5.11 v. Wal-Mart - Taclite Pro Pants PDF

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 1 of 57
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Michael K. Friedland (SBN 157,217)

michael.friedland@knobbe.com
Lauren K. Katzenellenbogen (SBN 223,370)
lauren.katzenellenbogen@knobbe.com
Ali S. Razai (SBN 246,922)
ali.razai@knobbe.com
Kent N. Shum (SBN 259,189)
kent.shum@knobbe.com
Knobbe, Martens Olson & Bear (SBN 285,853)
samantha.hsu@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
Telephone: (949) 760-0404
Facsimile: (949) 760-9502
Attorneys for Plaintiff
5.11, INC.
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IN THE UNITED STATES DISTRICT COURT
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FOR THE SOUTHERN DISTRICT OF CALIFORNIA
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) Case No. 3:14-cv-2952-JLS-WVG

)
) SECOND AMENDED
Plaintiff,
) COMPLAINT FOR
) TRADEMARK INFRINGEMENT,
v.
) TRADE DRESS
) INFRINGEMENT, FALSE
WAL-MART STORES, INC., a
) DESIGNATION OF ORIGIN,
Delaware corporation; and NANJING
) AND UNFAIR COMPETITION
USA, INC., a Delaware corporation,
)
) DEMAND FOR JURY TRIAL
Defendants.
)
)
Plaintiff 5.11, Inc. (5.11) hereby complains of Defendants Wal-Mart
5.11, INC., a California corporation,
Stores, Inc. (Wal-Mart) and Nanjing USA, Inc. (Nanjing) (collectively,

Defendants) and alleges as follows:
THE PARTIES
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1.
Plaintiff 5.11 is a corporation organized and existing under the laws
of the State of California, having a principal place of business at 1360 Reynolds

Ave #101, Irvine, California 92614.
2.
5.11 is informed and believes, and thereon alleges, that Defendant
Wal-Mart is a corporation organized and existing under the laws of the State of
Delaware, having its principal place of business at 702 SW 8th Street,
Bentonville, Arkansas 72716.
3.
5.11 is informed and believes, and thereon alleges, that Defendant
Nanjing is a corporation organized and existing under the laws of the State of
Delaware, having its principal place of business at 3925 NW 126th Avenue,
Coral Springs, Florida 33065.
4.
5.11 is informed and believes, and thereon alleges, that Defendants
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regularly conduct business in, and have committed the acts alleged herein,
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within this judicial district.
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JURISDICTION AND VENUE

5.
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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designation of origin, and federal unfair competition pursuant to sections 34(a)
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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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controversy and derive from a common nucleus of operative facts.
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6.
This Court has personal jurisdiction over each of the Defendants
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because each Defendant has a continuous, systematic, and substantial presence
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within this judicial district, including by selling and offering for sale infringing
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products in this judicial district and by committing acts of trademark and/or
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trade dress infringement in this judicial district, including but not limited to
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Second Amended Complaint

3:14-cv-2952-JLS-WVG
selling infringing products directly to consumers and/or retailers in this district
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
part of the events or omissions giving rise to 5.11s claim.
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and (d).
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Venue is proper in this judicial district under 28 U.S.C. 1391(b)
GENERAL ALLEGATIONS
8.
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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law enforcement, military, firefighting, and other first responder professionals.
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5.11 leads the industry in innovative products that are built on a foundation of
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durability, quality, and value.
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9.
5.11 is the manufacturer and retailer of a variety of styles of tactical
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clothing, uniforms, and tactical gear that have enjoyed substantial success and
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are protected by various intellectual property rights owned by 5.11.
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10.
5.11 is the owner of Trademark Registration No. 2,932,408 (5.11
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Mark). The 5.11 Mark was registered with the U.S. Patent and Trademark
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Office on March 15, 2005 on the Principal Register.
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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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Mark is attached hereto as Exhibit A.
The 5.11 Mark is
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11.
The 5.11 Mark has not been abandoned, canceled, or revoked.
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12.
The 5.11 Mark constitutes an enforceable trademark that uniquely
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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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13.
As a result of the widespread use and display of the 5.11 Mark as a
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.
14.
5.11 manufactures and sells tactical pants under the name
TACTICAL PANTS and TACLITE PRO PANTS bearing distinctive trade
dress in the overall design of the pants (TACTICAL PANTS Trade Dress).
An example of a 5.11 product bearing the distinctive TACTICAL PANTS Trade
Dress is depicted in the photographs attached as Exhibit B. As shown in Exhibit
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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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the side of waistline.
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15.
As a result of 5.11s widespread use and display of the TACTICAL
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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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Dress has established strong secondary meaning and extensive goodwill.
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16.
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TACLITE JEAN-CUT PANTS bearing distinctive trade dress in the overall
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design of the pants (TACLITE JEAN-CUT PANTS Trade Dress).
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example of a 5.11 product bearing the distinctive TACLITE JEAN-CUT
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PANTS Trade Dress is depicted in the photographs attached as Exhibit C. As

