Yoga Pants For Your Feet Trademark Complaint PDF

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 1 of 30
Lisa M. Martens (SBN 195824)

martens@fr.com
Nancy L. Ly (SBN 284991)
ly@fr.com
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: (858) 678-5070
Facsimile: (858) 678-5099
Attorneys for Plaintiff TerriKelly, LLC
2
3
4
7
8
9
IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
10
11
12
TERRIKELLY, LLC, a California limited

liability company,
Plaintiff,
13
14
v.
15
SKECHERS U.S.A., INC., a Delaware

corporation, and SKECHERS U.S.A.,
INC. II, a Delaware corporation,
16
17
18
19
Defendants.
GPC DHB
Civil Action No. '15CV1086
____________
COMPLAINT FOR FEDERAL

TRADEMARK
INFRINGEMENT; FEDERAL
UNFAIR COMPETITION;
FALSE DESIGNATION OF
ORIGIN; COMMON LAW
TRADEMARK
INFRINGEMENT;
VIOLATION OF CAL. BUS. &
PROF. CODE 17200 et seq.;
AND UNJUST ENRICHMENT
20
21
22
23
24
25
26
27
28
DEMAND FOR JURY TRIAL
Plaintiff, TerriKelly, LLC (TerriKelly) for its Complaint against
Defendants Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively,
Skechers) states and alleges as follows:
THE PARTIES
5
6
1.
Plaintiff, TerriKelly is a limited liability company organized and
existing under the laws of the State of California, with its principal place of business
located at 1 Paume Lane, Palm Desert, CA 92260.
9
10
2.
On information and belief, Skechers U.S.A., Inc. is a Delaware
corporation, with headquarters located at 228 Manhattan Beach Blvd., Manhattan
11
12
13
Beach, CA 90266.
3.
On information and belief, Skechers U.S.A., Inc. II is also a Delaware
14
corporation, with headquarters located at 228 Manhattan Beach Blvd., Manhattan
15
Beach, CA 90266.
16
17
4.
On information and belief, Skechers U.S.A., Inc. II is a subsidiary of
Skechers U.S.A., Inc.
18
JURISDICTION AND VENUE
19
20
5.
This Court has jurisdiction over the subject matter of this action
21
pursuant to 28 U.S.C. 1331 and 1338(a), as it arises under the trademark laws of
22
the United States. This Court also has subject matter jurisdiction over the claims in
23
this action that relate to trademark infringement, false designation of origin, and
24
federal unfair competition pursuant to sections 34(a) and 39(a) of the Lanham Act
25
26
and 15 U.S.C. 1116(a) and 1121(a), as these claims arise under the laws of the
27
United States. The Court has supplemental jurisdiction over the claims in this
28
Complaint which arise under state statutory and common law pursuant to 28 U.S.C.
2
COMPLAINT
1367(a) because the state law claims are so related to the federal claims that they
form part of the same case or controversy and derive from a common nucleus of
operative facts.
6.
This Court has personal jurisdiction over Skechers. Skechers has
purposely, continuously, and systematically conducted business in this district.
Skechers is registered to do business in the State of California and maintains 97 retail
and factory outlet store locations in California with eight store locations in the
Southern District of California.1 In its most recent Form 10-K filing, Skechers stated
10
that a significant portion of our net sales is derived from sales in California.
11
7.
12
Skechers has a continuous, systematic, and substantial presence within
13
this judicial district, including by selling and offering for sale products bearing/using
14
the infringing advertising tag line in this judicial district and by committing acts of
15
trademark infringement in this judicial district, including but not limited to
16
advertising and marketing directly to consumers in this district, selling footwear
17
directly to consumers and/or retailers in this district, and selling footwear into the
18
19
stream of commerce knowing such footwear products would be sold in this district.
20
These acts of Skechers form a substantial part of the events or omissions giving rise
21
to TerriKellys claim.
22
23
8.
Venue is proper in this district under 28 U.S.C. 1391, as a substantial
portion of the events giving rise to this action took place in this judicial district.
24
25
26
Skechers maintains six stores in San Diego County: one factory outlet store in
Carlsbad, one retail store in National City, and three factory outlet stores and one
28 retail store in San Diego. Skechers also maintains two stores in Imperial County:
one factory outlet store in Calexico and one factory outlet store in El Centro.
1
27
3
COMPLAINT
1
2
3
BACKGROUND ON TERRIKELLY
9.
TerriKelly is a small, start-up footwear company created by Terri Kelly,
an entrepreneurial mom of six children with a passion for comfort and yoga. Ms.
4
5
Kelly was not able to find a flip-flop with the same comfort and minimalistic style
of yoga wear, so she set out to create her own. Ms. Kelly developed a light weight
and amazingly comfortable flip-flop with a minimalist design. She created and
branded them as yoga pants for your feet.
9
10
10.
Recognizing the importance of intellectual property rights, Ms. Kelly
applied for, and now owns, a federal trademark registration for the YOGA PANTS
11
12
FOR YOUR FEET mark. The YOGA PANTS FOR YOUR FEET mark enjoys
13
registration on the Principal Register of the United States Patent and Trademark
14
Office (U.S.P.T.O.) at Registration No. 4,730,442 for use on flip-flops and
15
footwear. TerriKelly LLC, the plaintiff in this action, is the owner by assignment of
16
all rights, title, and interest in the YOGA PANTS FOR YOUR FEET mark from Ms.
17
Kelly. A copy of the certificate of registration and a trademark assignment cover
18
19
20
21
22
23
24
sheet are attached hereto as Exhibit A.

