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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.

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

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


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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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Second Amended Complaint


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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.

5.11 manufactures and sells tactical pants under the name

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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

Second Amended Complaint


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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.

17.

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.

5.11 manufactures and sells tactical pants under the name

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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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Second Amended Complaint


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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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21.

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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Second Amended Complaint


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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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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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Trade Dress as emanating from 5.11, (b) the public recognizes that products

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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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Second Amended Complaint


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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

Trade Dress as emanating from 5.11, (b) the public recognizes that products

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bearing the STATION GRIP GLOVES Trade Dress constitute high quality

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products that conform to the specifications created by 5.11, and (c) the

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STATION GRIP GLOVES Trade Dress has established strong secondary

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meaning and extensive goodwill.


30.

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

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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).
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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,

Second Amended Complaint


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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.

34.

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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35.

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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Second Amended Complaint


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

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.

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

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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.

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

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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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Second Amended Complaint


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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.

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

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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47.

5.11 repeats and re-alleges the allegations of paragraphs 146 of

this Complaint as if set forth fully herein.

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48.

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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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Second Amended Complaint


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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.
54.

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

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have derived and received, and will continue to derive and receive, gains,

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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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///

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By reason of Defendants actions,

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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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57.

this Complaint as if set forth fully herein.

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5.11 repeats and re-alleges the allegations of paragraphs 156 of

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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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Second Amended Complaint


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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.

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

have derived and received, and will continue to derive and receive, gains,

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

11

designation of origin, 5.11 has been damaged and is entitled to monetary relief

12

in an amount to be determined at trial.

13

63.

Due to Defendants actions, which constitute unfair competition

14

and false designation of origin, 5.11 has suffered and continues to suffer great

15

and irreparable injury, for which 5.11 has no adequate remedy at law.

16

64.

Pursuant to 15 U.S.C. 1117, 5.11 is entitled to damages for

17

Defendants acts constituting unfair competition and false designation of origin,

18

up to three times actual damages as fixed by this Court, and its reasonable

19

attorneys fees for the necessity of bringing this claim.

20

FOURTH CLAIM FOR RELIEF

21

(California Unfair Competition)

22
23
24
25
26

65.

5.11 repeats and re-alleges the allegations of paragraphs 164 of

this Complaint as if set forth fully herein.


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

27

infringement, and false designation of origin complained of herein constitute

28

unfair competition with 5.11 under the common law and statutory laws of the
- 14 -

Second Amended Complaint


3:14-cv-2952-JLS-WVG

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

State of California, particularly California Business & Professions Code

17200, et seq.

68.

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

have derived and received, and will continue to derive and receive, gains,

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

10

5.11 and have irreparably injured 5.11, and such irreparable injury will continue

11

unless Defendants are enjoined by this Court.

12
13

WHEREFORE, 5.11 prays for judgment in its favor against Defendants


for the following relief:
A.

14

That the Court find for 5.11 and against Defendants on 5.11s

15

claims of trademark infringement, trade dress infringement, false designation of

16

origin, and unfair competition complained of in this Complaint;


B.

17

That Defendants acts of trademark infringement, trade dress

18

infringement, false designation of origin, and unfair competition complained of

19

in this Complaint be deemed willful, that this be deemed an exceptional case,

20

and that 5.11 be entitled to enhanced damages;


C.

21

A preliminary and permanent injunction against Defendants and

22

their

respective

officers,

agents,

servants,

23

successors, and assigns, and all persons, firms, or corporations in active concert

24

or participation with Defendants, enjoining them from engaging in the following

25

activities and from assisting or inducing, directly or indirectly, others to engage

26

in the following activities:

27

///

28

///
- 15 -

employees,

representatives,

Second Amended Complaint


3:14-cv-2952-JLS-WVG

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 16 of 57

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,

5
6

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;

20
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

///

27

///

28

///
- 16 -

Second Amended Complaint


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Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 17 of 57

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 -

Second Amended Complaint


3:14-cv-2952-JLS-WVG

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 18 of 57

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,

KNOBBE, MARTENS, OLSON & BEAR, LLP

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
Attorneys for Plaintiff
5.11, INC.

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- 18 -

Second Amended Complaint


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Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 19 of 57

DEMAND FOR JURY TRIAL


Plaintiff 5.11, Inc. hereby demands a trial by jury on all issues so triable.

2
3
4

Respectfully submitted,

KNOBBE, MARTENS, OLSON & BEAR, LLP

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
Attorneys for Plaintiff
5.11, INC.

12
13
14
15
21879480

16
17
18
19
20
21
22
23
24
25
26
27
28
- 19 -

Second Amended Complaint


3:14-cv-2952-JLS-WVG

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 20 of 57

EXHIBIT A

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 21 of 57

EXHIBIT A
PAGE 1

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 22 of 57

EXHIBIT B

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 23 of 57

EXHIBIT B
TACTICAL PANTS Trade Dress

EXHIBIT B
PAGE 2

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 24 of 57

EXHIBIT B
PAGE 3

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 25 of 57

EXHIBIT B
PAGE 4

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

EXHIBIT B
PAGE 5

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 27 of 57

Front Knee

EXHIBIT B
PAGE 6

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 28 of 57

EXHIBIT B
PAGE 7

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 29 of 57

EXHIBIT C

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 30 of 57

EXHIBIT C
TACLITE JEAN-CUT PANTS Trade Dress

EXHIBIT C
PAGE 8

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 31 of 57

EXHIBIT C
PAGE 9

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 32 of 57

EXHIBIT C
PAGE 10

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 33 of 57

EXHIBIT C
PAGE 11

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 34 of 57

Back Knee

EXHIBIT C
PAGE 12

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 35 of 57

Front Knee

EXHIBIT C
PAGE 13

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 36 of 57

EXHIBIT D

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 37 of 57

EXHIBIT D
TRAVERSE PANTS Trade Dress

EXHIBIT D
PAGE 14

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 38 of 57

EXHIBIT D
PAGE 15

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 39 of 57


Front Knee

EXHIBIT D
PAGE 16

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 40 of 57

EXHIBIT D
PAGE 17

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 41 of 57

Hem

EXHIBIT D
PAGE 18

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EXHIBIT D
PAGE 19

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 43 of 57

EXHIBIT E

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 44 of 57

EXHIBIT E
TACTICAL SHIRT Trade Dress

EXHIBIT E
PAGE 20

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EXHIBIT F

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 46 of 57

EXHIBIT F
RUSH DELIVERY Trade Dress

EXHIBIT F
PAGE 21

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 47 of 57

EXHIBIT F
PAGE 22

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 48 of 57

EXHIBIT F
PAGE 23

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EXHIBIT G

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 50 of 57

EXHIBIT G
RANGE READY BAG Trade Dress

EXHIBIT G
PAGE 24

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 51 of 57

EXHIBIT G
PAGE 25

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 52 of 57

EXHIBIT G
PAGE 26

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EXHIBIT H

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 54 of 57

EXHIBIT H
RUSH 24 BACKPACK Trade Dress

EXHIBIT H
PAGE 27

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 55 of 57

EXHIBIT H
PAGE 28

Case 3:14-cv-02952-JLS-WVG Document 42 Filed 10/26/15 Page 56 of 57

EXHIBIT I

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

EXHIBIT I
STATION GRIP GLOVES Trade Dress

EXHIBIT I
PAGE 29