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Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 1 of 30

Lisa M. Martens (SBN 195824)


martens@fr.com
Nancy L. Ly (SBN 284991)
ly@fr.com
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: (858) 678-5070
Facsimile: (858) 678-5099

Attorneys for Plaintiff TerriKelly, LLC

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IN THE UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF CALIFORNIA

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TERRIKELLY, LLC, a California limited


liability company,
Plaintiff,

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v.

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SKECHERS U.S.A., INC., a Delaware


corporation, and SKECHERS U.S.A.,
INC. II, a Delaware corporation,

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Defendants.

GPC DHB
Civil Action No. '15CV1086
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COMPLAINT FOR FEDERAL


TRADEMARK
INFRINGEMENT; FEDERAL
UNFAIR COMPETITION;
FALSE DESIGNATION OF
ORIGIN; COMMON LAW
TRADEMARK
INFRINGEMENT;
VIOLATION OF CAL. BUS. &
PROF. CODE 17200 et seq.;
AND UNJUST ENRICHMENT

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DEMAND FOR JURY TRIAL

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 2 of 30

Plaintiff, TerriKelly, LLC (TerriKelly) for its Complaint against

Defendants Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively,

Skechers) states and alleges as follows:

THE PARTIES

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1.

Plaintiff, TerriKelly is a limited liability company organized and

existing under the laws of the State of California, with its principal place of business

located at 1 Paume Lane, Palm Desert, CA 92260.

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2.

On information and belief, Skechers U.S.A., Inc. is a Delaware

corporation, with headquarters located at 228 Manhattan Beach Blvd., Manhattan

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Beach, CA 90266.
3.

On information and belief, Skechers U.S.A., Inc. II is also a Delaware

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corporation, with headquarters located at 228 Manhattan Beach Blvd., Manhattan

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Beach, CA 90266.

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4.

On information and belief, Skechers U.S.A., Inc. II is a subsidiary of

Skechers U.S.A., Inc.

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JURISDICTION AND VENUE

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5.

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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 3 of 30

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.

6.

This Court has personal jurisdiction over Skechers. Skechers has

purposely, continuously, and systematically conducted business in this district.

Skechers is registered to do business in the State of California and maintains 97 retail

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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Skechers has a continuous, systematic, and substantial presence within

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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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trademark infringement in this judicial district, including but not limited to

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advertising and marketing directly to consumers in this district, selling footwear

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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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8.

Venue is proper in this district under 28 U.S.C. 1391, as a substantial

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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TerriKelly is a small, start-up footwear company created by Terri Kelly,

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

branded them as yoga pants for your feet.

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Recognizing the importance of intellectual property rights, Ms. Kelly

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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Office (U.S.P.T.O.) at Registration No. 4,730,442 for use on flip-flops and

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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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Kelly. A copy of the certificate of registration and a trademark assignment cover

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sheet are attached hereto as Exhibit A.


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The federal trademark registration for the YOGA PANTS FOR YOUR

FEET mark is valid, subsisting, and in full force and effect.


12.

TerriKellys federal registration of the YOGA PANTS FOR YOUR

FEET mark provides benefits such as a statutory presumption of validity, ownership,


and an exclusive right to use the registered mark. The federal registration of the

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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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TerriKelly flip-flops are worn by women running errands, to and from

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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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sight-seeing. TerriKelly.com, the brands e-commerce website, features pictures

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uploaded by customers wearing their TerriKelly flip-flops at various locations

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around the world.

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TerriKelly flip-flops are also promoted nationwide through the

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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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received extensive unsolicited media attention as they were recently featured as an

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editors pick in LA Yoga Magazine.

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COMPLAINT

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 7 of 30

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TerriKelly flip flops are sold through the TerriKelly.com e-commerce

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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have enjoyed substantial success.


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TerriKelly has also actively promoted the flip-flops in connection with

the YOGA PANTS FOR YOUR FEET mark on various social media platforms

including Twitter, Instagram, and Facebook.

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As a result of TerriKellys widespread use of the YOGA PANTS FOR

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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19.

Skechers U.S.A., Inc. II is a footwear brand that is familiar with the

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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Skechers U.S.A., Inc. is a publicly traded footwear company with over

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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 footwear is marketed and sold in over 600 stores worldwide.

Skechers owns and operates over 300 retail stores in the United States alone.
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Skechers advertises and markets its footwear extensively on a variety

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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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 8 of 30

celebrities such as Brooke Burke-Charvet, Demi Lovato, Mark Cuban, and Ringo

Starr.

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23.

