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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 1 of 21 Page ID #:1
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`VERSO LAW GROUP LLP
`
`GREGORY S. GILCHRIST (Cal. Bar No. 111536)
`AMY SHAHAN PARIGI (Cal. Bar No. 261948)
`RYAN BRICKER (Cal. Bar No. 269100)
`PAYMANEH PARHAMI (Cal. Bar No. 335604)
`209 Kearny Street, Third Floor
`San Francisco, California 94108
`Telephone: (415) 534-0495
`Facsimile:
`(270) 518-5974
`Email:
`greg.gilchrist@versolaw.com
`
`amy.parigi@versolaw.com
`
`ryan.bricker@versolaw.com
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`paymaneh.parhami@versolaw.com
`
`Attorneys for Plaintiff
`PATAGONIA, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION – LOS ANGELES
`
`PATAGONIA, INC.,
`Case No. 2: 22-cv-07311
`
`
`COMPLAINT FOR TRADEMARK
`Plaintiff,
`INFRINGEMENT, UNFAIR
`
`COMPETITION, DILUTION,
`v.
`COPYRIGHT INFRINGEMENT
`
`WALMART INC. and ROBIN RUTH
`
`USA,
`
`JURY TRIAL DEMAND
`
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`
`
`Defendants.
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`This lawsuit is necessary to stop Defendants from copying Patagonia’s
`famous logo and using the mark to sell their t-shirts in Walmart stores. Robin Ruth
`USA (“Robin Ruth”) is a retailer and supplier for Walmart Inc. (“Walmart”), with a
`focus on casual fashion. Robin Ruth has produced and sold apparel bearing nearly
`identical copies of Patagonia’s P-6 Trout logo and artwork, replacing Patagonia’s
`PATAGONIA trademark with the word “Montana.” Walmart has purchased and
`resold those copycat products in several retail stores. An example of Defendants’
`infringing product follows:
`/ / /
`
`COMPLAINT
`CASE NO. 2:22-cv-07311
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`To stop this infringement of Patagonia’s iconic trademark and prevent further
`damage to Patagonia and its brand, Patagonia alleges as follows:
`PARTIES, JURISDICTION, AND VENUE
`1.
`Patagonia, Inc. (“Patagonia”) is a California corporation headquartered
`at 259 West Santa Clara Street, Ventura, California 93001. Patagonia has been
`designing, developing, marketing, and selling outdoor apparel, accessories, and
`active sportswear for nearly fifty years. Patagonia’s PATAGONIA brand and P-6
`logo are famous in the United States and around the world, and instantly recognized
`by consumers as a symbol of innovative apparel designs, quality products, and
`environmental and corporate responsibility.
`2.
`Defendant Walmart Inc. is a Delaware corporation headquartered at
`702 S.W. 8th St. Bentonville, Arkansas, AK 72716. Walmart operates general retail
`stores throughout the country and a marketplace online at www.walmart.com (which
`
`COMPLAINT
`CASE NO. 2:22-cv-07311
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`also promotes and sells lines of California-specific products, including at
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`www.walmart.com/c/kp/california-t-shirts). Walmart boasted of nearly $560 billion
`in sales and over 2 million employees in 2021. Walmart offers, promotes, and sells
`products that infringe Patagonia’s intellectual property rights through its retail
`stores.
`3.
`Defendant Robin Ruth USA is a corporation with places of business
`located at 1410 Broadway Rm 508, New York, NY 10018; 14627 167th St Ste 201,
`Jamaica, NY 11434-5214; and 383 5th Ave., Floor 3, New York, NY 10016 (the
`third of these addresses is used for returns, including, on information and belief, of
`the infringing products identified in this Complaint).
`
`Robin Ruth USA sells its products throughout the country and through a
`marketplace online at www.robinruthstore.com (which also promotes and sells lines
`of California-specific products, including at
`https://www.robinruthstore.com/collections/california). Robin Ruth USA offers,
`promotes, and sells products that infringe Patagonia’s intellectual property rights.
`4.
