Cozy Comfort v. Bedabox - Complaint

Case 5:21-cv-01286 Document 1 Filed 07/30/21 Page 1 of 34 Page ID #:1
1 Amish A. Shah
California Bar No. 263181
2
ashah@messner.com
3 MESSNER REEVES LLP
10866 Wilshire Blvd., Ste. 800
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Los Angeles, California 90024
5 Telephone: (310) 909-7440
Facsimile: (310) 889-0896
6
7 Attorneys for Plaintiff Cozy Comfort

Company LLC
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10 UNITED STATES DISTRICT COURT

11 CENTRAL DISTRICT OF CALIFORNIA
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13 COZY COMFORT COMPANY LLC, Case No. _______________________

14 Plaintiff, COMPLAINT FOR PATENT
15 INFRINGEMENT, TRADE DRESS
v. INFRINGEMENT AND UNFAIR
16 COMPETITION
17
BEDABOX LLC,
18 Defendant. Demand for Jury Trial

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COMPLAINT AND DEMAND FOR JURY TRIAL
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Plaintiff COZY COMFORT COMPANY LLC (“Cozy Comfort” or
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3 “Plaintiff”), by and through its attorneys, for its Complaint against defendant
4 BEDABOX LLC (“Bedabox”) (the “Defendant”) alleges as follows:
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INTRODUCTION
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7 1. This action arises from Defendant’s importation, use and distribution,

8 inter alia, of products that directly imitate Plaintiff’s patented product design for a
9 hooded wearable blanket within the United States. The importation use and
10 distribution of such product(s), one of which is called “THE OODIE”, within the
11 United States infringe upon the intellectual property rights of Plaintiff. This illegal
12 practice will continue unless and until the Court puts an end to it.
13 2. By this action Plaintiff seeks permanent injunctive relief, money

14 damages, exemplary damages and attorneys’ fees arising from Defendant’s (i)
15 patent infringement under the Patent Act, 35 U.S.C. § 271; (ii) federal trade dress
16 infringement and unfair competition under the Lanham Act; (iii) common law trade
17 dress infringement and unfair competition under California law; and (iv) unjust
18 enrichment.
19 PARTIES
20 3. Plaintiff is a limited liability company formed under the laws of
21 Arizona with a principal place of business located in Scottsdale, Arizona.
22 4. Upon information and belief, Defendant Bedabox is a limited liability

23 company organized under the laws of Florida with a principal place of business in
24 Fort Lauderdale, Florida.
25 5. Upon information and belief, Defendant Bedabox is wholly owned by

26 ShipMonk, Inc., a privately-owned Delaware corporation.
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1 6. Upon information and belief, Defendant Bedabox does business under

2 the fictitious name “ShipMonk”. Defendant Bedabox does not do business under
3 any other fictitious name. For purposes of this Complaint, Bedabox d/b/a ShipMonk
4 will be referred to as Bedabox.
5 7. Upon information and belief, Defendant Bedabox is authorized to do

6 business in California where it has registered as a foreign LLC, and where it has
7 appointed a statutory agent.
8 8. Upon information and belief, Defendant Bedabox is a third-party

9 logistics and fulfillment company, providing to various retailers direct-to-customer
10 order fulfillment services.
11 9. Upon information and belief, Defendant Bedabox contracts with Davie

12 Clothing Pty. Ltd. (“Davie Clothing”), a limited liability company organized in
13 Australia and which has its principal place of business in Australia, to import, store,
14 pick, pack, and arrange for shipping via third party carriers THE OODIE, an
15 infringing good sold by Davie Clothing to Davie Clothing’s customers. Bedabox
16 also facilitates returns of Davie Clothing’s customers’ goods from customers
17 whereby Bedabox arranges for shipment, via a third-party carrier, of a returned good
18 from a customer to a Bedabox warehouse location, located in this District, where
19 Bedabox stores its Davie Clothing inventory.
20 10. Plaintiff is the owner of intellectual property in relation to its flagship

21 product, a hooded wearable blanket known as “THE COMFY”, as well as other
22 related and associated designs, products, and services.
23 JURISDICTION AND VENUE