TerriKelly recently learned of a commercial being shown on television

and online promoting Skechers Stretch-Fit Glider shoe. Skechers commercial

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.

To date, upon information and belief, Skechers continues to run its

commercial on television and YouTube. Skechers commercial can be viewed on

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YouTube at https://www.youtube.com/watch?v=gwS1WqjeD4k.

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COMPLAINT

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In addition to its commercial, Skechers has also prominently used

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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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YOUR FEET mark in its advertising.

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COMPLAINT

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COMPLAINT

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COMPLAINT

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 12 of 30

25.

A simple search of the U.S.P.T.O. records on the date of Skechers

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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months before Skechers Facebook and Twitter posts.


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TerriKellys YOGA PANTS FOR YOUR FEET mark was unique until

Skechers began using the identical slogan.


27.

Skechers is a company with significant resources. Skechers most

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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It is apparent that Skechers devotes substantial resources towards its

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marketing and advertising campaigns, which includes engaging celebrities like

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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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29.

Skechers substantial resources afford Skechers the luxury of being able

to market its products through commercials, print advertisements, and billboards.

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TerriKelly, on the other hand, as a small start-up company cannot compete. As a

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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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is actually the owner of the slogan, when, in fact, it is TerriKelly.

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30.

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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 13 of 30

Skechers immediately cease all use of the mark. A copy of the cease and desist letter

is attached hereto as Exhibit B.

31.

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.
32.

Skechers is willfully using TerriKellys YOGA PANTS FOR YOUR

FEET mark in its advertising and marketing to promote its Stretch-Fit Glider shoe.
33.

Skechers willful and unauthorized use of TerriKellys YOGA PANTS

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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identical mark in commerce to advertise and market its footwear.

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FIRST CLAIM FOR RELIEF

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(Federal Trademark Infringement)

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(15 U.S.C. 1114)

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34.

TerriKelly repeats the allegations above as if fully set forth herein.

35.

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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connection with flip-flops and footwear.

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36.

TerriKelly has used the inherently distinctive YOGA PANTS FOR

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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37.

TerriKelly has spent significant time, money, and effort advertising and

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promoting its trademark in commerce as distinctive source identifier in connection

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with TerriKellys goods.


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COMPLAINT

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38.

As a result of such extensive and exclusive use and promotion of the

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.
39.

TerriKellys YOGA PANTS FOR YOUR FEET mark represents

valuable goodwill owned by TerriKelly.


40.

Skechers use of the YOGA PANTS FOR YOUR FEET mark in

connection with its footwear is without TerriKellys consent.


41.

Skechers unauthorized and infringing use of the YOGA PANTS FOR

YOUR FEET mark in connection with Skechers advertisement, promotion, offers

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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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Skechers unauthorized use of the YOGA PANTS FOR YOUR FEET

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mark is likely to cause confusion, mistake, and deception as to the source of the

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footwear and Skechers is unfairly benefitting from TerriKellys substantial efforts

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in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.

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44.

Due to Skechers unauthorized use of the YOGA PANTS FOR YOUR

FEET mark, TerriKelly has suffered and continues to suffer great and irreparable

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injury, for which TerriKelly has no adequate remedy at law.


45.

Skechers actions constitute willful infringement of the YOGA PANTS

FOR YOUR FEET mark in violation of 15 U.S.C. 1114(1).


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COMPLAINT

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46.

Skechers conduct has been willful and in bad faith making this an

exceptional case within the meaning of 15 U.S.C. 1117(a).


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Skechers is liable to TerriKelly for an amount representing the greater

of three times TerriKellys damages or Skechers illicit profits, as well as


TerriKellys costs and reasonable attorney fees.

SECOND CLAIM FOR RELIEF

(Federal Unfair Competition & False Designation of Origin)

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(15 U.S.C. 1125(a))


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TerriKelly repeats the allegations above as if fully set forth herein.

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Skechers unauthorized and infringing use of the YOGA PANTS FOR

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YOUR FEET mark in connection with Skechers advertisement, promotion, offers

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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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50.

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.
51.

Skechers unauthorized use of the YOGA PANTS FOR YOUR FEET

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mark is likely to cause confusion, mistake, and deception as to the source of the

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footwear and Skechers is unfairly benefitting from TerriKellys substantial efforts

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in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.
52.

Skechers has actual knowledge of TerriKellys ownership and prior use

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

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1125(a). Upon information and belief, this is an exceptional case within the meaning

of 15 U.S.C 1117.

53.

Skechers actions constitute a false designation of origin and unfair

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competition in violation of 15 U.S.C. 1125(a).


54.