11.
The federal trademark registration for the YOGA PANTS FOR YOUR
FEET mark is valid, subsisting, and in full force and effect.

12.
TerriKellys federal registration of the YOGA PANTS FOR YOUR
FEET mark provides benefits such as a statutory presumption of validity, ownership,

and an exclusive right to use the registered mark. The federal registration of the
25
26
27
YOGA PANTS FOR YOUR FEET mark also serves as constructive notice of a
claim of ownership.
28
4
COMPLAINT
1
2
3
13.
Ms. Kelly realized that yoga pants for your feet was a unique and
perfect way to convey to consumers the comfort and minimalist design of her flipflops. Since at least as early as January 2014, she began to market her flip-flops by
4
5
6
using that unique slogan on the product packaging of the flip-flops, as well as on
the TerriKelly website, as shown below.
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
///
23
24
25
///
26
27
///
28
5
COMPLAINT
1
2
3
4
5
6
7
8
9
10
11
12
13
14
14.
TerriKelly flip-flops are worn by women running errands, to and from
15
16
yoga or the gym, and daily with their casual attire. Their durable design and high
17
level of comfort has also led customers to use TerriKelly flip-flops for travel and
18
sight-seeing. TerriKelly.com, the brands e-commerce website, features pictures
19
uploaded by customers wearing their TerriKelly flip-flops at various locations
20
around the world.
21
15.
TerriKelly flip-flops are also promoted nationwide through the
22
23
Outdoor Retailers trade show in Salt Lake City, the Wanderlust yoga festival in
24
Squaw Valley, and at various fairs and festivals. TerriKelly flip-flops have also
25
received extensive unsolicited media attention as they were recently featured as an
26
editors pick in LA Yoga Magazine.
27
28
6
COMPLAINT
1
2
3
16.
TerriKelly flip flops are sold through the TerriKelly.com e-commerce
website as well as through specialty boutiques around the country and online at
Zulily.com and 11Maine.com. In just over one year of sales, TerriKelly flip flops
4
5
6
have enjoyed substantial success.