24 11. This is an action for infringement against Defendant brought under the
25 Patent Act, 35 U.S.C. § 271 based upon Defendant’s unauthorized commercial
26 importation, storing, picking, packing, and arranging for shipping wearable blankets
27 which infringe upon United States (“U.S.”) Patent Numbers D859,788 and
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1 D905,380. Plaintiff also alleges infringement of trade dress protections afforded
2 under the Lanham Act, 15 U.S.C. §1051, et seq. and Unfair Competition under
3 federal and common law and afforded by the laws of the State of California.
4 12. This Court holds original jurisdiction over the subject matter of this
5 action pursuant to 28 U.S.C. §1331 (federal question jurisdiction); 28 U.S.C.
6 § 1338(b) (state claim of unfair competition joined with substantial and related
7 federal claim under trademark laws); 28 U.S.C. § 1367 (supplemental jurisdiction);
8 and the doctrines of ancillary and pendent jurisdiction.
9 13. This court has personal jurisdiction over Defendant because Defendant
10 conducts business throughout the United States, including within the state of
11 California, and has committed in this District the acts of patent and trade dress
12 infringement, and federal and state unfair competition, which have given rise to this
13 action.
14 14. Venue is proper in this District as Defendant has derived revenue from
15 its importation, use and distribution of THE OODIE to citizens within this District
16 and from its engagement in systematic and continuous business contacts within this
17 State. More specifically, according to Defendant’s Chief Financial Officer, Edward
18 Panella, the contract between Defendant and Davie Clothing called for Defendant to
19 (i) receive shipments of THE OODIE; (ii) provide storage facilities for THE OODIE
20 in Defendant’s warehousing facilities in San Bernardino, California; (iii) pick and
21 package THE OODIE from available inventory and arrange for delivery, via a third
22 party carrier, to Davie Clothing’s customers; and, (iv) facilitate any THE OODIE
23 returns from customers whereby a third party carrier would pick up THE OODIE to
24 be returned from those customers and delivered to a Defendant warehouse based in
25 San Bernardino, California. Defendant has and continues to have significant contact
26 with the state of California through its U.S. based website, distribution of THE
27 OODIE and other products throughout the U.S. through its California-based
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1 warehouse and has purposefully availed itself of California’s laws. Moreover, upon
2 information and belief, at least a portion of the records concerning the Defendant’s
3 contractual relationship with Davie Clothing are located or maintained in California.
4 Finally, upon information and belief, Defendant’s employees responsible for the
5 activities conducted by Defendant in connection with its relationship with Davie
6 Clothing reside in California.
8 BACKGROUND
9 15. THE COMFY was created by Brian Speciale and Michael Speciale
10 (collectively “the Speciales”) in April 2017. The Speciales are entrepreneurs who
11 are citizens of the State of Arizona.
12 16. THE COMFY is an oversized wearable item designed for cozy warmth.
13 THE COMFY features a hood, cuffs, large arm coverings, and covers the majority
14 of a person’s upper and lower body. THE COMFY is known for its high-quality
15 materials and construction, featuring a layer of fleece microfiber on one side and
16 thick sherpa-type material on the opposite layer. THE COMFY also features a large
17 front pocket designed to allow its wearer to insert his or her hands for comfort,
18 storage, or warmth. A logo of THE COMFY is featured on the lower left side
19 portion of this pocket. The product is sold in a variety of colors. A sample image of
20 the product appears below:
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17. In April 2017, to facilitate the development and distribution of THE
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COMFY, as well as the growth of the business developing around the product, the
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Speciales organized Plaintiff, an Arizona limited liability company.
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18. In May 2017, to solicit funds for its expanding business, Plaintiff,
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through the Speciales, auditioned for the nationally broadcast television show, Shark
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Tank. Shark Tank is a significantly popular and well-known reality show in which
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businesses and/or product owners showcase their ideas to a panel of investors,
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referred to on the show as “sharks.” The show is broadcast in the U.S. on the ABC
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network, is featured on the cable network CNBC, and is available on demand on
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Hulu and other streaming platforms. The show has won multiple Emmys for
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Outstanding Structured Reality Program. The format is significantly popular, with
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licensed versions of the show produced and broadcast in many countries around the
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world including Canada, Mexico, China, New Zealand, and Australia.
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1 19. After several rounds of successful auditions with the producers of

2 Shark Tank, the Speciales were approved to appear on the program to pitch and
3 feature THE COMFY on the 2017 end-of-the-year, holiday-themed episode of
4 Shark Tank.
5 20. On September 13, 2017, Plaintiff, as the assigned owner of the rights to
6 the design of THE COMFY, filed a patent application related to its designs, United
7 States Patent and Trademark Office (“USPTO”) Application No. 29/617,421. Two
8 years later, on September 17, 2019, that application matured into U.S. Patent No.
9 D859,788 (the “’788 Patent”). A true and correct copy of the ‘788 Patent is attached
10 hereto as Exhibit 1 and incorporated by reference.
11 21. On December 3, 2017, the episode of Shark Tank featuring THE

12 COMFY premiered in the U.S. On the episode, the Speciales discussed the potential
13 success of a business surrounding THE COMFY.
14 22. On the episode of Shark Tank, the Speciales displayed and discussed
15 several attributes of THE COMFY. This included the shape of the product, the
16 materials used in its construction (fleece and sherpa), the attached hood, the front
17 pocket, and the fit of THE COMFY over the arms and body.
18 23. On the episode, several “shark” panelists displayed significant

19 enthusiasm regarding the product. On air, two of the sharks proposed investing into
20 Plaintiff. Ultimately, Plaintiff agreed to a proposal from one of the show’s sharks to
21 invest into the business.
22 24. Immediately following the airing of the 2017 Shark Tank episode
23 featuring THE COMFY, interest in and exposure to THE COMFY skyrocketed.
24 The product was not only featured on a popular, nationally broadcast television
25 program, but there was substantial exposure of THE COMFY through initial orders,
26 positive online reviews, online video clips and social media postings.
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1 25. Plaintiff developed several other designs in addition to its original THE
2 COMFY. Plaintiff owns multiple U.S. Patents relating to its designs, as well as
3 multiple U.S. Trademark registrations and other common-law intellectual property
4 assets.
5 26. Plaintiff established and maintained a company website located at

6 https://thecomfy.com/, which since 2017 has displayed Plaintiff’s products, and
7 makes its products available for sale in the U.S. and throughout the world through
8 Amazon and other online and brick-and-mortar retailers.
9 27. Through its activities, Plaintiff established itself as an innovator and

10 leader in the wearable blankets market. In response to the success of THE COMFY,
11 online retailer Amazon created the new category of products on its platform(s)
12 labeled Wearable Blanket.
13 28. Cozy Comfort and its resellers have expended millions of dollars since
14 2017 advertising and promoting THE COMFY sold using Cozy Comfort’s Trade
15 Dress in the United States. Such advertising and promotion have been featured in
16 print and electronic media, over the Internet, and in a variety of other media. THE
17 COMFY has also been advertised, promoted, and sold by and through nationally
18 recognized retail establishments such as Costco, Bed Bath & Beyond, QVC, Sam’s
19 Club, Kohl’s, Target, and Kroger.
20 29. In addition to Shark Tank, THE COMFY featuring Cozy Comfort’s

21 Trade Dress had also been seen in streaming videos and numerous other television
22 programs viewed by many millions of Americans, such as Good Morning America.
23 THE COMFY has received extensive unsolicited media coverage and public
24 exposure from celebrities such as Lizzo, Jamie Lynn Spears, Selena Gomez, Cindy
25 Crawford, Kim Kardashian, and Kylie Jenner. In January of 2018, Plaintiff
26 produced and posted a video on THE COMFY that has received over 100 million
27 views.
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1 30. Cozy Comfort has achieved hundreds of millions of dollars of sales of