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An

shown in Exhibit C, the TACLITE JEAN-CUT PANTS Trade Dress has a
unique design, which includes: the overall placement of the stitching,
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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As a result of 5.11s widespread use and display of the TACLITE
JEAN-CUT PANTS Trade Dress in association with its pants, (a) the public has
come to recognize and identify pants bearing the TACLITE JEAN-CUT
PANTS Trade Dress as emanating from 5.11, (b) the public recognizes that
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products bearing the TACLITE JEAN-CUT PANTS Trade Dress constitute
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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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secondary meaning and extensive goodwill.
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18.
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TRAVERSE PANTS bearing distinctive trade dress in the overall design of the
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pants (TRAVERSE PANTS Trade Dress). An example of a 5.11 product
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bearing the distinctive TRAVERSE PANTS Trade Dress is depicted in the
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photographs attached as Exhibit D. As shown in Exhibit D, the TRAVERSE
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PANTS Trade Dress has a unique design, which includes: the overall placement
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of the stitching, particularly at the pockets, hem-to-hem gusset, the articulation
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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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19.
As a result of 5.11s widespread use and display of the
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.
20.
5.11 manufactures and sells tactical shirts under the name
TACTICAL SHIRT bearing distinctive trade dress in the overall design of the
shirt (TACTICAL SHIRT Trade Dress).
An example of a 5.11 product
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bearing the distinctive TACTICAL SHIRT Trade Dress is depicted in the
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photograph attached as Exhibit E.
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As a result of 5.11s widespread use and display of the TACTICAL
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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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Dress has established strong secondary meaning and extensive goodwill.
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22.
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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(RUSH DELIVERY Trade Dress). An example of a 5.11 product bearing the
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distinctive RUSH DELIVERY Trade Dress is depicted in the photographs
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attached as Exhibit F.
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23.
As a result of 5.11s widespread use and display of the RUSH
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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
established strong secondary meaning and extensive goodwill.
24.
5.11 manufactures and sells tactical bags under the name RANGE
READY BAG bearing distinctive trade dress in the overall design of the bag
(RANGE READY BAG Trade Dress). An example of a 5.11 product bearing
the distinctive RANGE READY BAG Trade Dress is depicted in the
photographs attached as Exhibit G.
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As a result of 5.11s widespread use and display of the RANGE
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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26.
5.11 manufactures and sells tactical backpacks under the name
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RUSH 24 BACKPACK bearing distinctive trade dress in the overall design of
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the backpack (RUSH 24 BACKPACK Trade Dress). An example of a 5.11
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product bearing the distinctive RUSH 24 BACKPACK Trade Dress is depicted
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in the photographs attached as Exhibit H.
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As a result of 5.11s widespread use and display of the RUSH 24
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BACKPACK Trade Dress in association with its backpacks, (a) the public has
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come to recognize and identify backpacks bearing the RUSH 24 BACKPACK
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bearing the RUSH 24 BACKPACK Trade Dress constitute high quality
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products that conform to the specifications created by 5.11, and (c) the RUSH
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24 BACKPACK Trade Dress has established strong secondary meaning and
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extensive goodwill.
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28.
5.11 manufactures and sells tactical gloves under the name
STATION GRIP GLOVES bearing distinctive trade dress in the overall design
of the gloves (STATION GRIP GLOVES Trade Dress). An example of a
5.11 product bearing the distinctive STATION GRIP GLOVES Trade Dress is
depicted in the photograph attached as Exhibit I.