`Patagonia’s trademark claims arise under the Trademark Act of 1946
`(the Lanham Act), as amended by the Trademark Dilution Revision Act of 2006
`(15 U.S.C. §§ 1051, et seq.). Patagonia’s claims for copyright infringement arise
`from Defendants’ infringement of Patagonia’s exclusive rights under the United
`States Copyright Act (17 U.S.C. §§ 101, et seq.). This Court has jurisdiction over
`such claims pursuant to 28 U.S.C. §§ 1338(a) and 1338(b) (trademark and unfair
`competition), 17 U.S.C. § 501 (copyright), 28 U.S.C. § 1331 (federal question), and
`15 U.S.C. § 1121 (Lanham Act). This Court has jurisdiction over the state law
`claims under 28 U.S.C. § 1367 (supplemental jurisdiction) and 28 U.S.C. § 1332
`(diversity).
`
`COMPLAINT
`CASE NO. 2:22-cv-07311
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`5.
`This Court has personal jurisdiction over Defendants because
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`Defendants have purposefully availed themselves of the privilege of doing business
`in this district. Through the sale of the infringing products identified in this lawsuit,
`Defendants have directed their conduct into this district, including by individually
`targeting Patagonia, a corporation they know has its principal place of business in
`this district. Further, Defendants sell lines of product into California that
`specifically are aimed at California residents, rendering each of them at home in this
`state.
`6.
`Venue is proper in this Court under 28 U.S.C. §§ 1391(b) and 1400(a)
`because Defendants infringe Patagonia’s intellectual property in this district,
`transact business in this district, and a substantial part of the events giving rise to the
`claims asserted arose in this district.
`
`FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
`Patagonia’s History
`7.
`Patagonia was founded in the late 1960s to design and sell climbing
`clothes and other active sportswear. The company adopted the brand
`“PATAGONIA” to differentiate a related business that designed and manufactured
`climbing gear and tools. PATAGONIA was chosen as the trademark to call to mind
`romantic visions of glaciers tumbling into fjords, jagged windswept peaks, gauchos,
`and condors. Since at least 1973, the PATAGONIA brand has appeared on a multi-
`colored label inspired by a silhouette of the jagged peaks of the Mt. Fitz Roy skyline
`(the “P-6 logo”).
`8.
`In the nearly-fifty years since Patagonia’s business started, the
`PATAGONIA brand and its P-6 logo have become among the most identifiable
`brands in the world. Patagonia’s products now include a wide range of apparel
`products and equipment, including T shirts, hoodies, sweatshirts, and fleece, as well
`as technical products designed for climbing, skiing and snowboarding, surfing, fly
`fishing, and trail running, which are sold around the world.
`
`COMPLAINT
`CASE NO. 2:22-cv-07311
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 5 of 21 Page ID #:5
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`9.
`Over the years, Patagonia has been recognized and honored for its
`
`business initiatives, including receiving the Sustainable Business Counsel’s first
`“Lifetime Achievement Award.” In 1996, with an increased awareness of the
`dangers of pesticide use and synthetic fertilizers used in conventional cotton
`growing, Patagonia began the exclusive use of organically grown cotton and has
`continued that use for more than twenty years. It was a founding member of the
`Fair Labor Association®, which is an independent multi-stakeholder verification and
`training organization that audits apparel factories. Additionally, since 1985
`Patagonia has pledged 1% of sales to environmental groups to preserve and restore
`our natural environment, donating more than $100 million to date. In 2002,
`Patagonia’s founder, Yvon Chouinard, along with others, created a non-profit called
`1% For the Planet® to encourage other businesses to do the same. Today, more
`than 1,200 member companies have donated more than $150 million to more than
`3,300 nonprofits through 1% For the Planet. In 2012, Patagonia became one of
`California’s first registered Benefit Corporations, ensuring Patagonia could codify
`into its corporate charter consideration of its workers, community, and the
`environment. In 2016, Patagonia pledged to donate all revenue from sales on Black
`Friday, donating $10 million to environmental grantees in response to customers’
`purchases on that day. In 2018, Patagonia pledged an additional $10 million in
`grants to environmental groups in response to recent tax cuts given to businesses.
`Over the course of two weeks in December 2019, Patagonia matched another $10
`million in donations to environmental and other grassroots organizations.