Skechers, by its actions, has irreparably injured and damaged

TerriKelly. Such irreparable injury will continue unless Skechers is permanently

enjoined by this Court from further violation of TerriKellys rights, for which

TerriKelly has no adequate remedy at law.

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THIRD CLAIM FOR RELIEF

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(California Common Law Trademark Infringement)

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55.

TerriKelly repeats the allegations above as if fully set forth herein.

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56.

TerriKelly has a protectable interest in the YOGA PANTS FOR

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YOUR FEET mark.


57.

TerriKellys common law rights in its mark under California common law.

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Skechers acts complained of herein constitute infringement of

58.

TerriKelly seeks all damages to which it is entitled for Skechers

infringement in an amount to be determined by the Court.


59.

TerriKelly seeks injunctive relief to prevent the irreparable harm

Skechers infringement has caused and will continue to cause if not enjoined.

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FOURTH CLAIM FOR RELIEF

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(California Unfair Competition)

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(California Common Law and Cal. Bus. and Prof. Code 17200 et seq.)
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TerriKelly repeats the allegations above as if fully set forth herein.

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COMPLAINT

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61.

Skechers actions constitute unlawful and/or unfair business practices

in violation of California Business & Professions Code 17200 et seq.


62.

By virtue of the acts complained of herein, Skechers has intentionally

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caused a likelihood of confusion among the consumers and public, injured

TerriKellys business reputation, and has unfairly competed in violation of

California Business & Professions Code 17200 et seq.

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63.

Skechers is using a slogan that is identical to TerriKellys YOGA

PANTS FOR YOUR FEET mark and is likely to cause confusion.


64.

Skechers acts complained of herein constitute unlawful, unfair,

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malicious, or fraudulent business practices, which have injured and damaged


TerriKelly.
65.

Upon information and belief, the acts of Skechers were done

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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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66.

Skechers, by its actions, has irreparably injured and damaged

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TerriKelly. Such irreparable injury will continue unless Skechers is permanently

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enjoined by this Court from further violation of TerriKellys rights, for which

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TerriKelly has no adequate remedy at law.

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FIFTH CLAIM FOR RELIEF

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(Unjust Enrichment)

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67.

TerriKelly repeats the allegations above as if fully set forth herein.

68.

The acts of Skechers complained of herein constitute unjust

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enrichment as Skechers is benefitting from the valuable goodwill of TerriKellys

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YOGA PANTS FOR YOUR FEET mark at TerriKellys expense.


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COMPLAINT

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PRAYER FOR RELIEF


WHERFORE, TerriKelly respectfully requests the Court to award TerriKelly the
following relief:

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A.

That the Court render a final judgment in favor of TerriKelly and

against Skechers on all claims for relief herein;


B.

That Skechers be adjudged to have infringed TerriKellys rights in and

to its federally registered and common law YOGA PANTS FOR YOUR FEET mark;
C.

That the Court render a final judgment declaring Skechers has willfully

violated the provisions of 15 U.S.C. 1125(a) by infringing TerriKellys rights in

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the YOGA PANTS FOR YOUR FEET mark;


D.

That the Court render a final judgment declaring that Skechers has

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violated California Business & Professions Code 17200 et seq. by unfairly

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competing with TerriKelly and that Skechers actions were done willfully and

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knowingly;

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E.

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;
F.

That Skechers, its officers, principals, agents, servants, employees,

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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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service or otherwise, be forthwith permanently enjoined from:

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using the YOGA PANTS FOR YOUR FEET mark, or any other

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mark, symbol, or design that is confusingly similar to the YOGA

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PANTS FOR YOUR FEET mark on or in connection with its


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COMPLAINT

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footwear or any other goods, including but not limited to flip

flops;

2.

filing any applications for registration of any trademarks

confusingly similar to TerriKellys YOGA PANTS FOR YOUR

FEET mark;

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3.

falsely designating the origin of Skechers goods;

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unfairly competing with TerriKelly in any manner whatsoever;

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causing a likelihood of confusion or injury to TerriKellys

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business reputation; and

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6.

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manufacturing, using, displaying, distributing, or selling any


goods that infringe the YOGA PANTS FOR YOUR FEET mark;

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G.

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That Skechers be required to account to TerriKelly for any and all

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profits derived by Skechers and all damages sustained by TerriKelly by virtue of

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Skechers actions complained of herein;

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H.

That Skechers be ordered to pay over to TerriKelly all damages

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TerriKelly has sustained as a consequence of the acts complained of herein, subject


to proof at trial;
I.

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together with prejudgment and post-judgment interest;

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That TerriKelly be awarded damages pursuant to 15 U.S.C. 1117,

J.