29.
As a result of 5.11s widespread use and display of the STATION
GRIP GLOVES Trade Dress in association with its gloves, (a) the public has
come to recognize and identify gloves bearing the STATION GRIP GLOVES
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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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STATION GRIP GLOVES Trade Dress has established strong secondary
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meaning and extensive goodwill.

30.
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have deliberately copied 5.11s intellectual property rights, including the 5.11
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Mark, TACTICAL PANTS Trade Dress, TACLITE JEAN-CUT PANTS Trade
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Dress, and TRAVERSE PANTS Trade Dress (collectively, the 5.11 Trade
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Dress).
31.
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5.11 is informed and believes, and thereon alleges, that Nanjing
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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.
32.
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In or around July 2013, Wal-Marts representatives approached
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5.11 representatives at the Outdoor Retailer tradeshow about 5.11 potentially
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supplying Wal-Mart with tactical products.
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representatives from 5.11 visited Wal-Marts headquarters in Bentonville,
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Arkansas to further discuss the opportunity. In or around November 2013, 5.11
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decided not to pursue a partnership with Wal-Mart.
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In or around October 2013,

33.
5.11 is informed and believes, and thereon alleges, that SOG
Specialty Knives and Tools, LLC (SOG) entered into separate license
agreements with three separate licensees, including Nanjing (Licensees)
whereby each of the Licensees would use SOGs trademarks and other
intellectual property in connection with the design, manufacture, importation,
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
Stretch Double Knee Cargo Pant.
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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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PANTS Trade Dress, TACLITE JEAN-CUT PANTS Trade Dress, TRAVERSE
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PANTS Trade Dress, TACTICAL SHIRT Trade Dress, RUSH DELIVERY
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Trade Dress, RANGE READY BAG Trade Dress, RUSH 24 BACKPACK
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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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These products were separately designed, manufactured, imported, and sold by
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the three Licensees, with each company responsible for different types of
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products, bearing SOGs trademark.
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5.11 is informed and believes, and thereon alleges, that each of
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these SOG-branded products were introduced to the market and sold to Wal-
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Mart at or around the same time.
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36.
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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5.11s allegations of infringement of the TACTICAL SHIRT Trade Dress,
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RUSH DELIVERY Trade Dress, RANGE READY BAG Trade Dress, RUSH
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24 BACKPACK Trade Dress, and STATION GRIP GLOVES Trade Dress.

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intended to copy the 5.11 Mark and the 5.11 Trade Dress.
FIRST CLAIM FOR RELIEF
(Federal Trademark Infringement)

(15 U.S.C. 1114)
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38.
5.11 repeats and re-alleges the allegations of paragraphs 137 of
this Complaint as if set forth fully herein.

39.
This is a claim for trademark infringement arising under 15 U.S.C.
1114.
40.
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sell, offer to sell, distribute, and/or advertise products in connection with the
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5.11 Mark or marks confusingly similar thereto without 5.11s consent.
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41.
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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Pant uses a mark that is confusingly similar to the 5.11 Mark.
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42.
Without 5.11s consent, Defendants use in commerce marks that
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are confusingly similar to the 5.11 Mark in connection with the sale, offering for
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sale, distribution, or advertising of goods in a manner that is likely to cause
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confusion, or to cause mistake, or to deceive.
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43.
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did so with the intent to unfairly compete with 5.11, to trade upon 5.11s
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reputation and goodwill by causing confusion and mistake among customers
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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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they are not.

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44.
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
direct contravention of 5.11s rights.
45.
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
presently known to 5.11.
unauthorized use of the 5.11 Mark, 5.11 has been damaged and is entitled to
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By reason of Defendants actions, constituting
monetary relief in an amount to be determined at trial.