`Patagonia’s Trademarks
`10. Patagonia owns numerous registrations for its distinctive P-6 logo and
`PATAGONIA trademark, covering a wide-ranging assortment of products. Among
`these are the following U.S. trademark registrations:
`/ / /
`/ / /
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`COMPLAINT
`CASE NO. 2:22-cv-07311
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`Trademark
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`PATAGONIA
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`COMPLAINT
`CASE NO. 2:22-cv-07311
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`Reg. No. /
`Reg. Date
`1189402 /
`Feb. 9, 1982
`
`1294523 /
`Sept. 11, 1984
`
`1547469 /
`July 11, 1989
`
`1775623 /
`June 8, 1993
`
`4500490 /
`March 15,
`2014
`
`4773290 /
`July 14, 2015
`
`Goods
`Men’s and Women’s
`Clothing-Namely, Sweaters,
`Rugby Shirts, Walking
`Shorts, Trousers, Jackets,
`Mittens, Hoods and Rainwear
`Men’s, Women’s and
`Children’s Clothing-Namely,
`Jackets, Pants, Vests, Gloves,
`Pullovers, Cardigans, Socks,
`Sweaters, Underwear, Shirts,
`Shorts, Skirts and Belts
`
`Men’s, Women’s and
`Children’s Clothing- Namely,
`Jackets, Pants, Shirts,
`Sweaters, Vests, Skirts,
`Underwear Tops and
`Bottoms, Socks, Gloves,
`Mittens, Hats, Face Masks,
`Balaclava, Gaiters,
`Suspenders, and Belts
`Luggage back packs, and all-
`purpose sports bags
`
`Date of
`First
`Use
`08/1974
`
`08/1974-
`1981
`
`08/1974-
`1981
`
`08/1988
`
`Shirts, pants, shorts.
`
`01/2012
`
`Backpacks; luggage, namely,
`duffel bags, sling bags, hip
`packs, waist bags, and
`daypacks; Water-repellent
`and waterproof fishing packs
`in the nature of packs that are
`specially adapted for fishing
`equipment, namely,
`backpacks, daypacks, duffel
`bags, sling bags, hip packs,
`waist bags, and gear bags in
`
`01/2014
`
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 7 of 21 Page ID #:7
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`Goods
`the nature of fishing reel
`bags, fishing tackle bags, and
`sportsman's fishing bags in
`nature of duffel bags.
`Luggage, back packs, fanny
`packs and all-purpose sport
`bags, footwear, ski bags and
`ski gloves
`Computerized on-line
`ordering activities in the field
`of clothing and accessories;
`Providing information in the
`field of technical clothing and
`accessories for use in
`recreational, sporting and
`leisure activities; providing
`information in the field of
`existing and evolving
`environmental issues
`On-line retail store and mail
`order services featuring
`technical clothing, footwear,
`and accessories; Computer
`services in the nature of on-
`line information related to the
`environment and clothing
`Retail store services featuring
`clothing, footwear, luggage
`and a wide variety of sporting
`goods and accessories
`Reusable bottles sold empty;
`insulated containers for food
`or beverage for domestic use;
`cups, mugs and growlers
`Stickers; paper banners;
`fiction and non-fiction books
`on a variety of topics;
`posters; non-magnetically
`encoded gift cards;
`photographs
`
`Date of
`First
`Use
`
`08/1990
`
`10/1995
`
`10/1995
`
`06/1986
`
`09/2014
`
`12/1991
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`- 7 -
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`Trademark
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`
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`Reg. No. /
`Reg. Date
`
`1811334 /
`Dec. 14, 1993
`
`2260188 /
`July 13, 1999
`
`2392685 /
`Oct. 10, 2000
`
`2662619 /
`Dec. 17, 2002
`
`5491401 /
`June 12, 2018
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`5561006 /
`Sept. 11, 2018
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`PATAGONIA
`
`PATAGONIA
`
`PATAGONIA.COM
`
`PATAGONIA
`
`PATAGONIA
`
`PATAGONIA
`
` / /
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`COMPLAINT
`CASE NO. 2:22-cv-07311
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`These registrations for the PATAGONIA mark and logos are in full force and effect.