17.
TerriKelly has also actively promoted the flip-flops in connection with
the YOGA PANTS FOR YOUR FEET mark on various social media platforms
including Twitter, Instagram, and Facebook.
9
10
18.
As a result of TerriKellys widespread use of the YOGA PANTS FOR
YOUR FEET mark in connection with flip-flops, the public recognizes and
11
12
13
associates the mark with TerriKelly, which has established extensive goodwill in the
slogan.
DEFENDANTS AND THEIR ACTIVITIES
14
15
16
17
19.
Skechers U.S.A., Inc. II is a footwear brand that is familiar with the
importance of trademark rights. To date, Skechers U.S.A., Inc. II owns nearly 300
live trademark applications and registrations with the U.S.P.T.O.
18
19
20.
Skechers U.S.A., Inc. is a publicly traded footwear company with over
20
2 billion dollars in net sales for 2014. Skechers footwear includes sandals, boots,
21
and athletic and casual sneakers and is marketed to women, men, and children.
22
23
24
21.
Skechers footwear is marketed and sold in over 600 stores worldwide.
Skechers owns and operates over 300 retail stores in the United States alone.
22.
Skechers advertises and markets its footwear extensively on a variety
25
26
27
of platforms such as social media, online, print, television, and trade shows.
Skechers also utilizes celebrity endorsements in its advertising campaign from
28
7
COMPLAINT
celebrities such as Brooke Burke-Charvet, Demi Lovato, Mark Cuban, and Ringo
Starr.
3
4
5
23.
TerriKelly recently learned of a commercial being shown on television
and online promoting Skechers Stretch-Fit Glider shoe. Skechers commercial
features celebrity and Dancing with the Stars Season 7 winner Brooke Burke-
Charvet and prominently uses TerriKellys YOGA PANTS FOR YOUR FEET mark
to promote its new shoe in the commercial. Skechers also uses the YOGA PANTS
FOR YOUR FEET mark in its description of the commercial online, as highlighted
10
11
12
below.
To date, upon information and belief, Skechers continues to run its
commercial on television and YouTube. Skechers commercial can be viewed on
13
YouTube at https://www.youtube.com/watch?v=gwS1WqjeD4k.
14
///
15
16
///
17
18
19
///
20
21
///
22
23
///
24
25
26
///
27
28
8
COMPLAINT
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
24.
In addition to its commercial, Skechers has also prominently used
23
TerriKellys YOGA PANTS FOR YOUR FEET mark in its social media advertising
24
on platforms such as Facebook and Twitter. Shown below are Skechers Facebook
25
and Twitter posts from January 17, 2015 using TerriKellys YOGA PANTS FOR
26
YOUR FEET mark in its advertising.
27
28
9
COMPLAINT
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
10
COMPLAINT
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
11
COMPLAINT
25.
A simple search of the U.S.P.T.O. records on the date of Skechers
posts on Facebook and Twitter would have revealed TerriKellys YOGA PANTS
FOR YOUR FEET mark as the application was filed on May 23, 2014 seven
4
5
6
7
8
9
10
months before Skechers Facebook and Twitter posts.

26.
TerriKellys YOGA PANTS FOR YOUR FEET mark was unique until
Skechers began using the identical slogan.

27.
Skechers is a company with significant resources. Skechers most
recent Form 10-K filing, provided that Skechers gross profit in 2014 was over a
billion dollars, an increase from over 800 million in 2013.
11
12
28.
It is apparent that Skechers devotes substantial resources towards its
13
marketing and advertising campaigns, which includes engaging celebrities like
14
Ringo Starr and Hall of Fame quarterbacks Joe Montana and Joe Namath to endorse
15
its products.
16
17
29.
Skechers substantial resources afford Skechers the luxury of being able
to market its products through commercials, print advertisements, and billboards.
18
19
TerriKelly, on the other hand, as a small start-up company cannot compete. As a
20
result, it is likely that consumers will be confused and deceived as to the source of
21
TerriKellys YOGA PANTS FOR YOUR FEET mark and may believe that Skechers
22
is actually the owner of the slogan, when, in fact, it is TerriKelly.
23
24
30.
TerriKelly has not authorized Skechers to use its YOGA PANTS FOR
YOUR FEET mark. On March 25, 2015, Ms. Kellys counsel sent a cease and desist
25
26
27
letter to Skechers counsel of record with the U.S.P.T.O. informing Skechers of its
infringement of the YOGA PANTS FOR YOUR FEET mark and demanding that
28
12
COMPLAINT
Skechers immediately cease all use of the mark. A copy of the cease and desist letter
is attached hereto as Exhibit B.
31.
Upon information and belief, to date, Skechers has not ceased all use of
4
5
6
7
8
9
10
the YOGA PANTS FOR YOUR FEET mark in its advertising and marketing.
32.
Skechers is willfully using TerriKellys YOGA PANTS FOR YOUR
FEET mark in its advertising and marketing to promote its Stretch-Fit Glider shoe.
33.
Skechers willful and unauthorized use of TerriKellys YOGA PANTS
FOR YOUR FEET mark in connection with its advertising and marketing is likely
to cause confusion as to the source of its goods because Skechers is using the
11
12
identical mark in commerce to advertise and market its footwear.
13
FIRST CLAIM FOR RELIEF
14
(Federal Trademark Infringement)
15
(15 U.S.C. 1114)
16
17
34.
TerriKelly repeats the allegations above as if fully set forth herein.
35.
TerriKelly has registered its YOGA PANTS FOR YOUR FEET mark
18
19
with the USPTO and has the exclusive right to use this mark in connection with its
20
flip-flops and footwear. TerriKelly also has common law rights in this trademark in
21
connection with flip-flops and footwear.
22
23
24
36.
TerriKelly has used the inherently distinctive YOGA PANTS FOR
YOUR FEET mark continuously in connection with flip-flops and footwear products
since at least as early as January 31, 2014.
25
26
37.
TerriKelly has spent significant time, money, and effort advertising and
27
promoting its trademark in commerce as distinctive source identifier in connection
28
with TerriKellys goods.