46.
Due to Defendants actions, constituting unauthorized use of the
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5.11 Mark, 5.11 has suffered and continues to suffer great and irreparable
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injury, for which 5.11 has no adequate remedy at law.
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SECOND CLAIM FOR RELIEF
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(Federal Trade Dress Infringement)

(15 U.S.C. 1125(a))
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1125(a).
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49.
This is a claim for trade dress infringement under 15 U.S.C.
Subsequent to 5.11s use and adoption of the TACTICAL PANTS
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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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that is confusingly similar to the TACTICAL PANTS Trade Dress.
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example, the SOG Mens Ripstop Cargo Pant uses trade dress that is
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confusingly similar to 5.11s TACTICAL PANTS Trade Dress.
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50.
For
Subsequent to 5.11s use and adoption of the TACLITE JEAN-
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 that is confusingly similar to the TACLITE JEAN-CUT PANTS
Trade Dress. For example, the SOG Mens Ripstop 5 Pocket Pant uses trade
dress that is confusingly similar to 5.11s TACLITE JEAN-CUT PANTS Trade
Dress.
51.
Subsequent to 5.11s use and adoption of the TRAVERSE PANTS
Trade Dress, Defendants have sold, offered for sale, distributed, advertised,
promoted, and/or imported into the United States products that use trade dress
that is confusingly similar to the TRAVERSE PANTS Trade Dress.
For
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example, the SOG Mens 4 Way Stretch Double Knee Cargo Pant uses trade
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dress that is confusingly similar to 5.11s TRAVERSE PANTS Trade Dress.

52.
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Defendants use of the 5.11 Trade Dress, and/or trade dress
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confusingly similar thereto in connection with the sale, offer for sale,
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distribution, advertising, promotion, and/or importation into the United States of
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their accused products is each likely to cause confusion, to cause mistake, or to
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deceive as to the affiliation, connection, or association of Defendants with 5.11.

53.
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5.11 is informed and believes, and thereon alleges, that
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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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profits, and advantages from Defendants trade dress infringement in an amount
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that is not presently known to 5.11.
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constituting trade dress infringement, 5.11 has been damaged and is entitled to
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monetary relief in an amount to be determined at trial.
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By reason of Defendants actions,

55.
Due to Defendants actions, which constitute trade dress
infringement, 5.11 has suffered and continues to suffer great and irreparable
injury, for which 5.11 has no adequate remedy at law.

56.
Pursuant to 15 U.S.C. 1117, 5.11 is entitled to damages for
Defendants infringing acts, up to three times actual damages as fixed by this
Court, and its reasonable attorneys fees for the necessity of bringing this claim.
THIRD CLAIM FOR RELIEF
(Federal Unfair Competition & False Designation of Origin)

(15 U.S.C. 1125(a))
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58.
This is a claim for unfair competition and false designation of
origin arising under 15 U.S.C. 1125(a).
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59.
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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false designation of origin, which is likely to cause confusion, to cause mistake,
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or to deceive as to the affiliation, connection, or association of Defendants with
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5.11, or as to the origin, sponsorship, or approval of Defendants goods and/or
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commercial activities by 5.11 in violation of 15 U.S.C. 1125(a) and constitutes
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unfair competition with 5.11.
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60.
Defendants conduct is likely to confuse, mislead, and deceive
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Defendants customers, purchasers, and members of the public as to the origin
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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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authorized, or licensed by 5.11 or are in some way affiliated or connected with
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5.11, all in violation of 15 U.S.C. 1125(a), and constitutes unfair competition
with 5.11.
61.
5.11 is informed and believes, and thereon alleges, that
Defendants actions were undertaken willfully with full knowledge of the falsity
of such designation of origin and false descriptions or representations.
62.
profits, and advantages from Defendants unfair competition and false
designation of origin in an amount that is not presently known to 5.11. By
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reason of Defendants actions, constituting unfair competition and false
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designation of origin, 5.11 has been damaged and is entitled to monetary relief
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in an amount to be determined at trial.
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63.
Due to Defendants actions, which constitute unfair competition
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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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64.
Pursuant to 15 U.S.C. 1117, 5.11 is entitled to damages for
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Defendants acts constituting unfair competition and false designation of origin,
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up to three times actual damages as fixed by this Court, and its reasonable
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attorneys fees for the necessity of bringing this claim.
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FOURTH CLAIM FOR RELIEF
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(California Unfair Competition)
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66.
This is a claim for unfair competition, arising under California
Business & Professions Code 17200, et seq., and California common law.
67.
Defendants
acts
of
trademark
infringement,
trade
dress
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infringement, and false designation of origin complained of herein constitute
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unfair competition with 5.11 under the common law and statutory laws of the
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State of California, particularly California Business & Professions Code
17200, et seq.
68.
profits, and advantages from Defendants unfair competition in an amount that
is not presently known to 5.11. By reason of Defendants wrongful acts as
alleged in this Complaint, 5.11 has been damaged and is entitled to monetary
relief in an amount to be determined at trial.

