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Case 1:15-cv-00125 Document 1 Filed 02/11/15 Page 1 of 10

IN THE UNITED STATES DISTRICT COURT


FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION

USA SPORTS, INC.

CASE NO. 1:15cv00125

Plaintiff,
v.
ONNIT LABS, LLC
Defendant.
ORIGINAL COMPLAINT
For its complaint against Onnit Labs, LLC (Onnit) plaintiff USA Sports, Inc. (USA Sports)
alleges:
PARTIES
1.

USA Sports is a corporation organized under the laws of the State of Texas and

has its principal place of business in Houston, Texas.


2.

Onnit is a corporation organized under the laws of the State of Texas

and had its principal place of business within this judicial district.

NATURE OF ACTION, JURISDICTION AND VENUE


3.

This is an action for: (a) patent infringement under the Patent Act, 35 U.S.C. 1

et seq.; (b) infringement of unregistered trademarks under the Lanham Act, 15 U.S.C. 1125(a); and
(c) related state common law claims.
4.

This Court has subject matter jurisdiction under 28 U.S.C. 1331 (Federal

Question), 1338 (Patent, Trademark and Unfair Competition) and 1367 (Supplemental
Jurisdiction), and/or 15 U.S.C. 1121 (Lanham Act).

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5.

Venue is proper under 28 U.S.C. 1391(b) & (c), 1400(a), and/or 1400(b)

because, among other things, defendant Onnit resides in this district and has its principal place of
business in this district; because a substantial part of the events or omissions giving rise to the claims
occurred in this District; and/or because a substantial part of the property that is the subject of this
action is situated in this District.

FACTS COMMON TO ALL COUNTS


USA Sports Property Rights
7.

USA Sports is the owner by assignment of U.S. Patent No. D672,416 issued

December 11, 2012 (the 416 Design Patent), which is valid and enforceable. The 416 Design
Patent is directed to an ornamental design for a wall ball. A true and correct copy of the 416 design
patent is attached as Exhibit A.
8.

At all times relevant to this action, USA Sports has complied with any notice

provisions of 35 U.S.C. 287 as they may relate to the 416 Design Patent.
9.

Over the years, USA Sports has manufactured, or had manufactured for it, and

sold a wide variety of athletic equipment. Among its better-known products are products sold
under its famous registered VTX trademark.
10.

Years ago, USA Sports began utilizing a unique trade dress for certain

products sold under the VTX mark (the VTX Trade Dress) including, specifically, its wall ball
products. The unique trade dress is generally reflected in the images below:

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12.

As will be noted in the images provided above, the VTX Trade Dress for USA Sports VTX

wall ball products includes material panels that have the general appearance of a V and other
panels that have the general appearance of an X. The shape and design of these panels was
selected by USA Sports to associate the VTX wall ball product with USA Sports famous VTX
trademark.
13.

The overall appearance of the USA Sports wall balls using the VTX Trade Dress provides a

certain distinctive and non-functional appearance that, taken as a whole in combination, identifies
the wall balls as originating exclusively with USA Sports.
14.

USA Sports has used and actively promoted the VTX Trade Dress to identify to

customers and users the high quality wall ball products it sells extensively throughout the United States
and other parts of the world.
15.

USA Sports has sold substantial numbers of wall balls bearing the VTX Trade

Dress. USA Sports has extensively advertised, marketed, and promoted its wall balls bearing the VTX
Trade Dress. USA Sports wall balls bearing the VTX Trade Dress are well known and well respected
for quality and dependability.

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16.

The VTX Trade Dress has developed a secondary meaning within the relevant

market, which meaning signifies quality wall balls originating with a single source, USA Sports.
17.

The VTX Trade Dress is inherently distinctive as to wall balls, and is now

famous for wall balls.


Defendants Improper Activities
18.

Onnit has offered for sale, exposed for sale, and sold and is currently offering and exposing

for sale various sizes of the Onnit Battle Ball.


19.