2 THE COMFY using Cozy Comfort’s Trade Dress. THE COMFY is currently the
3 best-selling wearable blanket in the United States.
4 31. THE COMFY brand and designs are recognized in the U.S. and
5 worldwide as the industry standard in hooded wearable blankets. The style of THE
6 COMFY has acquired distinctiveness within the market based upon worldwide sales
7 and exposure. Cozy Comfort’s Trade Dress has acquired distinctiveness by virtue
8 of extensive sales and adverting of THE COMFY featuring Cozy Comfort’s Trade
9 Dress, extensive consumer recognition of the Cozy Comfort’s Trade Dress, and
10 association of Cozy Comfort’s Trade Dress with THE COMFY.
11 32. Plaintiff’s ‘788 Patent protects “The ornamental design for an enlarged
12 over-garment with an elevated marsupial pocket, as shown and described.” The
13 issued patent features ten (10) Figures. Figure 1 of the ‘788 Patent illustrates a front
14 view of the invention as shown below:
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1 33. Figure 4 of the ‘788 Patent illustrates the invention without a person
2 wearing it:
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(Rotated clockwise by 90 degrees)
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34. Plaintiff is also the owner of U.S. Patent No. D905,380 (the “’380
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Patent”) entitled “Whole body blanket” issued December 22, 2020. A true and
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correct copy of this patent is attached hereto as Exhibit 2 and incorporated by
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reference.
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35. Figure 1 of the ‘380 Patent illustrates the invention with dotted lines
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indicating optional features.
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10 (Rotated clockwise by 90 degrees)

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36. Upon information and belief, Davie Clothing was organized as a
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limited liability company in Australia on November 1, 2018.
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37. Upon information and belief, Davie Clothing is the owner, distributor
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and/or manufacturer of the product known as “THE OODIE”, a product that Davie
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Clothing describes as a wearable blanket with sleeves. The product is sold in a
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variety of colors. A sample image of THE OODIE, taken from one if its websites,
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appears below:
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11 38. Upon information and belief, neither Davie Clothing, nor any of its
12 direct affiliates or parent companies, sold wearable blankets or any similar wearable
13 items, prior to December 2017.
14 39. Upon information and belief, Davie Clothing began displaying and
15 offering THE OODIE for sale from its company’s Australia-based website,
16 https://theoodie.com, in 2018. In describing THE OODIE, Davie Clothing’s website
17 stated that “We use ultra soft flannel fleece paired with warm sherpa fleece so you
18 don't have to worry about the cold. Some think it's a blanket. Some think it's a
19 hoodie. Either way we know your [sic] going to be cosiest in The Oodie.”
20 40. Upon information and belief, Davie Clothing initially shipped THE
21 OODIE only to customers within Australia and New Zealand. However, through
22 various means, including through agreement with and use of the services of
23 Defendant Bedabox, Davie Clothing began importing and/or shipping THE OODIE
24 to customers in other regions throughout the world, including the United States.
25 41. Davie Clothing has established websites throughout the world for
26 customers in various countries to purchase THE OODIE. This includes a website
27 dedicated to advertising and selling products to U.S.-based customers,
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1 https://us.theoodie.com/. Davie Clothing also owns domains to target customers
2 located in other countries including theoodie.co.uk, theoodie.co.no,
3 ca.theoodie.com, theoodie.de, jp.theoodie.com and theoodie.fr. Based upon
4 information and belief, these products are distributed to U.S. customers by
5 Defendant Bedabox.
6 42. Davie Clothing also sells THE OODIE to U.S.-based customers

7 through a storefront maintained on the U.S.-based Amazon.com platform. Products
8 displayed and listed for sale are intended to be shown to U.S.-based customers for
9 direct shipment of THE OODIE to addresses located within the United States.
10 43. On November 3, 2020, Davie Clothing filed an application with the

11 USPTO for trademark protection within the United States for a design mark
12 incorporating the term “The Oodie” in relation to the sale of “Wearable blankets in
13 the nature of blankets with sleeves.” Within its application, Davie Clothing attested
14 that it has sold such products in commerce within the United States since
15 November 2, 2018. This application presently remains pending with the USPTO. A
16 true and correct copy of the summary of the status of this application from the
17 Trademark Electronic Search System (TESS) of the USPTO is attached hereto as
18 Exhibit 3 and incorporated by reference.
19 44. THE OODIE is sold in a variety of colors and decorative designs.

20 However, the construction and design of THE OODIE is substantially the same as
21 those described in the ‘788 Patent, the ‘380 Patent, and within the trade dress of
22 THE COMFY.
23 45. Davie Clothing advertises THE OODIE as being designed after an

24 oversized “6XL Hoodie” also including a front pocket, elastic wrist cuffs, a waist
25 measurement of 193 centimeters [80 inches], front length of 76 centimeters [30
26 inches], and back length of 94 centimeters [37 inches].
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1 46. THE OODIE is substantially the same product as THE COMFY. A

2 side-by-side comparison between a display found on Defendant’s U.S. website,
3 us.theoodie.com, and Figure 1 from the ‘788 Patent exhibit the overwhelming
4 sameness:
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15 47. Additionally, promotional materials featured on social media accounts

