IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF GEORGIA

COLUMBUS DIVISION

DIGITAL CONCEALMENT )
SYSTEMS, LLC )
)
)
Plaintiff, )
) CIVIL ACTION FILE NO.
v. )
) 4-11-cv-21 (CDL)
________________
5.11, INC. )
)
Defendant. )

COMPLAINT FOR DECLARATORY RELIEF AND DAMAGES

Plaintiff, Digital Concealment Systems, LLC (hereinafter “DCS”) files this Complaint for

Declaratory Relief against defendant, 5.11, Inc. (hereinafter “5.11”) and alleges:

I. Nature of Case, Subject Matter Jurisdiction and Venue

1. This is an action for declaratory relief and damages stemming from 5.11’s

February 14, 2011 “cease and desist” letter, a true and correct copy of which letter is attached

hereto as Exhibit “A”. The 5.11 “cease and desist” letter relates to the “A-TAC” trademark used

by DCS in connection with its camouflage patterns and the licensing of same to third party

manufacturers and retailers. This Court has subject matter jurisdiction pursuant to 28 U.S.C.

§1338; 28 U.S.C. §§2201 and 2202; as well as 15 U.S.C. §1121 relating to trademark

infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. §1125 et

seq. The amount in controversy exceeds the sum or value of $75,000 exclusive of interest and

costs and there is diversity of citizenship among the parties. Accordingly jurisdiction is

appropriate herein.

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 2. Venue is proper in the District Court pursuant to 28 U.S.C. §1391 on either of the

following alternative grounds: (a) a substantial part of the events giving rise to the instant claim

for declaratory relief and subject matter thereof occurred in this District, including, without

limitation, that DCS received the “cease and desist” letter from 5.11 in this District, that counsel

for DCS received a copy of the “cease and desist” letter from 5.11 in this District, that DCS’s

principal place of business is located in this District, that DCS is a Georgia corporation [with its

registered agent located in this District], and that DCS adopted and commenced use of the

trademark that is the subject of the “cease and desist” letter in this District, and (b) 5.11 is subject

to personal jurisdiction in this District.

3. DCS is a limited liability company, organized and existing under the laws of the

State of Georgia, wherein DCS markets and advertises, and its licensees market, advertise and

sell, goods containing a DCS’s A-TACS camouflage pattern identified by the “A-TACS”

trademark that is the subject matter of 5.11’s “cease and desist” letter to DCS.

4. 5.11 is a corporation, organized and existing under the laws of the State of

California, with its principal place of business in Modesto, California. 5.11 and its licensees

and/or distributors are believed to sell boots and shoes in this District, directly, through

wholesale, retail and/or internet sales.

5. In its “cease and desist” letter to DCS, 5.11 demanded that DCS “(a) immediately

stop manufacturing, causing to be manufactured, advertising, promoting, marketing, distributing,

offering for sale, or selling uniforms, hats, shirts, boots, packs, gun slings or any other clothing,

accessories or products for law enforcement, the military, fire service, or public safety

professionals using the trademark A-TACS or any variation thereof; and (b) not again in the

future manufacture, cause to be manufactured, advertise, promote, market, distribute, offer for

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sale, or sell uniforms, hats, shirts, boots, packs, gun slings or other clothing, accessories or

products for law enforcement, the military, fire service, or public safety professionals using the

trademark A-TACS or any variation thereof.”

6. In its “cease and desist” letter to DCS, 5.11 states that “use by Digital

Concealment Systems and its licensees of a mark substantially similar to 5.11’s A.T.A.C.

trademark in association with tactical clothing, footwear, and accessories that directly compete

with 5.11’s tactical clothing, footwear, and accessories and are directed to the same consumers

for the same purposes through the same channels of trade will cause confusion, deception, or

mistake upon purchasers. As a result of the similarity of the marks and the use of those marks on

substantially identical products, purchasers will mistakenly believe that the tactical clothing,

footwear, and accessories co-branded with the ATACS trademark are in some manner related to,

associated with, approved by, or come from 5.11. This likelihood of confusion, deception or

mistake gives rise to liability for trademark infringement and unfair competition for Digital

Concealment Systems and its licensees.” The alleged violations for trademark infringement and

unfair competition will be discussed separately below.

