its bags, (a) the public has come to
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recognize and identify bags bearing the RUSH DELIVERY Trade Dress as
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emanating from 5.11, (b) the public recognizes that products bearing the RUSH
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DELIVERY Trade Dress constitute high quality products that conform to the
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specifications created by 5.11, and (c) the RUSH DELIVERY Trade Dress has
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5.11 manufactures and sells tactical bags under the name RANGE
READY BAG bearing distinctive trade dress in the overall design of the bag
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READY BAG Trade Dress in association with its bags, (a) the public has come
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to recognize and identify bags bearing the RANGE READY BAG Trade Dress
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as emanating from 5.11, (b) the public recognizes that products bearing the
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RANGE READY BAG Trade Dress constitute high quality products that
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conform to the specifications created by 5.11, and (c) the RANGE READY
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BAG Trade Dress has established strong secondary meaning and extensive
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goodwill.
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BACKPACK Trade Dress in association with its backpacks, (a) the public has
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Trade Dress as emanating from 5.11, (b) the public recognizes that products
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products that conform to the specifications created by 5.11, and (c) the RUSH
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extensive goodwill.
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STATION GRIP GLOVES bearing distinctive trade dress in the overall design
5.11 product bearing the distinctive STATION GRIP GLOVES Trade Dress is
GRIP GLOVES Trade Dress in association with its gloves, (a) the public has
come to recognize and identify gloves bearing the STATION GRIP GLOVES
Trade Dress as emanating from 5.11, (b) the public recognizes that products
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bearing the STATION GRIP GLOVES Trade Dress constitute high quality
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products that conform to the specifications created by 5.11, and (c) the
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have deliberately copied 5.11s intellectual property rights, including the 5.11
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Dress, and TRAVERSE PANTS Trade Dress (collectively, the 5.11 Trade
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Dress).
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imports and sells clothing, including pants that infringe 5.11s intellectual
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property rights, including the 5.11 Mark and the 5.11 Trade Dress.
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Specialty Knives and Tools, LLC (SOG) entered into separate license
whereby each of the Licensees would use SOGs trademarks and other
and sale of products, including bags, shirts and the Defendants SOG Mens
Ripstop Cargo Pant, SOG Mens Ripstop 5 Pocket Pant, and SOG Mens 4 Way
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5.11 is informed and believes, and thereon alleges, that the three
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Licensees replicated at least a portion of 5.11s product line for sale at Wal-
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Mart, including products that used and copied the 5.11 Mark, TACTICAL
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Trade Dress, and STATION GRIP GLOVES Trade Dress. The SOG-branded
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products included several different types of tactical gear: three pants models,
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one shirt model, two bag models, one backpack model, and one gloves model.
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the three Licensees, with each company responsible for different types of
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these SOG-branded products were introduced to the market and sold to Wal-
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5.11 has since resolved its dispute with SOG and each of the
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Licensees except Nanjing and has also resolved its dispute with Wal-Mart as to
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RUSH DELIVERY Trade Dress, RANGE READY BAG Trade Dress, RUSH
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intended to copy the 5.11 Mark and the 5.11 Trade Dress.
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sell, offer to sell, distribute, and/or advertise products in connection with the
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5.11 is informed and believes, and thereon alleges, that long after
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5.11s adoption and use of the 5.11 Mark and after the federal registration of the
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5.11 Mark, Defendants used the 5.11 Mark or marks confusingly similar thereto
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without 5.11s consent in a manner that infringes 5.11s rights in the 5.11 Mark
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in violation of 15 U.S.C. 1114. For example, the SOG Mens Ripstop Cargo
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are confusingly similar to the 5.11 Mark in connection with the sale, offering for
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did so with the intent to unfairly compete with 5.11, to trade upon 5.11s
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and the public, and to deceive the public into believing that their products are
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associated with, sponsored by, originate from, or are approved by 5.11, when
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Defendants
activities
constitute
willful
and
intentional
infringement of the 5.11 Mark in total disregard of 5.11s proprietary rights, and
were done despite their knowledge that the use of the 5.11 Mark was and is in
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have derived and received, and will continue to derive and receive, gains,
profits, and advantages from the use of the 5.11 Mark in an amount that is not
unauthorized use of the 5.11 Mark, 5.11 has been damaged and is entitled to
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5.11 Mark, 5.11 has suffered and continues to suffer great and irreparable
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1125(a).
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Trade Dress, Defendants have sold, offered for sale, distributed, advertised,
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promoted, and/or imported into the United States products that use trade dress
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example, the SOG Mens Ripstop Cargo Pant uses trade dress that is
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For
CUT PANTS Trade Dress, Defendants have sold, offered for sale, distributed,
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advertised, promoted, and/or imported into the United States products that use
Trade Dress. For example, the SOG Mens Ripstop 5 Pocket Pant uses trade
Dress.