16 controlled by Davie Clothing and/or its related entities further display the sameness
17 of THE OODIE to the intellectual property of Plaintiff. In the comparison below,
18 the image on the left appears on Davie Clothing’s Instagram page,
19 https://www.instagram.com/the_oodie/, and the image on the right is Figure 10 from
20 the ‘788 Patent.
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12 48. Images from Davie Clothing’s U.S. website further display the
13 sameness of THE OODIE to the intellectual property of Plaintiff. In the comparison
14 below, the image on the left appears on Defendant’s webpage at
15 us.theoodie.com/products/grey-oodie, and the image on the right is Figure 10 from
16 the ‘788 Patent.
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26 49. Plaintiff purchased sample products from Davie Clothing’s storefront
27 named “The Oodie” on the U.S. version of Amazon.com, and from Davie Clothing’s
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1 intellectual property owned by Plaintiff. Comparison of photographs of a sample
2 product purchased, and Figures 5 and 6 from the ‘380 Patent shows the following:
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50. The sample products purchased through Amazon.com were missing
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Registered Identification Number markings issued by the Federal Trade
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Commission. The Textile Fiber Products Identification Act, 15 U.S.C. §70, et. seq.
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requires that textile products be labeled with the name under which a seller of textile
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products does business. The regulations require that either the business name,
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1 registration identification number or trademark registered with the U.S. Patent and
2 Trademark Office appear on the label. Davie Clothing’s products do not display any
3 of the required identification marks on their labels. Upon further investigation,
4 Plaintiff discovered that Davie Clothing imports THE OODIE into the U.S. under
5 two different Harmonized Tariff Schedule codes, presumably to avoid paying the
6 appropriate duties.
7 51. The packaging from the sample product purchased by Plaintiff from
8 us.theoodie.com website bore markings that the product was shipped by
9 “ShipMonk”, a product service owned by Defendant Bedabox.
10 52. Defendant Bedabox maintains a website for its ShipMonk services at

11 https://www.shipmonk.com/. Defendant Bedabox advertises ShipMonk as a
12 scalable order fulfillment service for eCommerce businesses.
13 53. On the ShipMonk website, Defendant Bedabox describes the general

14 process by which ShipMonk services its customers at
15 https://www.shipmonk.com/how-it-works. Based upon information and belief,
16 ShipMonk enters into agreements with foreign-based companies that are seeking
17 shipping solutions for customers located in the United States. These foreign
18 companies list products for sale on the Internet. The foreign company then ships the
19 products from overseas to ShipMonk, located within the United States, based upon
20 negotiated rates. After receiving such products from overseas, ShipMonk
21 individually sorts and ships the products to U.S. addresses via discounted rates that
22 ShipMonk has negotiated with local carriers such as FedEx, UPS, DHL and the
23 United States Postal Service.
24 54. Upon information and belief, ShipMonk has direct access to

25 information from its foreign-based clients’ online selling accounts and gathers
26 information regarding each sale made. Upon information and belief, Defendant
27 Bedabox and Davie Clothing have an agreement through which Defendant Bedabox
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1 provides fulfillment services to U.S.-based customers who make purchases of THE
2 OODIE through Amazon.com, https://us.theoodie.com/, and/or other online
3 platforms.
4 55. Upon information and belief, Defendant Bedabox provides such

5 fulfillment services related to THE OODIE, from its San Bernardino, California
6 warehouse.
7 56. Through vast sales, promotion, and publicity surrounding THE

8 COMFY, Plaintiff has acquired distinctiveness in the look and feel of THE
9 COMFY. Plaintiff is an innovator in the wearable blanket industry, as recognized
10 by the USPTO through the issuance of multiple patents as well as its performance
11 within the market. Plaintiff has expended substantial sums in marketing and
12 advertising its products and enjoy a substantial share in the market for wearable
13 blankets in the United States.
14 57. Due to the extensive marketing, promotion, and sales of THE COMFY,
15 customers recognize Cozy Comfort’s Trade Dress of an oversized wearable blanket,
16 that has large arm coverings, a large hood, a sherpa lining, elastic wrist cuffs and a
17 large front pocket, and associate such features to signify the product is a genuine
18 Cozy Comfort’s THE COMFY.
19 58. The combination of elements comprising Cozy Comfort’s Trade Dress

20 is non-functional as each feature could be accomplished with different design
21 choices, without affecting cost or quality, to convey a different product that does not
22 embody the same, or confusingly similar, features that customers have come to
23 recognize as THE COMFY.
24 59. The Cozy Comfort Trademarks and Trade Dress are famous for
25 wearable blankets in the United States.
26 60. Plaintiff markets these features such that customers recognize such
27 features as THE COMFY Trade Dress. For example, on the packaging shown
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1 below, Plaintiff promotes Plaintiff promotes THE COMFY as: “A Wearable
2 Blanket” with “A Giant Hood,” “Large Arm Coverings,” “Seamless Rib-Knit
3 Cuffs,” “Giant Marsupial Pocket,” and “Lucious Sherpa Lining.”
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61. THE COMFY is sold in over 100 countries and through recognized
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retail establishments such as Costco, Bed Bath & Beyond, QVC, Sam’s Club,
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Kohl’s, Target, and Kroger. As a result of this exposure, consumers have come to
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recognize Cozy Comfort’s Trade Dress features through the promotion, sales, and
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publicity of THE COMFY.
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62. Consumers have grown to recognize THE COMFY and Plaintiff’s
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related products as the industry standard for wearable blankets and identify the
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unique shape of Plaintiff’s hooded wearable blankets as coming from a distinct
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source.
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1 63. Plaintiff’s Trade Dress is readily recognizable to consumers. Plaintiff