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`The registrations have become incontestable under 15 U.S.C. § 1065. A color
`image of the P-6 logo follows:
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`Collectively, these marks, Patagonia’s other registered trademarks, and its common
`law marks are referred to as the “PATAGONIA trademarks.” Patagonia also owns a
`registered copyright (Registration No. VA 1-801-788) for the P-6 logo.
`11. The PATAGONIA trademarks are distinctive, arbitrary and fanciful,
`entitled to the broadest scope of protection, and certain of the PATAGONIA
`trademarks are registered worldwide.
`12. For many years prior to the events giving rise to this Complaint and
`continuing to the present, Patagonia annually has spent enormous amounts of time,
`money, and effort advertising and promoting the products on which its PATAGONIA
`trademarks are used. PATAGONIA brand products are advertised in a variety of
`contexts and media, including in print and on the Internet. In addition to advertising
`by Patagonia, the PATAGONIA trademarks are also advertised and promoted and
`presented at point of sale by numerous retailers. Consumers, accordingly, are
`exposed to the PATAGONIA trademarks in a wide range of shopping and post-sale
`contexts.
`13. Patagonia has sold its PATAGONIA brand products all over the world,
`including throughout the United States and California. Through its promotion and
`investment in its brand and extensive sales, publicity, awards, and leadership in
`sustainable sourcing practices, Patagonia has acquired enormous goodwill in its
`
`COMPLAINT
`CASE NO. 2:22-cv-07311
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`PATAGONIA trademarks. The PATAGONIA trademarks are famous within the
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`meaning of the Trademark Dilution Revision Act, enjoy strong consumer
`recognition, and are recognized around the world and throughout the United States
`by consumers as signifying high quality products made by a responsible company.
`Defendants’ Infringement of Patagonia’s Rights
`14.
`In blatant disregard of Patagonia’s rights in the PATAGONIA
`trademarks—and without authorization from Patagonia—Defendants have
`promoted, offered for sale, and sold shirts bearing designs and logos that are nearly
`identical to the P-6 Trout logo and P-6 logo, only replacing Patagonia’s
`PATAGONIA word mark with the word “Montana,” which inevitably will imply to
`consumers that Patagonia has endorsed or authorized these products. These designs
`and logos, and the products bearing them, are referred to as Defendants’ “Infringing
`Designs.”
`15. The Infringing Designs are substantially similar to the P-6 logo
`artwork, and nearly identical to the registered P-6 Trout logo and P-6 logo
`trademarks. Defendants’ products bearing the Infringing Designs are identical to
`and compete directly with goods sold by Patagonia, including shirts.
`16. Defendants’ use of the Infringing Designs has caused or will cause a
`likelihood of confusion among consumers regarding the source of Defendants’
`products, and whether Patagonia has sponsored, licensed, authorized, or is somehow
`affiliated with the Defendants or each of them.
`17. Defendants began using the Infringing Designs long after the
`PATAGONIA trademarks became famous. The Infringing Designs have caused or
`are likely to cause dilution of Patagonia’s famous and distinctive marks by
`diminishing their distinctiveness and singular association with Patagonia. Patagonia
`has no alternative but to protect its goodwill and famous trademark by obtaining an
`injunction against Defendants’ further use of the derivative trademark and designs.
`/ / /
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`COMPLAINT
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`18. Patagonia is informed and believes that Defendants have marketed and
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`sold substantial quantities of products bearing the Infringing Designs, and have
`profited and continue to profit from such sales. There is no doubt that Defendants’
`conduct has been willful. Defendants adopted a mark and logo that copies the
`PATAGONIA trademarks as part of their own branding.
`19. Defendants’ actions have caused and will cause Patagonia irreparable
`harm for which money damages and other remedies are inadequate. Unless
`Defendants are restrained by this Court, Defendants will continue expanding their
`illegal activities and otherwise continue to cause irreparable damage and injury to
`Patagonia by, among other things:
`
`a.
`Depriving Patagonia of its statutory rights to use and control
`use of its trademark;
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`b.
`Creating a likelihood of confusion, mistake, and deception
`among consumers and the trade as to the source of the infringing products;
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`c.
`Causing the public falsely to associate Patagonia with
`Defendants and/or their products;
`d.