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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increased by as many times as the Court deems appropriate, pursuant to 15 U.S.C.


1117;

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COMPLAINT

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K.

That an award of reasonable costs, expenses, and attorneys fees be

awarded to TerriKelly pursuant to 15 U.S.C. 1117; and


L.

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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Dated: May 13, 2015

By:

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/s/ Lisa M. Martens


Lisa M. Martens
Nancy L. Ly

Attorneys for Plaintiff TerriKelly, LLC

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COMPLAINT

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 21 of 30

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DEMAND FOR TRIAL BY JURY


Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff
TerriKelly hereby requests a trial by jury on all claims and issues so triable.

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Respectfully submitted,
FISH & RICHARDSON P.C.

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Dated:

May 13, 2015

By:

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/s/ Lisa M. Martens


Lisa M. Martens
Nancy L. Ly

Attorneys for Plaintiff TerriKelly, LLC

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COMPLAINT

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 22 of 30

TABLE OF EXHIBITS
Page #

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3

Exhibit A ..4

Exhibit B ..13

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COMPLAINT

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 23 of 30

EXHIBIT A

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 24 of 30

Exhibit A - Page 1

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 25 of 30

Exhibit A - Page 2

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 26 of 30


TRADEMARK ASSIGNMENT COVER SHEET
Electronic Version v1.1
Stylesheet Version v1.2
SUBMISSION TYPE:

NEW ASSIGNMENT

NATURE OF CONVEYANCE:

ASSIGNMENT OF THE ENTIRE INTEREST AND THE GOODWILL

CONVEYING PARTY DATA


Name

Formerly

Terri Kelly

Execution Date
05/07/2015

Entity Type
INDIVIDUAL:UNITED STATES

RECEIVING PARTY DATA


Name:

Terrikelly LLC

Street Address:

1 Pauma Lane

City:

Palm Desert

State/Country:

CALIFORNIA

Postal Code:

92260

Entity Type:

LIMITED LIABILITY COMPANY:CALIFORNIA

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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 27 of 30


ETAS ID:
Receipt Date:
Fee Amount:

TM340652
05/07/2015
$40

Exhibit A - Page 4

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 28 of 30

EXHIBIT B

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 29 of 30

March 25, 2015


Via email: mlerner@kleinberglerner.com
and Fax: 310.557.1540
Marshall A. Lerner
Kleinberg & Lerner, LLP
1875 Century Park E, Suite 1150
Los Angeles, CA 90067-2502
Re:

Sketchers USA Inc.s Infringement of the YOGA PANTS FOR YOUR FEET
Trademark

Dear Mr. Lerner:


This firm represents Terri Kelly of Palm Desert, CA in connection with trademark and other
matters. We are writing regarding your client, Sketchers USA Inc. IIs (Sketchers) unauthorized
use of the YOGA PANTS FOR YOUR FEET tagline in connection the companys television and
social media advertising campaign for Sketchers new STRETCH FIT womens shoes.
Our client, Terri Kelly, launched her footwear company back in November 2013 introducing her
own line of comfort flip flops under the TERRI KELLY trademark. With a focus on simplicity
and comfort, the TERRI KELLY line has quickly become the popular favorite casual footwear
amongst the yoga crowd and others. A few months later, the company began using the
tagline/trademark YOGA PANTS FOR YOUR FEET in connection with the TERRI KELLY
line of flip flops.
Ms. Kelly adopted the YOGA PANTS FOR YOUR FEET tagline and trademark in January
2014 and since then the company has actively promoted the trademark in connection with its
footwear on its website at www.terrikelly.com, Twitter, Instagram, Facebook and in other social
media. TERRI KELLY footwear is sold directly through the companys website as well as in
specialty boutiques around the country and online at Zulily and 11Maine. The products are
promoted nationwide via the Outdoor Retailers trade show in Salt Lake City, the Wanderlust
yoga festival in Squaw Valley, and at various fairs and festivals. TERRI KELLY flip flops were
also recently featured as an editors pick in LA Yoga Magazine. Ms. Kelly owns United States
trademark application serial number 86290872 for the YOGA PANTS FOR YOUR FEET
trademark covering footwear. The application was published for opposition on February 17,
2015 and we expect the registration to issue shortly.

Exhibit B - Page 1

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 30 of 30

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,

Jamie R. Shelden, Esq.


cc:

Terri Kelly

Jamie R. Shelden, Esq.


1760 Suite F, PMB 220, Airline Highway Hollister, CA 95023
858.777.5545 (office and fax) jamie@justtrademarks.com
Exhibit B - Page 2