2 has received, and continues to receive, complaints from confused consumers who
3 purchase knock off goods that copy Plaintiff’s Trade Dress with the expectation that
4 they are buying a genuine THE COMFY.
5 64. Davie Clothing did not enter the market until it had seen the success of
6 THE COMFY. As a result, Davie Clothing and others were quick to enter the
7 market to flood the market space. Although Plaintiff developed and invested in
8 multiple intellectual property assets protecting THE COMFY, those assets took time
9 to mature from applications into published registrations and issued protectable
10 rights. Plaintiff is now in the position of having to enforce its rights against a
11 number of infringers. THE COMFY brand, and recognized trade dress, is so
12 successful it is now being counterfeited by pirates trying to capitalize on the
13 goodwill and reputation that Cozy Comfort created.
14 65. Davie Clothing is aware of the similarities between its product, THE
15 OODIE, and THE COMFY. Throughout its company websites, including within
16 multiple product listings featured on https://us.theoodie.com/, Defendant displays
17 the following graphic:
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1 66. In the graphic shown immediately above, the terms “Competition” and
2 “Competitors” are intended to refer directly to THE COMFY. THE COMFY
3 measures 85 centimeters [33.5 Inches] from the bottom of the front of the product to
4 the shoulder seam. THE COMFY predates the introduction of THE OODIE to the
5 market and the formation of Davie Clothing as an entity. THE COMFY is the
6 worldwide industry standard for hooded wearable blankets with millions of units
7 sold per year, including sales to Australia. Davie Clothing has knowingly and
8 willfully sold products which directly replicate the intellectual property of Plaintiff.
9 Under the direction of Davie Clothing, such products have been intentionally
10 marketed, offered for sale, imported, and sold to U.S.-based customers, in violation
11 of Plaintiff’s rights. Defendant Bedabox has imported and distributed such products
12 within the U.S.
13 67. In addition, the types of materials used to construct THE OODIE and
14 THE COMFY are substantially the same. THE COMFY is constituted of a fleece
15 microfiber layer and a sherpa layer. THE OODIE is advertised to be constituted of a
16 flannel fleece layer and sherpa layer. Both feature an oversized front pouch, hood,
17 and elastic cuffs.
18 68. A comparison below of advertising photographs from Amazon.com of

19 THE COMFY shown on the top, and THE OODIE shown on the bottom, highlights
20 the substantial similarity between the products.
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15 69. Davie Clothing has knowingly and intentionally replicated the look and
16 feel of THE COMFY to sell products from Australia. However, subsequent to the
17 expansion of the market within the United States and worldwide created directly by
18 Plaintiff, THE OODIE is now sold, imported, used, and distributed within the
19 United States in association with Defendant Bedabox in violation of Plaintiff’s U.S.
20 intellectual property rights.
21 70. On November 2, 2020, Plaintiff provided notice to Davie Clothing of

22 its infringing activities via a letter submitted to Davie Clothing and its attorneys
23 (“November 2nd Letter”). The letter particularly highlighted Defendants’
24 infringement of the ‘788 Patent and Plaintiff’s Trade Dress.
25 71. On November 25, 2020, Davie Clothing acknowledged receipt of and

26 responded to Plaintiff’s November 2nd Letter via a letter sent from its U.S.-based
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1 attorneys (“November 25th Letter”). Davie Clothing denied any wrongdoing and
2 stated that it would continue to offer THE OODIE for sale to U.S.-based customers.
3 72. On December 22, 2020, the ’380 Patent issued.

4 73. On December 24, 2020, Plaintiff submitted an additional letter to
5 attorneys for Davie Clothing (“December 24th Letter”). This letter responded to
6 several issues referenced in Defendant’s November 25th Letter and included
7 reference to infringement of Plaintiff’s newly-issued ‘380 Patent.
8 74. On January 17, 2021, Davie Clothing responded to Plaintiff’s

9 December 24th Letter stating that Davie Clothing’s activities did not infringe upon
10 any of Plaintiff’s intellectual property rights and that Davie Clothing intended to
11 continue to sell its products within the United States. Therefore, Davie Clothing,
12 through Defendant Bedabox, continues to offer for sale, sell, use and/or import
13 goods infringing upon the intellectual property rights of Plaintiff, despite explicit
14 demands of Plaintiff to stop.
15 75. Upon information and belief, Defendant Bedabox has known of the
16 existence of THE COMFY for years, likely since Davie Clothing’s inception as a
17 business. At the absolute latest, by March of 2021, Defendant was aware of the
18 existence of Plaintiff’s pre-existing U.S. patents and other intellectual property
19 rights. Notwithstanding, Defendant Bedabox has been willful in its disregard of
20 Plaintiff’s intellectual property rights without any reasonable basis for believing that
21 it has the right to import, use of, and/or distribute THE OODIE within the United
22 States.
23
24 FIRST CLAIM FOR RELIEF

25 (Infringement of The ‘788 Patent – 35 U.S.C. §271)
26 76. Plaintiff hereby incorporates and realleges paragraphs 1 through 75 as
27 if fully set forth herein.
28
{05372781 / 2} 25
1 77. Defendant, without authorization from Plaintiff, has imported, used

2 and/or distributed into the U.S., including within this District, a hooded wearable
3 blanket marketed as THE OODIE, having a design that infringes the ‘788 Patent.
4 78. By the foregoing acts, Defendant has directly infringed, infringed under
5 the doctrine of equivalents, contributorily infringed, and/or induced infringement of
6 the ‘788 Patent in violation of 35 U.S.C. § 271.
7 79. Upon information and belief, Defendant’s infringement has, and

8 continues to be, knowing, intentional and willful.
9 80. Defendant’s acts of infringement of the ‘788 Patent has caused, and
10 will continue to cause, Plaintiff damages for which Plaintiff is entitled to
11 compensation pursuant to 35 U.S.C. § 284 and/or 35 U.S.C. § 289.
12 81. Upon information and belief, Defendant has gained profits by virtue of
13 its infringement of the ‘788 Patent.
15 will continue to cause, Plaintiff immediate and irreparable harm unless such
16 infringing activities are enjoined by this Court pursuant to 35 U.S.C. § 283 as
17 Plaintiff has no adequate remedy at law.
18 83. The circumstances surrounding Defendant’s infringement are

19 exceptional and, therefore, Plaintiff is entitled to an award of attorneys’ fees
20 pursuant to 35 U.S.C. § 285.
21 SECOND CLAIM FOR RELIEF

22 (Infringement of The ‘380 Patent – 35 U.S.C. §271)
25 85. Defendant, without authorization from Plaintiff, has imported, used