`Causing the public falsely to believe Patagonia has collaborated
`with Defendants, entered a co-branding relationship with Defendants, or is otherwise
`associated with Defendants and/or their products;
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`e.
`Causing incalculable and irreparable damage to Patagonia’s
`goodwill and diluting the capacity of its famous PATAGONIA trademarks to
`differentiate its products from those of its competitors;
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`f.
`Causing incalculable and irreparable damage to Patagonia’s
`licensing and collaboration programs, and to Patagonia’s ability to control its
`brand partnerships and to associate itself with entities who are specifically
`aligned to Patagonia’s company mission; and
`g.
`Causing Patagonia to lose sales of its genuine PATAGONIA
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`products.
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`COMPLAINT
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`20. Accordingly, in addition to other relief, Patagonia is entitled to
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`injunctive relief against Defendants.
`FIRST CLAIM
`FEDERAL TRADEMARK INFRINGEMENT
`(15 U.S.C. §§ 1114-1117)
`21. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 20 of this Complaint.
`22. Defendants have used, in connection with the sale, offering for sale,
`distribution, or advertising of their products bearing the Infringing Designs, words
`and symbols that infringe upon Patagonia’s PATAGONIA trademarks.
`23. These acts of trademark infringement have been committed with the
`intent to cause confusion, mistake, or deception, and are in violation of 15 U.S.C.
`§ 1114. Defendants’ willfulness is displayed not only in the near identity of the
`infringements, but in their decisions to persist in infringements after receiving cease
`and desist correspondence from Patagonia.
`24. As a direct and proximate result of Defendants’ conduct, Patagonia is
`entitled to recover up to treble the amount of Defendants’ unlawful profits and
`Patagonia’s damages and an award of attorneys’ fees under 15 U.S.C. § 1117(a).
`25. Patagonia is entitled to injunctive relief pursuant to 15 U.S.C. § 1116(a)
`that requires Defendants to stop use of the Infringing Designs, and any other mark
`or design similar to the PATAGONIA trademarks.
`SECOND CLAIM
`FEDERAL UNFAIR COMPETITION
`(False Designation of Origin and False Description – 15 U.S.C. § 1125(a))
`26. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 25 of this Complaint.
`27. Defendants’ conduct as alleged in this Complaint constitutes the use of
`symbols or devices tending falsely to describe the infringing products, within the
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 12 of 21 Page ID #:12
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`meaning of 15 U.S.C. § 1125(a)(1). Defendants’ conduct is likely to cause
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`confusion, mistake, or deception by or in the public as to the affiliation, connection,
`association, origin, sponsorship, or approval of the infringing products to the
`detriment of Patagonia and in violation of 15 U.S.C. § 1125(a)(1).
`28. As a direct and proximate result of Defendants’ conduct, Patagonia is
`entitled to recover up to treble the amount of Defendants’ unlawful profits and
`Patagonia’s damages, and an award of attorneys’ fees under 15 U.S.C. § 1117(a).
`29. Patagonia is entitled to injunctive relief pursuant to 15 U.S.C. § 1116(a)
`that requires Defendants to stop use of the Infringing Designs, and any other mark
`or design similar to the PATAGONIA trademarks.
`THIRD CLAIM
`FEDERAL DILUTION OF FAMOUS MARK
`(Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c))
`30. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 29 of this Complaint.
`31. Patagonia’s PATAGONIA trademarks (including the P-6 logo) are
`distinctive and famous within the meaning of the Trademark Dilution Revision Act
`of 2006, 15 U.S.C. § 1125(c), and were famous prior to Defendants’ adoption of the
`copycat Infringing Designs.
`32. Defendants’ conduct is likely to cause dilution of Patagonia’s
`PATAGONIA trademark by diminishing its distinctiveness in violation of the
`Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c).
`33. As a direct and proximate result of Defendants’ conduct, Patagonia is
`entitled to recover up to treble the amount of Defendants’ unlawful profits and
`Patagonia’s damages, and an award of attorney’s fees under 15 U.S.C. §§ 1116(a),
`1117(a), and 1125(c).
`34. Patagonia is entitled to injunctive relief pursuant to 15 U.S.C.