69.
By its actions, Defendants have injured and violated the rights of
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5.11 and have irreparably injured 5.11, and such irreparable injury will continue
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unless Defendants are enjoined by this Court.
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WHEREFORE, 5.11 prays for judgment in its favor against Defendants

for the following relief:
A.
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That the Court find for 5.11 and against Defendants on 5.11s
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claims of trademark infringement, trade dress infringement, false designation of
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origin, and unfair competition complained of in this Complaint;

B.
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That Defendants acts of trademark infringement, trade dress
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infringement, false designation of origin, and unfair competition complained of
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in this Complaint be deemed willful, that this be deemed an exceptional case,
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and that 5.11 be entitled to enhanced damages;

C.
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A preliminary and permanent injunction against Defendants and
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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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or participation with Defendants, enjoining them from engaging in the following
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activities and from assisting or inducing, directly or indirectly, others to engage
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in the following activities:
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employees,
representatives,

1. using the 5.11 Mark, or any other mark, symbol, or design that
is confusingly similar to the 5.11 Mark on or in connection with
any goods, including but not limited to, pants and shorts;
2. using the 5.11 Trade Dress or any other trade dress that is
confusingly similar to the 5.11 Trade Dress; and,
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3. manufacturing, using, displaying, distributing, or selling any
goods that infringe the 5.11 Mark or any of the 5.11 Trade
Dress;
D.
A preliminary and permanent injunction against Defendants, their
10
officers, agents, servants, employees, representatives, successors, and assigns,
11
and all persons, firms, or corporations in active concert or participation with
12
Defendants, enjoining them from engaging in the following activities and from
13
assisting or inducing, directly or indirectly, others to engage in the following
14
activities:
15
1. falsely designating the origin of Defendants goods;
16
2. unfairly competing with 5.11 in any manner whatsoever;
17
3. making false or misleading statements, descriptions of fact, or

false or misleading representations of fact; and,
18
4. causing a likelihood of confusion or injuries to 5.11s business
19
reputation;
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E.
21
That an accounting be ordered to determine Defendants profits
22
resulting from their trademark infringement, trade dress infringement, false
23
designation of origin, and unfair competition and that 5.11 be awarded monetary
24
relief in an amount to be fixed by the Court in its discretion as it finds just as an
25
equitable remedy and as a remedy under 15 U.S.C. 1117, including:
26
///
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///
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///
- 16 -

1. all profits received by Defendants from sales and revenues of
any kind made as a result of their trademark infringement, trade
dress infringement, false designation of origin, and/or unfair
competition, said amount to be trebled; and,

2. all damages sustained by 5.11 as a result of Defendants acts of
5
6
trademark
designation of origin, and unfair competition, and that such
damages be trebled;
F.
infringement,
trade
dress
infringement,
false
That, because of the exceptional nature of this case resulting from
10
Defendants deliberate infringing actions, this Court award to 5.11 all
11
reasonable attorneys fees, costs, and disbursements incurred as a result of this
12
action, pursuant to 15 U.S.C. 1117;
13
G.
That Defendants be adjudged to have competed unfairly with 5.11
14
under the common law of the State of California, and that Defendants actions
15
in doing so be adjudged willful and malicious;
16
H.
For an Order adjudging Defendants to have competed unfairly with
17
5.11 under California Business & Professions Code 17200, et seq., and that
18
Defendants actions in doing so be adjudged intentional, willful, and done
19
knowingly;
20
I.
For a permanent injunction enjoining Defendants, its officers,
21
agents, servants, employees, and attorneys, and those persons in active concert
22
or participation with them, from engaging in any act or practice which
23
constitutes unfair competition against 5.11;
24
25
26
27
J.
For an award to 5.11 of any and all other specific, general, and
compensatory damages according to proof;

K.
For an order that the actions of Defendants were willful,
intentional, and/or malicious and awarding 5.11 punitive damages;
28
- 17 -