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Trade Dress, Defendants have sold, offered for sale, distributed, advertised,
promoted, and/or imported into the United States products that use trade dress
For
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example, the SOG Mens 4 Way Stretch Double Knee Cargo Pant uses trade
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confusingly similar thereto in connection with the sale, offer for sale,
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Defendants acts of trade dress infringement were undertaken willfully with the
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express intent to cause confusion, and to mislead and deceive the purchasing
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public.
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have derived and received, and will continue to derive and receive, gains,
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constituting trade dress infringement, 5.11 has been damaged and is entitled to
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infringement, 5.11 has suffered and continues to suffer great and irreparable
Court, and its reasonable attorneys fees for the necessity of bringing this claim.
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Defendants use of the 5.11 Mark, the 5.11 Trade Dress, and/or
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marks or trade dress confusingly similar thereto in connection with the sale,
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offer for sale, distribution, advertising, promotion, and/or importation into the
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United States of their accused products without 5.11s consent each constitutes a
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of each of the 5.11 Mark and the 5.11 Trade Dress or cause said persons to
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believe that Defendants and/or their products have been sponsored, approved,
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with 5.11.
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Defendants actions were undertaken willfully with full knowledge of the falsity
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have derived and received, and will continue to derive and receive, gains,
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designation of origin, 5.11 has been damaged and is entitled to monetary relief
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and false designation of origin, 5.11 has suffered and continues to suffer great
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and irreparable injury, for which 5.11 has no adequate remedy at law.
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up to three times actual damages as fixed by this Court, and its reasonable
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Business & Professions Code 17200, et seq., and California common law.
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Defendants
acts
of
trademark
infringement,
trade
dress
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unfair competition with 5.11 under the common law and statutory laws of the
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17200, et seq.
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have derived and received, and will continue to derive and receive, gains,
alleged in this Complaint, 5.11 has been damaged and is entitled to monetary
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5.11 and have irreparably injured 5.11, and such irreparable injury will continue
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That the Court find for 5.11 and against Defendants on 5.11s
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their
respective
officers,
agents,
servants,
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successors, and assigns, and all persons, firms, or corporations in active concert
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employees,
representatives,
1. using the 5.11 Mark, or any other mark, symbol, or design that
any goods, including but not limited to, pants and shorts;
2. using the 5.11 Trade Dress or any other trade dress that is
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goods that infringe the 5.11 Mark or any of the 5.11 Trade
Dress;
D.
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Defendants, enjoining them from engaging in the following activities and from
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activities:
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reputation;
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E.
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designation of origin, and unfair competition and that 5.11 be awarded monetary
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trademark
damages be trebled;
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infringement,
trade
dress
infringement,
false
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G.
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under the common law of the State of California, and that Defendants actions
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H.
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5.11 under California Business & Professions Code 17200, et seq., and that
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knowingly;
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agents, servants, employees, and attorneys, and those persons in active concert
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J.
For an award to 5.11 of any and all other specific, general, and
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Defendants; and
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Such other and further relief as this Court may deem just.
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Respectfully submitted,
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Respectfully submitted,
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21879480
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EXHIBIT A
EXHIBIT A
PAGE 1
EXHIBIT B
EXHIBIT B
TACTICAL PANTS Trade Dress
EXHIBIT B
PAGE 2
EXHIBIT B
PAGE 3
EXHIBIT B
PAGE 4
EXHIBIT B
PAGE 5
Front Knee
EXHIBIT B
PAGE 6
EXHIBIT B
PAGE 7
EXHIBIT C
EXHIBIT C
TACLITE JEAN-CUT PANTS Trade Dress
EXHIBIT C
PAGE 8
EXHIBIT C
PAGE 9
EXHIBIT C
PAGE 10
EXHIBIT C
PAGE 11
Back Knee
EXHIBIT C
PAGE 12
Front Knee
EXHIBIT C
PAGE 13
EXHIBIT D
EXHIBIT D
TRAVERSE PANTS Trade Dress
EXHIBIT D
PAGE 14
EXHIBIT D
PAGE 15
EXHIBIT D
PAGE 16
EXHIBIT D
PAGE 17
Hem
EXHIBIT D
PAGE 18
EXHIBIT D
PAGE 19
EXHIBIT E
EXHIBIT E
TACTICAL SHIRT Trade Dress
EXHIBIT E
PAGE 20
EXHIBIT F
EXHIBIT F
RUSH DELIVERY Trade Dress
EXHIBIT F
PAGE 21
EXHIBIT F
PAGE 22
EXHIBIT F
PAGE 23
EXHIBIT G
EXHIBIT G
RANGE READY BAG Trade Dress
EXHIBIT G
PAGE 24
EXHIBIT G
PAGE 25
EXHIBIT G
PAGE 26
EXHIBIT H
EXHIBIT H
RUSH 24 BACKPACK Trade Dress
EXHIBIT H
PAGE 27
EXHIBIT H
PAGE 28
EXHIBIT I
EXHIBIT I
STATION GRIP GLOVES Trade Dress
EXHIBIT I
PAGE 29