Onnit engaged in the acts set forth in the previous paragraph, in part,

through its website, www.onnit.com. A portion of a page from that website exposing the Onnit Battle
Ball products for sale is reproduced below:

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COUNT I
Infringement of the 416 Design Patent
20.

The allegations in the preceding paragraphs of this Complaint are hereby restated

and incorporated by reference.


21.

Defendants have committed acts of direct and indirect patent infringement by

making, using, selling, offering to sell, and/or importing wall balls that infringe the 416 Design
Patent.

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22.

Defendants have applied the design of the 416 Design Patent, or a

colorable imitation thereof, to an article of manufacture for the purpose of sale and/or have sold or
exposed for sale articles of manufacture to which the design or colorable imitation has been applied.
As such, they are liable to USA Sports for their total profit under 35 U.S.C. 289.
23.

As a result of USA Sports activities, its prior purchase of USA Sports VTX wall balls,

USA Sports consistent marking of its VTX wall ball products with the patent number for the 416
Design Patent, Onnit is believed to have knowledge of the 416 Design Patent and to have had such
knowledge as of the time it adopted its current design for the Onnit Battle Ball wall ball products. As
such, Onnits infringement of the 416 Design Patents is deliberate and willful. The allegations and
factual contentions set forth in this paragraph have evidentiary support and are likely to have additional
evidentiary support after a reasonable opportunity for further investigation or discovery. See Fed. R.
Civ. P. 11(b)(3).

COUNT II
Trade Dress Infringement under the Lanham Act
24.

The allegations in the preceding paragraphs of this Complaint are hereby restated

and incorporated by reference.


25.

Without authorization, Onnit has used in connection with

goods, and continue to use in interstate commerce and/or in commerce between the United States and
foreign nations, a symbol or device in the form of a reproduction, or copy of the USA Sports VTX
Trade Dress, which is likely to cause confusion, or to cause mistake, or to deceive as to Page the
affiliation, connection, or association of Onnit, or as to the origin, sponsorship, or approval of their
goods or commercial activities. Onnit is liable for such unauthorized use under 15 U.S.C.
1125(a)(1)(A).

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26.

As a result of such unauthorized use of a counterfeit, reproduction, or copy of the

USA Sports VTX Trade Dress, USA Sports has suffered damages in the form of lost sales, lost profits,
and injury to its goodwill and business reputation symbolized by the USA Sports VTX Trade Dress.
27.

Further, as a result of such unauthorized use, Onnit has made unjust profits and ill-gotten

gains from the sale of its goods by trading on the reputation and goodwill associated with the USA
Sports VTX Trade Dress.
28.

In addition, USA Sports will be irreparably harmed and damaged by the

continuation of such unauthorized use and does not have adequate remedies at law.

COUNT III
Trademark and Trade Dress Infringement under Texas Common Law
40.

The allegations in the preceding paragraphs of this Complaint are hereby restated

and incorporated by reference.


41.

Onnits conduct and actions set forth above constitute

trademark and trade dress infringement in violation of the common law of Texas.
42.

As a result of such infringement, USA Sports has suffered damages in the form of

lost sales and lost profits and USA Sports has suffered injury to its goodwill and business reputation
symbolized by the USA Sports VTX Trade Dress.
43.

Further, as a result of such infringement, Onnit has made unjust profits and ill-

gotten gains from the sale of its goods by trading on the reputation and goodwill associated with the
VTX Trade Dress.
44.

In addition, USA Sports will be irreparably harmed and damaged by the

continuation of such unauthorized use. USA Sports complete remedies at law for the continuation
of such infringement are inadequate.
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COUNT IV
Unfair Competition under Texas Common Law
48.

The allegations in the preceding paragraphs of this Complaint are hereby restated

and incorporated by reference.


49.

Onnits conduct and actions set forth above constitute unfair competition in violation of

the common law of Texas.


50.

As a result of such unfair competition, USA Sports has suffered damages in the

form of lost sales and lost profits and USA Sports has suffered injury to its goodwill and business
reputation symbolized by the VTX Trade Dress.
51.