L.
An award of pre-judgment and post-judgment interest against
Defendants; and
M.
Such other and further relief as this Court may deem just.
4
5
Respectfully submitted,
7
8
9
10
11
12
13
Dated: October 26, 2015
By: /s/ Ali S. Razai

Michael K. Friedland
Ali S. Razai
Lauren K. Katzenellenbogen
Kent N. Shum
Samantha Y. Hsu
5.11, INC.
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15
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18
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20
21
22
23
24
25
26
27
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- 18 -

DEMAND FOR JURY TRIAL

Plaintiff 5.11, Inc. hereby demands a trial by jury on all issues so triable.
2
3
4
Respectfully submitted,
6
7
8
Dated: October 26, 2015
9
10
11
By: /s/ Ali S. Razai

Michael K. Friedland
Ali S. Razai
Lauren K. Katzenellenbogen
Kent N. Shum
Samantha Y. Hsu
5.11, INC.
12
13
14
15
21879480
16
17
18
19
20
21
22
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24
25
26
27
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- 19 -

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

Front Knee
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

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Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 1 of 57

Michael K. Friedland (SBN 157,217)

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

) Case No. 3:14-cv-2952-JLS-WVG

Stores, Inc. (Wal-Mart) and Nanjing USA, Inc. (Nanjing) (collectively,

Plaintiff 5.11 is a corporation organized and existing under the laws

of the State of California, having a principal place of business at 1360 Reynolds

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 2 of 57

5.11 is informed and believes, and thereon alleges, that Defendant

Delaware, having its principal place of business at 702 SW 8th Street,

Bentonville, Arkansas 72716.

5.11 is informed and believes, and thereon alleges, that Defendant

Delaware, having its principal place of business at 3925 NW 126th Avenue,

Coral Springs, Florida 33065.

5.11 is informed and believes, and thereon alleges, that Defendants

within this judicial district.

JURISDICTION AND VENUE

designation of origin, and federal unfair competition pursuant to sections 34(a)

controversy and derive from a common nucleus of operative facts.

This Court has personal jurisdiction over each of the Defendants

because each Defendant has a continuous, systematic, and substantial presence

products in this judicial district and by committing acts of trademark and/or

Second Amended Complaint

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 3 of 57

selling infringing products directly to consumers and/or retailers in this district

part of the events or omissions giving rise to 5.11s claim.

Venue is proper in this judicial district under 28 U.S.C. 1391(b)

law enforcement, military, firefighting, and other first responder professionals.

durability, quality, and value.

5.11 is the manufacturer and retailer of a variety of styles of tactical

are protected by various intellectual property rights owned by 5.11.

5.11 is the owner of Trademark Registration No. 2,932,408 (5.11

Office on March 15, 2005 on the Principal Register.

Mark is attached hereto as Exhibit A.

The 5.11 Mark is

The 5.11 Mark has not been abandoned, canceled, or revoked.

The 5.11 Mark constitutes an enforceable trademark that uniquely

As a result of the widespread use and display of the 5.11 Mark as a

Second Amended Complaint

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 4 of 57

5.11 manufactures and sells tactical pants under the name

TACTICAL PANTS and TACLITE PRO PANTS bearing distinctive trade

An example of a 5.11 product bearing the distinctive TACTICAL PANTS Trade

Dress is depicted in the photographs attached as Exhibit B. As shown in Exhibit

the side of waistline.

As a result of 5.11s widespread use and display of the TACTICAL

Dress has established strong secondary meaning and extensive goodwill.

5.11 manufactures and sells tactical pants under the name

TACLITE JEAN-CUT PANTS bearing distinctive trade dress in the overall

design of the pants (TACLITE JEAN-CUT PANTS Trade Dress).

example of a 5.11 product bearing the distinctive TACLITE JEAN-CUT

PANTS Trade Dress is depicted in the photographs attached as Exhibit C. As

Second Amended Complaint

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 5 of 57

shown in Exhibit C, the TACLITE JEAN-CUT PANTS Trade Dress has a

unique design, which includes: the overall placement of the stitching,

As a result of 5.11s widespread use and display of the TACLITE

come to recognize and identify pants bearing the TACLITE JEAN-CUT

products bearing the TACLITE JEAN-CUT PANTS Trade Dress constitute

secondary meaning and extensive goodwill.

5.11 manufactures and sells tactical pants under the name