7. In addition to the “cease and desist” letter sent to DCS on February 14, 2011, 5.11

also sent “cease and desist” letters to licensees of DCS, including, to DCS’s knowledge, Propper

International, Danner, Inc., Tactical Assault Gear, and Blue Force Gear. In said “cease and

desist” letters, 5.11 stated “the use of confusingly similar A-TACS trademark in competition

with 5.11 gives rise to liability for trademark infringement and unfair competition. [DCS

Licensee] should be aware that every party involved with the manufacture, distribution, or sale of

products bearing an infringing trademark may be liable for infringement and unfair competition.”

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 II. No Trademark Infringement of 5.11 Mark

8. In its “cease and desist” letters to DCS and its licensees, 5.11 contends that the

mark “A-TACS” owned by DCS is essentially confusingly similar to the mark “A.T.A.C.” owned

by 5.11.

9. Despite 5.11’s contention otherwise, the two marks are not confusingly similar.

10. In order for 5.11 to establish a case of trademark infringement, 5.11 must establish

that (i) “A.T.A.C.” is a valid, protectable trademark, (ii) 5.11 owns “A.T.A.C.” as a trademark,

and (iii) DCS’s mark is the same as or confusingly similar to the 5.11’s mark; and (iv) DCS’s use

of its confusingly similar mark was made without the consent of 5.11 in a manner that is likely to

cause confusion among ordinary users as to the source, sponsorship, affiliation, or approval of

the goods associated with such marks.

11. DCS acknowledges that 5.11 maintains a Federal registration for the mark

“A.T.A.C.”, evidenced by United States Federal Registration No. 3,173,444 for “footwear;

boots” in International Class 025.

12. DCS notes that when determining whether or not marks are the same or

substantially similar, they must be compared in their entirety. Due to the differences in spelling,

visual impression, phonetic pronunciation and associated goods and services, DCS maintains that

its mark is in no way “confusingly similar” with the mark owned by 5.11.

13. 5.11’s mark is visually different in that it contains periods intended to set off each

letter comprising the mark, has no hyphen and is made up of only four, not five, letters.

14. Phonetically, 5.11’s mark is significantly different in that it is not expressed as a

unitary name or word, but rather is pronounced by enunciating each letter making up the mark

(e.g. “ay-tee-ay-see”), just as 5.11’s name is pronounced “five-eleven”. On the other hand,

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DCS’s mark is pronounced as a blend of the letters incorporated therein (i.e. as a unitary name or

word), giving a significantly different phonetic pronunciation and resulting commercial

impression.

15. The goods and services offered under 5.11’s mark are associated with, and only

associated with, footwear and gloves, all of which are black or tan and, unlike the items produced

by DCS’s licensees, none of which contain now or in the past any camouflage patterns; although

5.11 has no Federal registration for the use of its mark in connection with gloves, which are also

only marketed and sold in black. After approximately six (6) years of use, 5.11 has only used its

mark in connection with footwear and gloves and has never associated any camouflage patterns

with its products.

16. The DCS mark is used in connection with the licensing of camouflage patterns

under Class 045, and DCS owns United States Federal Registration No. 3,815,288 for use in

connection with “licensing of intellectual property in the field of camouflage patterns” in Class

045, which application was filed on January 26, 2009, and was published for opposition from

May 12, 2009 through June 1, 2009. DCS has also filed applications for registration of its mark

in connection with (1) “automotive and vehicular accessories especially adapted to fit

automobiles, namely, seat covers, steering wheel covers, seatbelt shoulder pads, sun visors, sun

visor covers, sun visor CD holders, litter bags, rooftop cargo bags, vehicle and ATV covers” in

Class 012, which application was filed on February 27, 2009, received Serial No. 77/680485 and

was published for opposition from December 12, 2009 through January 11, 2010, and (2)

“tactical and assault shirts, jackets, T-shirts, tops, pants, caps, hats, boots; tactical assault vests”

in International Class 025, which application was filed on February 22, 2011, and received Serial

No. 85/248017. Notwithstanding the applications in classes other than Class 045, DCS requires

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its licensees to only use its mark as a source identifier for the A-TACS pattern and not as a

source identifier for the good containing the pattern.

17. Even if an association could be made between the DCS mark and the source of

goods containing the DCS patterns, it is well settled that the same or highly similar marks can be

used on different types of clothing items without creating a likelihood of confusion. See e.g., H.

Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp.l 483,228 U.S.P.Q. 814 (S.D.N.Y. 1986)

(ESPRIT on shoes was found to be strong enough to create confusion from use on shoes, but not

from use on wearing apparel); In re Shoe Works, Inc., 6 U.S.P.Q.2d 1890 (T.T.A.B. 1988) (no

likelihood of confusion between PALM BAY women’s shoes and PALM BAY shorts and pants).

If the use of the popular ESPRIT and PALM BAY marks on clothing did not create a likelihood

of confusion with the identical marks on shoes, one would logically conclude that the use of A-

TACS on clothing and accessories would not create confusion with 5.11’s shoes and gloves. See

also McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir. 1979) (no

likelihood of confusion between senior user’s DRIZZLER for men’s golf jackets and junior

user’s DRIZZLE for women’s overcoats and raincoats); A&H Sportswear, Inc. v. Victoria’s

Secret Stores, Inc., 166 F.3d 191, 49 U.S.P.Q.2d 1493 (3d Cir. 1999) (no likelihood of confusion

between senior MIRACLESUIT for swimwear versus junior MIRACLE BRA on lingerie).

18. As shown above, due to the differences in sound, visual comparison, commercial

impression and goods associated therewith, there is no likelihood of confusion between the DCS

trademark and the 5.11 trademark.

19. No other element essential to an actual infringement upon the 5.11 trademark

arises from DCS’s use of its trademark.

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 III. No Unfair Competition

20. In order to establish a claim for unfair competition, under the Lanham Act, 5.11

must show (1) DCS uses a word, name, symbol, device, or combination, (2) in interstate

commerce, (3) which is likely to cause confusion as to source, sponsorship or association.

21. As established above, DCS’s use of its marks are not likely to cause confusion as

to source, sponsorship, or association with 5.11 and its mark.

22. Because 5.11 cannot establish likelihood of confusion between the marks, no

claim for unfair competition as to the 5.11 trademark arises from DCS’s use of its trademark.

23. In fact, 5.11 is engaging in unfair competition by making unfounded, baseless

allegations of trademark infringement by its competitor without good cause and in bad faith, and

by sending “cease and desist” letters to DCS’s licensees without good cause and in bad faith.

24. As the result of 5.11’s unfounded, baseless allegations and acts of bad faith, DCS

has been forced to retain counsel and to bring this lawsuit.

IV. Doctrine of Laches and Equitable Estoppel

25. 5.11 is barred from making a claim of trademark infringement and unfair

competition under the Doctrine of Laches.

26. Upon information and belief, 5.11 has been fully aware of DCS’s trademark and

the use thereof in connection with camouflage patterns on clothing, boots, shirts, T-shirts, pants,

jackets, etc. since at least as early as January 2009. Specifically, 5.11 was exposed to the

A-TACS pattern and A-TACS mark at the 2009, 2010 and 2011 SHOT Shows in Las Vegas,

Nevada, and the A-TACS website has been up and in operation since October 8, 2009.

27. Although 5.11 has known of DCS’ A-TACS pattern and the A-TACS mark for at

least two (2) years, if not longer, 5.11 has remained silent and/or has negligently failed to assert

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any rights or claims for trademark infringement. DCS has taken significant steps to market and

promote its A-TACS pattern and the A-TACS mark and has entered into multiple license

agreements for third party use of the A-TACS pattern and the A-TACS mark in connection with

various goods and services without objection from 5.11. Additionally, various DCS licensees

have also taken steps to and have manufactured significant inventories of their products

containing the A-TACS pattern, with such pattern to be marketed under the A-TACS mark

without objection from 5.11.

28. Only now that DCS and its licensees are on the verge of introducing a substantial

amount of already manufactured and purchased products containing the A-TACS pattern and A-

TACS mark into the marketplace has 5.11 decided to assert any claims for trademark

infringement and unfair competition.

29. As a result of its intentional reticence or negligent failure to assert such rights,

5.11 is estopped under the Doctrine of Laches from raising any such issues of trademark

infringement or unfair competition.

V. Tortious Interference with Contractual Relations

30. 5.11 has tortiously interfered with the contractual and business relations between

DCS and its licensees.

31. In order to establish tortious interference with business and contractual relations, a

party must establish (1) the existence of a contract subject to interference, (2) willful and

intentional interference, (3) interference that approximately causes damage, and (4) actual

damage or loss.