Further, as a result of such unfair competition, Onnit has made unjust profits and ill-gotten

gains from the sale of its goods by trading on the reputation and goodwill associated with the VTX
Trade Dress.
52.

In addition, USA Sports will be irreparably harmed and damaged by the

continuation of such unfair competition and does not have adequate remedies at law.

COUNT V
Unjust Enrichment under Texas Common Law
53.

The allegations in the preceding paragraphs of this Complaint are hereby restated

and incorporated herein.


54.

Onnits conduct and actions set forth above constitute

unjust enrichment under the common law of Texas.


55.

USA Sports is thus entitled to disgorgement of the unjust profits made by

Onnit.
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Case 1:15-cv-00125 Document 1 Filed 02/11/15 Page 9 of 10

PRAYER
WHEREFORE, USA Sports requests judgment against Onnit as follows:
1.

A preliminary and permanent injunction against the patent and trade dress infringement and

unfair competition in such form as the Court deems just;


2.

An award of Onnits profits for infringement of the VTX Trade Dress, increased as the

Court deems just;


3.

An award to USA Sports of damages for trade dress infringement and unfair competition,

increased to three fold as the Court deems just;


4.

An award to USA Sports of damages for patent infringement, including an award of profits

under 35 U.S.C. 289;


5.

An award of attorney fees based on a finding that this is an exceptional case pursuant to 15

U.S.C. 1117(a);
6.

An award of attorney fees and enhanced damages based on a finding that this is an

exceptional case pursuant to 15 U.S.C. 1117(a);


7.

That this case be declared exceptional under the patent laws and this Court award enhanced

damages under 35 U.S.C. 284; and attorney fees and costs under 35 U.S.C. 285 or other
applicable statute;
8.

An award of compensatory damages under the state law claims;

9.

An award of punitive damages under the state law claims;

10.

An award of Onnits unjust profits and ill-gotten gains under the unjust enrichment claim;

12.

An award of prejudgment interest and costs of the action; and

13.

Such other and further relief as the Court may deem just and proper

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Case 1:15-cv-00125 Document 1 Filed 02/11/15 Page 10 of 10

February 11, 2015

Respectfully submitted,
/s/ Robert J. McAughan, Jr.
Robert J. McAughan, Jr.
Attorney In Charge
TX State Bar No. 00786096
bmcaughan@smd-iplaw.com
David L. Terrell
TX. State Bar No. 24063030
dterrell@smd-iplaw.com
SUTTON MCAUGHAN DEAVER PLLC
Three Riverway, Suite 900
Houston, TX 77056
(713) 800-5700 (T)
(713) 800-5699 (F)
Attorneys for Plaintiff
USA Sports, Inc.

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Case 1:15-cv-00125 Document 1-1 Filed 02/11/15 Page 1 of 3


USO0D672416S

(12) United States Design Patent (10) Patent N0.:


Lien et a].
(54)

(75)

WALL BALL

Inventors: Louis Lien, Bellaire, TX (US); Naseer

4/2007 Ninomiya etal. .......... .. 473/374

D590,460 S

4/2009

2009/0062043 A1

.. D21/713

CH

29749-0001

CN

301201695

4 5/2010

EM

000595806-0003

* 12/2006

1014218

1/1984

2074108

8/1998

W0

(22)

Filed:

* Cited by examiner

(51)

LOC (9) Cl.

(52)

US. Cl. .................................................... .. D21/713

................................................ .. 21-02

(58)

Field of Classi?cation Search ....... .. D2l/707i7l4;

446/220e226; 473/569e577, 5934615, FOR.


1344FOR_ 167

See application ?le for complete search history.

8/2003

GB

Appl. No.. 29/416,902

Mar. 28, 2012

GB

(21)

13071297009

* 6/2009

Primary Examiner i Catherine Turtle

(74) Attorney] Agent] 0,, Firm i Osha Liang LLP

(57)

CLAIM

The ornamental design for a wall ball, as shown and

described

References Cited

DESCRIPTION

U_S_ PATENT DOCUMENTS

FIG. 1 is a front View of the wall ball showing our new design;

1,438,226 A *

1,669,198 A *
D270,851

Hirata et a1. ..... ..