`§§ 1116(a) and 1125(c) that requires Defendants to stop use of the Infringing
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 13 of 21 Page ID #:13
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`Designs, and any other mark or design similar to the PATAGONIA trademarks.
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`FOURTH CLAIM
`FEDERAL COPYRIGHT INFRINGEMENT
`(17 U.S.C. §§ 101, et seq., and 17 U.S.C. §§ 501, et seq.)
`35. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 34 of this Complaint.
`36. Patagonia owns the copyright in its P-6 logo, which is federally
`registered and was registered prior to Defendants’ copying.
`37. Defendants have copied, advertised, offered for sale, and/or sold
`substantially similar copies of the P-6 logo without Patagonia’s authorization or
`permission and in violation of Patagonia’s exclusive rights in its copyright.
`38. Defendants’ unlawful reproduction, advertisement, distribution, and/or
`sale of Patagonia’s proprietary design constitutes copyright infringement. Patagonia
`alleges that Defendants acted intentionally and in bad faith when they reproduced
`Patagonia’s copyrighted work (in identical or substantially similar form), and
`advertised, distributed, displayed, and/or sold products bearing the Infringing
`Designs.
`39. Defendants’ infringement alleged herein has caused and, if not
`enjoined, will continue to cause Patagonia to suffer irreparable harm for which there
`is no adequate remedy at law, and has also caused damage to Patagonia in an
`amount which cannot be accurately computed at this time but will be proven at trial.
`40. As a direct and proximate result of Defendants’ conduct, Patagonia is
`entitled to injunctive relief, as well as actual damages and any profits earned by
`Defendants as a result of their infringements, or statutory damages of up to
`$150,000 for each work infringed, at Patagonia’s election, pursuant to 17 U.S.C. §
`504.
`/ / /
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 14 of 21 Page ID #:14
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`/FIFTH CLAIM
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`TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`UNDER CALIFORNIA STATUTORY LAW
`(Cal. Bus. & Prof. Code §§ 14200 et seq.; Cal. Bus. & Prof. Code § 17200 et
`seq.)
`41. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 40 of this Complaint.
`42. Patagonia is the owner of numerous registrations for the PATAGONIA
`trademarks, as well as common law rights in those marks.
`43. Defendants are using a design that infringes upon Patagonia’s
`PATAGONIA trademarks without the consent of Patagonia and in connection with
`the sale, offering for sale, distribution, or advertising of its products bearing the
`Defendants’ Designs.
`44. Defendants’ infringement of Patagonia’s PATAGONIA trademarks is
`likely to cause confusion, mistake, and deception as to the source of the origin of
`Defendants’ offerings.
`45. Defendants use the Infringing Designs to enhance the commercial value
`of Defendants’ offerings.
`46. Defendants’ acts violate Patagonia’s trademark rights under California
`Business & Professions Code §§14245 et seq.
`47. Defendants’ conduct as alleged in this Complaint also constitutes
`“unlawful, unfair or fraudulent business act[s] or practice[s] and unfair, deceptive,
`untrue or misleading advertising” within the meaning of California Business &
`Professions Code §§ 17200 et seq.
`48. Patagonia is entitled to monetary damages and injunctive relief
`prohibiting Defendants from using the Infringing Designs, or any other mark or
`design that is likely to be confused with the PATAGONIA trademarks.
`/ / /
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 15 of 21 Page ID #:15
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`49. Without injunctive relief, Patagonia has no means by which to control
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`the continuing injury to its reputation and goodwill or that of its PATAGONIA
`trademarks. Patagonia has been and will continue to be irreparably harmed. No
`amount of money damages can adequately compensate Patagonia if it loses the
`ability to control its marks.
`50. Because Defendants’ actions have been committed willfully,
`maliciously, and intentionally, Patagonia is entitled to treble the amount of
`Defendants’ unlawful profits and Patagonia’s damages under California Business &
`Professions Code § 14250.
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`SIXTH CLAIM
`TRADEMARK DILUTION UNDER CALIFORNIA LAW
`(Cal. Bus. & Prof. Code § 14247)
`51. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 50 of this Complaint.
`52. Patagonia owns valid and protectable rights in its PATAGONIA
`trademarks (including the P-6 logo).