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 32. DCS has entered into License Agreements between DCS and Propper

International, Danner, Inc., Tactical Assault Gear, and Blue Force Gear, establishing the

existence of contracts subject to interference.

33. A copy of 5.11’s misleading, inaccurate, unfounded and malicious “cease and

desist” letter to Propper International is attached hereto as Exhibit “B”, substantially similar

copies of which were also delivered to Danner, Inc., Tactical Assault Gear, and Blue Force Gear,

upon reasonable belief and suspicion of DCS, establishing willful and intentional interference.

34. As a result of 5.11’s misleading, inaccurate, unfounded and malicious “cease and

desist” letters to DCS’s licensees, DCS’s licensees have upon information and belief ceased or

significantly curtailed the production, marketing and sale of and/or delayed the production,

marketing and sale of products containing the DCS A-TACS pattern and the A-TACS mark.

35. The curtailing and/or delay of such production, marketing and sales have caused

and will continue to cause a reduction in the royalties to be derived by DCS from the licensing of

its patterns and marks.

VI. Defamation

36. As a result of 5.11’s misleading, inaccurate, unfounded and malicious “cease and

desist” letters delivered to DCS’s licensees, 5.11 has intentionally impuned and injured the

reputation of DCS and its trademark.

Count I

Declaratory Relief

37. DCS re-states and re-alleges paragraphs 1 through 35 above, and further alleges:

38. As a result of 5.11’s “cease and desist” letters to DCS and its licensees, an actual

case or controversy exists between the parties.

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 39. DCS has engaged the undersigned counsel to represent it in this matter for which

DCS is obligated to pay reasonable attorney’s fees and expenses.

40. DCS is being threatened with an action for damages, preliminary and permanent

injunctive relief, the destruction of products bearing DCS’s trademark, and enhanced damages

and payment of 5.11’s attorney’s fees. DCS is in need of, and entitled to, a judicial declaration of

each party’s respective rights and liabilities as they pertain to DCS’s use of its trademark.

Count II

Damages for Tortious Interference and Defamation

41. DCS re-states and re-alleges paragraphs 1 through 39 above, and further alleges:

42. DCS’s contractual and business relationships are being threatened by the

misleading, inaccurate and unfounded claims of 5.11, which have damaged and will cause

continuing damage to DCS.

43. Wherefore, DCS respectfully requests:

(1) Judgment in favor of DCS and against 5.11 declaring that:

(a) As shown above, any trademarks in use by DCS in connection with

its camouflage patterns on uniforms, hats, shirts, boots, packs, gun slings and any other clothing,

accessories or products for law enforcement, the military, fire service or public safety

professionals do not infringe upon 5.11’s trademarks in use in connection with footwear/boots

and/or gloves;

(b) As shown above and in the exhibits hereto, no claim for unfair

competition as to 5.11’s trademarks arises from DCS’s use of its trademark in connection with

uniforms, hats, shirts, boots, packs, gun slings, and any other clothing, accessories or products for

law enforcement, the military, fire service or public safety professionals;

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 (c) DCS is otherwise without liability to 5.11, or any of its licensees or

assigns, stemming from DCS’s use of its trademark in connection with the above-referenced

goods and services.

(2) An award for damages in the amount of no less than $200,000.00 due to

5.11’s tortious interference with DCS’ business and contractual relationships with its licensees;

(3) Damages in the amount of $100,000.00 in connection with the defamation

of DCS by 5.11;

(4) Injunctive relief requiring 5.11 to rescind any and all of its “cease and

desist” letters to DCS and to DCS licensee and requiring 5.11 to refrain from sending any such

letters to DCS and any of its licensees in the future;

(5) An award of costs against 5.11;

(6) An award of reasonable attorney’s fees against 5.11; and

(7) Any other relief the Court may deem just and appropriate.

Respectfully submitted this 1st day of March, 2011.

Page, Scrantom, Sprouse, Tucker

& Ford, P.C.

By: /S/ Travis C. Hargrove

Travis C. Hargrove
State Bar No. 141374
1111 Bay Avenue, Third Floor Attorneys for Plaintiff
P.O. Box 1199
Columbus, Georgia 31901
(706) 324-0251
tch@psstf.com

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