3/2009 Welhngton Jr """""" " 473/604

FOREIGN PATENT DOCUMENTS

Ass1gnee: USA Sports, Inc., Houston, TX (US)

(56)

4* Dec. 11, 2012

7,201,670 B2*

Ahmed, Sialkot (PK)


_

(73)

US D672,416 S

(45) Date of Patent:

12/1922

Edwards ..................... .. 473/607

5/1928 Greer
10/1983

Feger

,,,,,,,,,,,

FIG. 2 is a right side View thereof, the left side View being
.d

1 h

.... .. 473/597

1 emlc? t ere/t0

, , , ,,

D21/713

FIG.31sabottomv1ew thereof; and,

FIG, 4 is a top View thereof.

D306,470 S *

3/1990 Norman et a1. ..

D21/713

133571958 S :

5;1995 Alalcllero, Jr~ ~ ~ ~ ~ ~ ~

~ ~ ~ ~~ 1321713

The broken lines are included for the purpose of illustrating

'''"

portions of the wall ball that form no part of the claimed

gills ' ' ' ' ' ' ' '

D452,721 S *

1/2002 Sonntag

D21/713

D510,113 S *

9/2005 Kelly

D21/713

D533,239 S * 12/2006 Yang .......................... .. D2l/7l3

deslgn'
1 Claim, 2 Drawing Sheets

Case 1:15-cv-00125 Document 1-1 Filed 02/11/15 Page 2 of 3

US. Patent

Dec. 11,2012

Sheet 1 of2

US D672,416 S

Case 1:15-cv-00125 Document 1-1 Filed 02/11/15 Page 3 of 3

US. Patent

Dec. 11,2012

Sheet 2 of2

US D672,416 S

Case 1:15-cv-00125 Document 1-2 Filed 02/11/15 Page 1 of 2

CIVIL COVER SHEET

(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS

DEFENDANTS

(b)

(EXCEPT IN U.S. PLAINTIFF CASES)

(c)

(IN U.S. PLAINTIFF CASES ONLY)

(If Known)

(Firm Name, Address, and Telephone Number)


- -

II. BASIS OF JURISDICTION (Place an X in One Box Only)

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff


(For Diversity Cases Only)
PTF

and One Box for Defendant)


PTF
DEF

DEF

(U.S. Government Not a Party)

or

and
(Indicate Citizenship of Parties in Item III)

IV. NATURE OF SUIT (Place an X in One Box Only)


CONTRACT

TORTS
PERSONAL INJURY

FORFEITURE/PENALTY

BANKRUPTCY

PERSONAL INJURY

PROPERTY RIGHTS

LABOR

SOCIAL SECURITY

PERSONAL PROPERTY

REAL PROPERTY

CIVIL RIGHTS

PRISONER PETITIONS
Habeas Corpus:

FEDERAL TAX SUITS

IMMIGRATION
Other:

V. ORIGIN (Place an X in One Box Only)


(specify)
(Do not cite jurisdictional statutes unless diversity)

VI. CAUSE OF ACTION

- - -

VII. REQUESTED IN
COMPLAINT:
VIII. RELATED CASE(S)
IF ANY

FOR OFFICE USE ONLY

CLASS ACTION

DEMAND $
JURY DEMAND:

(See instructions):

OTHER STATUTES

Case 1:15-cv-00125 Document 1-2 Filed 02/11/15 Page 2 of 2


INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44

I.(a)

Plaintiffs-Defendants.

(b)

County of Residence.

(c)

Attorneys.

II.

Jurisdiction.

; NOTE: federal question actions take precedence over diversity

cases.
III.

Residence (citizenship) of Principal Parties.

IV.

Nature of Suit.

V.

Origin.

VI.

Cause of Action.
statutes unless diversity.

VII.

Requested in Complaint.

VIII. Related Cases.

Date and Attorney Signature.

Do not cite jurisdictional