26 and/or distributed into the U.S., including within this District, a hooded wearable
27 blanket marketed as THE OODIE, having a design that infringes the ‘380 Patent.
28
{05372781 / 2} 26
1 86. By the foregoing acts, Defendant has directly infringed, infringed under
2 the doctrine of equivalents, contributorily infringed, and/or induced infringement of
3 the ‘380 Patent in violation of 35 U.S.C. § 271.
4 87. Upon information and belief, Defendant’s infringement has, and

5 continues to be, knowing, intentional and willful.
7 will continue to cause, Plaintiff damages for which Plaintiff is entitled to
8 compensation pursuant to 35 U.S.C. § 284 and/or 35 U.S.C. § 289.
9 89. Upon information and belief, Defendant has gained profits by virtue of
10 its infringement of the ‘380 Patent.
12 will continue to cause, Plaintiff immediate and irreparable harm unless such
13 infringing activities are enjoined by this Court pursuant to 35 U.S.C. § 283 as
14 Plaintiff has no adequate remedy at law.
15 91. The circumstances surrounding Defendant’s infringement are

16 exceptional and, therefore, Plaintiff is entitled to an award of attorneys’ fees
17 pursuant to 35 U.S.C. § 285.
18 THIRD CLAIM FOR RELIEF

19 (Federal Trade Dress Infringement and Unfair Competition – 15 U.S.C.
20 §1125(a))
23 93. Defendant imports, uses and/or distributes in the U.S. products that
24 directly infringe Plaintiff’s Trade Dress in violation of § 43(a) of the Lanham Act,
25 15 U.S.C. § 1125(a). Plaintiff has actively marketed, promoted, and sold
26 continuously THE COMFY Trade Dress such that it has acquired secondary
27 meaning within the relevant market and among the U.S. public. Defendant has
28
{05372781 / 2} 27
1 profited off THE COMFY Trade Dress without the authorization of Plaintiff and
2 continues to trade off the goodwill created and maintained by Plaintiff in THE
3 COMFY Trade Dress.
4 94. Defendant’s unauthorized use of Plaintiff’s Trade Dress is likely to

5 deceive consumers as to the origin, source, sponsorship, or affiliation of Davie
6 Clothing’s goods and is likely to cause consumers to believe, contrary to fact, that
7 Davie Clothing’s goods are sold, authorized, endorsed, or sponsored by Plaintiff, or
8 that Davie Clothing and/or Defendant Bedabox is in some way affiliated with or
9 sponsored by Plaintiff.
10 95. Defendant’s unauthorized use in commerce of Plaintiff’s Trade Dress

11 as alleged herein constitutes use of a false designation of origin and misleading
12 description and representation of fact.
13 96. The foregoing use in commerce by Defendant of Plaintiff’s Trade

14 Dress has caused and/or is likely to cause confusion, or mistake, or to deceive
15 consumers as to the affiliation, connection, or association of Davie Clothing or
16 Defendant Bedabox with Plaintiff, or as to the origin, sponsorship, or approval of
17 Davie Clothing’s goods, or commercial activities by Plaintiff.
18 97. Defendant’s acts are willful and are intended to cause confusion,
19 mistake, or deception as to the affiliation, connection, or association of Defendant
20 with Plaintiff.
21 98. Defendant’s infringement of Plaintiff’s Trade Dress as aforesaid has

22 caused and is likely to continue to cause substantial injury to the public and to
23 Plaintiff, and Plaintiff is entitled to injunctive relief and its attorneys’ fees and costs
24 under §§ 32, 34, 35 and 36 of the United States Trademark Act, 15 U.S.C. §§ 1114,
25 1116, 1117 and 1118.
26 99. Defendant’s conduct as alleged herein constitutes unfair competition in

27 violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
28
{05372781 / 2} 28
1 100. Defendant’s conduct as alleged herein is causing immediate and

2 irreparable harm and injury to Plaintiff, and to its goodwill and reputation, and will
3 continue to both damage Plaintiff and confuse the public unless enjoined by this
4 court as Plaintiff has no adequate remedy at law.
5 101. Defendant has unlawfully and wrongfully derived income and profits
6 and have been unjustly enriched by the foregoing acts. Defendant’s acts have
7 caused, and unless enjoined will continue to cause, irreparable harm to Plaintiff for
8 which there is no adequate remedy at law.
9 102. Plaintiff is entitled to, among other relief, injunctive relief and an award
10 of actual damages, Defendant’s profits, enhanced damages and profits, reasonable
11 attorneys' fees, and costs of the action under Sections 34 and 35 of the Lanham Act,
12 15 U.S.C. §§ 1116, 1117, together with prejudgment and post-judgment interest.
13 FOURTH CLAIM FOR RELIEF

14 (Common Law Trade Dress Infringement and Unfair Competition)
17 104. Defendant imports, uses and/or distributes in the U.S. products that
18 directly infringe Plaintiff’s Trade Dress in violation of Plaintiff’s rights to THE
19 COMFY trade dress. Plaintiff has actively marketed, promoted, and sold
20 continuously THE COMFY Trade Dress such that it has acquired secondary
21 meaning within the relevant market and among the U.S. public. Defendant has used
22 THE COMFY Trade Dress without the authorization of Plaintiff and continues to
23 trade off the goodwill created and maintained by Plaintiff in THE COMFY Trade
24 Dress.
25 105. By virtue of Defendant’s foregoing acts Defendant has intentionally

26 caused a likelihood of confusion among the public and has unfairly competed with
27
28
{05372781 / 2} 29
1 Plaintiff in violation of the common law of the State of California and Plaintiff’s
2 rights to THE COMFY trade dress.
3 106. This claim for common law unfair competition arises under the
4 common law of the State of California.

7 consumers as to the affiliation, connection, or association of Davie Clothing with
8 Plaintiff, or as to the origin, sponsorship, or approval of Davie Clothing’s goods, or
9 commercial activities by Plaintiff.
10 108. Defendant’s acts are willful.