`53. The PATAGONIA trademarks—registered marks in the state of
`California—are distinctive and famous within the meaning of the California Model
`State Trademark Law, Cal. Bus. & Prof. Code § 14247, in that it is a household
`brand in California, and were famous prior to Defendants’ adoption of the Infringing
`Designs.
`54. Defendants’ acts are likely to dilute the distinctive quality of the
`PATAGONIA trademarks. Defendants’ acts therefore constitute trademark dilution
`under California Business & Professions Code § 14247, the analogous statutes of
`other states, and under California common law.
`55. Patagonia is entitled to monetary damages and injunctive relief
`prohibiting Defendants from using the Infringing Designs, and any other mark
`or design similar to the PATAGONIA trademarks. Without injunctive relief,
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 16 of 21 Page ID #:16
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`Patagonia has no means by which to control the continuing dilution of the
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`PATAGONIA trademarks. Patagonia has been and will continue to be irreparably
`harmed. No amount of money damages can adequately compensate Patagonia for
`such harm.
`56. Because Defendants’ actions have been committed willfully,
`maliciously, and intentionally, Patagonia is entitled to treble the amount of
`Defendants’ unlawful profits and Patagonia’s damages under California Business &
`Professions Code § 14250.
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`SEVENTH CLAIM
`TRADEMARK INFRINGEMENT UNDER CALIFORNIA COMMON LAW
`57. Patagonia realleges and incorporates by reference each of the
`allegations contained in paragraphs 1 through 56 of this Complaint.
`58. Patagonia owns valid and protectable rights in its PATAGONIA
`trademarks at common law.
`59. Defendants’ conduct is likely to cause confusion, to cause mistake, or
`to deceive as to the source of goods offered by Defendants, or as to affiliation,
`connection, association, sponsorship, or approval of such goods and services, and
`constitutes infringement of Patagonia’s PATAGONIA trademarks at common law.
`60. Defendants infringed Patagonia’s PATAGONIA trademarks with
`knowledge and intent to cause confusion, mistake, or deception.
`61. Defendants’ conduct is aggravated by that kind of willfulness, wanton-
`ness, malice, and conscious indifference to the rights and welfare of Patagonia for
`which California law allows the imposition of exemplary damages.
`62. As a direct and proximate result of Defendants’ activities, Patagonia
`has suffered substantial damage.
`63. Unless restrained and enjoined, the conduct of Defendants will further
`impair the value of the PATAGONIA trademarks and Patagonia’s business
`reputation and goodwill. Patagonia has no adequate remedy at law.
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`COMPLAINT
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`Case 2:22-cv-07311 Document 1 Filed 10/06/22 Page 17 of 21 Page ID #:17
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`64. Patagonia is entitled to monetary damages and injunctive relief
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`prohibiting Defendants from using the Defendants’ Designs, and any other mark or
`design similar to the PATAGONIA trademarks.
`65. Without injunctive relief, Patagonia has no means by which to control
`the continuing injury to its reputation and goodwill or that of its PATAGONIA
`trademarks. Patagonia has been and will continue to be irreparably harmed. No
`amount of money damages can adequately compensate Patagonia if it loses the
`ability to control its marks.
`66. Because Defendants’ actions have been committed willfully,
`maliciously, and intentionally, Patagonia is entitled to recover reasonable attorneys’
`fees and compensatory and punitive damages.
`PRAYER FOR JUDGMENT
`WHEREFORE, Patagonia prays that this Court grant it the following relief:
`1.
`Adjudge that Defendants have infringed the PATAGONIA trademarks
`in violation of Patagonia’s rights under 15 U.S.C. § 1114;
`2.
`Adjudge that Defendants have infringed the PATAGONIA trademarks
`in violation of California statutory law;
`3.
`Adjudge that Defendants have infringed Patagonia’s common law
`rights in the PATAGONIA trademarks;
`4.
`Adjudge that Defendants have competed unfairly with Patagonia in
`violation of Patagonia’s rights under 15 U.S.C. § 1125(a);
`5.
`Adjudge that Defendants have competed unfairly with Patagonia in
`violation of California statutory law;
`6.
`Adjudge that Defendants’ activi