11 109. By reason of the foregoing, Plaintiff has sustained, and unless
12 Defendant is enjoined, will continue to sustain, injury and damage.
14 and has been unjustly enriched by the foregoing acts. Defendant’s acts have caused,
15 and unless enjoined will continue to cause, irreparable harm to Plaintiff for which
16 there is no adequate remedy at law.
19 attorneys' fees, and costs of the action, together with prejudgment and post-
20 judgment interest.
21 112. Because Defendant engaged in knowing, willful, and conscious

22 disregard for the rights of Plaintiff, Defendant is guilty of oppression, fraud, and
23 malice, entitling Plaintiff to an award of punitive damages.
24 FIFTH CLAIM FOR RELIEF

25 (California Trade Dress Infringement and Unfair Competition)
28
{05372781 / 2} 30
1 114. Plaintiff has actively marketed, promoted, and sold continuously THE
2 COMFY Trade Dress such that it has acquired secondary meaning within the
3 relevant market and among the U.S. public.
4 115. Cal. Bus. & Prof. Code § 17200, et seq., states that unfair competition
5 shall mean and include any “unlawful, unfair or fraudulent business act or practice.”
6 116. Defendant’s actions as alleged herein constitute unlawful business acts

7 and/or practices under Cal. Bus. & Prof. Code § 17200, et seq.
8 117. Defendant’s conduct constitutes unfair business acts and/or practices

9 because Defendant has knowingly and unfairly imported, used and/or distributed in
10 the U.S. products that directly infringe Plaintiff’s Trade Dress.
11 118. Further, Defendant has used THE COMFY Trade Dress without the
12 authorization of Plaintiff and continues to trade off the goodwill created and
13 maintained by Plaintiff in THE COMFY Trade Dress.
14 119. By virtue of Defendant’s foregoing acts Defendant has intentionally

15 caused a likelihood of confusion among the public and has unfairly competed with
16 Plaintiff in violation of the common law of the State of California and Cal. Bus. &
17 Prof. Code. § 17200.

20 consumers as to the affiliation, connection, or association of Davie Clothing with
21 Plaintiff, or as to the origin, sponsorship, or approval of Davie Clothing’s goods, or
22 commercial activities by Plaintiff.
23 121. Defendant’s acts are willful.

24 122. By reason of the foregoing, Plaintiff has sustained, and unless
25 Defendant is enjoined, will continue to sustain, injury and damage.
27 and has been unjustly enriched by the foregoing acts. Defendant’s acts have caused,
28
{05372781 / 2} 31
1 and unless enjoined will continue to cause, irreparable harm to Plaintiff for which
2 there is no adequate remedy at law.
5 attorneys’ fees, and costs of the action, together with prejudgment and post-
6 judgment interest.
7
FIFTH CLAIM FOR RELIEF
8
(Unjust Enrichment)
9
125. Plaintiff hereby incorporates and realleges paragraphs 1 through 124 as
10
if fully set forth herein.
11
126. As a result of the conduct alleged herein, Defendant has been unjustly
12
enriched to Plaintiff’s detriment. Plaintiff therefore seeks an accounting and
13
disgorgement of all ill-gotten gains and profits resulting from Defendant’s
14
inequitable activities.
15
16
DEMAND FOR JURY TRIAL
17
127. Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff respectfully
18
demands a jury trial of all issues triable to a jury in this action.
19
20
PRAYER FOR RELIEF
21
WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
22
A. A judgment and order adjudicating and declaring that Defendant has
23
infringed the ‘788 Patent;
24
B. A judgment and order adjudicating and declaring that Defendant has
25
infringed the ‘380 Patent;
26
C. A judgment and order adjudicating and declaring that Defendant has
27
engaged in unfair competition;
28
{05372781 / 2} 32
1 D. A judgment and order permanently enjoining Defendant, its employees,

2 agents, officers, directors, attorneys, successors, affiliates, subsidiaries,
3 and assigns, and all of those in active concert and participation with any
4 of the foregoing persons or entities from further infringement of the
5 ‘788 Patent, the ‘380 Patent and Plaintiff’s Trade Dress;
6 E. A judgment and order that Defendant must account and pay actual
7 damages (but no less than a reasonable royalty), to Plaintiff for
8 Defendant’s infringement of the ‘788 Patent, the ‘380 Patent and/or
9 Plaintiff’s Trade Dress;
10 F. A judgment and order awarding Plaintiff the total profits realized by
11 Defendant from its infringement of the ‘788 Patent and/or the ‘380
12 Patent pursuant to 35 U.S.C. § 289;
13 G. A judgment and order declaring Defendant has willfully infringed the
14 ‘788 Patent, the ‘380 Patent and/or Plaintiff’s Trade Dress;
15 H. A judgment and order awarding Plaintiff enhanced damages up to three
16 times any amount ordered under 35 U.S.C. § 284 and the amount found
17 as actual damages for Defendant’s trade dress infringement under 15
18 U.S.C. § 1117(a);
19 I. A judgment ordering an accounting for any infringing sales not
20 presented at trial and an award by the court of additional damages for
21 any such infringing sales;
22 J. A determination that this case is exceptional under 35 U.S.C. § 285;
23 K. A determination that this case is exceptional under 15 U.S.C. § 1117;
24 L. A judgment and order awarding Plaintiff its reasonable attorneys’ fees;
25 M. A judgment and order awarding Plaintiff its costs, expenses, and
26 interest, including pre-judgment and post-judgment, as provided for by
27 35 U.S.C. § 284 and 15 U.S.C. § 1117;
28
{05372781 / 2} 33
1 N. A judgment and order awarding pre-judgment and post-judgment

2 interest on each and every monetary award; and
3 O. Granting Plaintiff any such other and further relief as this Court deems
4 just and proper, or that Plaintiff may be entitled to as a matter of law or
5 equity.
6
7
DATED: July 30, 2021 MESSNER REEVES LLP
9
/s/ Amish A. Shah
10
Amish A. Shah
11 Attorneys for Plaintiff Cozy Comfort
Company LLC
12
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{05372781 / 2} 34
Case 5:21-cv-01286 Document 1-1 Filed 07/30/21 Page 1 of 11 Page ID #:35
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
2/12/2021 Case 5:21-cv-01286 DocumentTrademark
1-3 Filed 07/30/21
Electronic Page
Search System 2 of 2 Page ID #:60
(TESS)
United States Patent and Trademark Office
Home|Site Index|Search|FAQ|Glossary|Contacts|eBusiness|eBiz alerts|News
Trademarks > Trademark Electronic Search System (TESS)
TESS was last updated on Fri Feb 12 04:07:22 EST 2021
Logout Please logout when you are done to release system resources allocated for you.
Record 1 out of 1
( Use the "Back" button of the Internet Browser to return to
TESS)
Word Mark THE OODIE

Goods and IC 025. US 022 039. G & S: Wearable blankets in the nature of blankets with sleeves. FIRST USE: 20171220.
Services FIRST USE IN COMMERCE: 20181102
Mark Drawing
(5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Code
Serial
90236378
Number
Filing Date October 5, 2020
Current Basis 1A
Original
1A
Filing Basis
Owner (APPLICANT) DAVIE CLOTHING PTY LTD LIMITED LIABILITY COMPANY AUSTRALIA 80 Grove Ave Marleston
AUSTRALIA 5033
Attorney of
Lisa A. Dunner
Record
Description The color(s) black and blue is/are claimed as a feature of the mark. The mark consists of of the literal element
of Mark "the" in black above the literal element "oodie" in blue.
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead
LIVE
Indicator
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Cozy Comfort v. Bedabox - Complaint

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Cozy Comfort v. Bedabox - Complaint

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Case 5:21-cv-01286 Document 1 Filed 07/30/21 Page 1 of 34 Page ID #:1

7 Attorneys for Plaintiff Cozy Comfort

10 UNITED STATES DISTRICT COURT

13 COZY COMFORT COMPANY LLC, Case No. _______________________

18 Defendant. Demand for Jury Trial

4 BEDABOX LLC (“Bedabox”) (the “Defendant”) alleges as follows:

7 1. This action arises from Defendant’s importation, use and distribution,

13 2. By this action Plaintiff seeks permanent injunctive relief, money

22 4. Upon information and belief, Defendant Bedabox is a limited liability

24 Fort Lauderdale, Florida.

25 5. Upon information and belief, Defendant Bedabox is wholly owned by

1 6. Upon information and belief, Defendant Bedabox does business under

4 will be referred to as Bedabox.

5 7. Upon information and belief, Defendant Bedabox is authorized to do

7 appointed a statutory agent.

8 8. Upon information and belief, Defendant Bedabox is a third-party

10 order fulfillment services.

11 9. Upon information and belief, Defendant Bedabox contracts with Davie

15 infringing good sold by Davie Clothing to Davie Clothing’s customers. Bedabox

16 also facilitates returns of Davie Clothing’s customers’ goods from customers

18 from a customer to a Bedabox warehouse location, located in this District, where

19 Bedabox stores its Davie Clothing inventory.

20 10. Plaintiff is the owner of intellectual property in relation to its flagship

22 related and associated designs, products, and services.

23 JURISDICTION AND VENUE

1 D905,380. Plaintiff also alleges infringement of trade dress protections afforded

7 federal claim under trademark laws); 28 U.S.C. § 1367 (supplemental jurisdiction);

8 and the doctrines of ancillary and pendent jurisdiction.

17 State. More specifically, according to Defendant’s Chief Financial Officer, Edward

20 in Defendant’s warehousing facilities in San Bernardino, California; (iii) pick and

24 be returned from those customers and delivered to a Defendant warehouse based in

3 contractual relationship with Davie Clothing are located or maintained in California.

5 activities conducted by Defendant in connection with its relationship with Davie

6 Clothing reside in California.

11 are citizens of the State of Arizona.

20 the product appears below:

1 19. After several rounds of successful auditions with the producers of

3 feature THE COMFY on the 2017 end-of-the-year, holiday-themed episode of

10 hereto as Exhibit 1 and incorporated by reference.

11 21. On December 3, 2017, the episode of Shark Tank featuring THE

13 success of a business surrounding THE COMFY.

18 23. On the episode, several “shark” panelists displayed significant

21 invest into the business.

3 multiple U.S. Trademark registrations and other common-law intellectual property

5 26. Plaintiff established and maintained a company website located at

8 Amazon and other online and brick-and-mortar retailers.

9 27. Through its activities, Plaintiff established itself as an innovator and

12 labeled Wearable Blanket.

19 Club, Kohl’s, Target, and Kroger.

20 29. In addition to Shark Tank, THE COMFY featuring Cozy Comfort’s

22 programs viewed by many millions of Americans, such as Good Morning America.

25 Crawford, Kim Kardashian, and Kylie Jenner. In January of 2018, Plaintiff

1 30. Cozy Comfort has achieved hundreds of millions of dollars of sales of

3 best-selling wearable blanket in the United States.

10 association of Cozy Comfort’s Trade Dress with THE COMFY.

14 view of the invention as shown below:

10 (Rotated clockwise by 90 degrees)

13 items, prior to December 2017.

16 https://theoodie.com, in 2018. In describing THE OODIE, Davie Clothing’s website

27 dedicated to advertising and selling products to U.S.-based customers,

1 https://us.theoodie.com/. Davie Clothing also owns domains to target customers

2 located in other countries including theoodie.co.uk, theoodie.co.no,

3 ca.theoodie.com, theoodie.de, jp.theoodie.com and theoodie.fr. Based upon

4 information and belief, these products are distributed to U.S. customers by