13
COMPLAINT
1
2
3
38.
As a result of such extensive and exclusive use and promotion of the
YOGA PANTS FOR YOUR FEET mark, the mark has developed secondary
meaning as an indicator that TerriKelly is the source of the goods identified by the
4
5
6
7
8
9
10
11
12
mark.
39.
TerriKellys YOGA PANTS FOR YOUR FEET mark represents
valuable goodwill owned by TerriKelly.

40.
Skechers use of the YOGA PANTS FOR YOUR FEET mark in
connection with its footwear is without TerriKellys consent.

41.
Skechers unauthorized and infringing use of the YOGA PANTS FOR
YOUR FEET mark in connection with Skechers advertisement, promotion, offers
13
for sale, and sales of its footwear through commercials and social media websites
14
constitutes use of the YOGA PANTS FOR YOUR FEET mark in commerce.
15
16
17
42.
and deceive the public into believing that Skechers and its footwear are sponsored,
affiliated or associated with TerriKelly, when, in fact, they are not.
18
19
Skechers uses the YOGA PANTS FOR YOUR FEET mark to confuse
43.
Skechers unauthorized use of the YOGA PANTS FOR YOUR FEET
20
mark is likely to cause confusion, mistake, and deception as to the source of the
21
footwear and Skechers is unfairly benefitting from TerriKellys substantial efforts
22
in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.
23
24
44.
Due to Skechers unauthorized use of the YOGA PANTS FOR YOUR
FEET mark, TerriKelly has suffered and continues to suffer great and irreparable
25
26
27
28
injury, for which TerriKelly has no adequate remedy at law.

45.
Skechers actions constitute willful infringement of the YOGA PANTS
FOR YOUR FEET mark in violation of 15 U.S.C. 1114(1).

14
COMPLAINT
1
2
3
4
5
6
46.
Skechers conduct has been willful and in bad faith making this an
exceptional case within the meaning of 15 U.S.C. 1117(a).

47.
Skechers is liable to TerriKelly for an amount representing the greater
of three times TerriKellys damages or Skechers illicit profits, as well as

TerriKellys costs and reasonable attorney fees.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition & False Designation of Origin)
9
10
11
12
(15 U.S.C. 1125(a))

48.
49.
Skechers unauthorized and infringing use of the YOGA PANTS FOR
13
YOUR FEET mark in connection with Skechers advertisement, promotion, offers
14
for sale, and sales of its footwear through its commercials and social media websites
15
constitutes use of the YOGA PANTS FOR YOUR FEET mark in commerce.
16
17
18
19
20
50.
Skechers uses the YOGA PANTS FOR YOUR FEET mark to confuse
and deceive the public into believing that Skechers and its footwear are sponsored,
affiliated or associated with TerriKelly, when, in fact, they are not.
51.
Skechers unauthorized use of the YOGA PANTS FOR YOUR FEET
21
mark is likely to cause confusion, mistake, and deception as to the source of the
22
footwear and Skechers is unfairly benefitting from TerriKellys substantial efforts
23
24
25
26
27
in advertising and promoting its YOGA PANTS FOR YOUR FEET mark.
52.
Skechers has actual knowledge of TerriKellys ownership and prior use
of the YOGA PANTS FOR YOUR FEET mark and without the consent of
TerriKelly, has and continues to willfully and intentionally violate 15 U.S.C.
28
15
COMPLAINT
1125(a). Upon information and belief, this is an exceptional case within the meaning
of 15 U.S.C 1117.
53.
Skechers actions constitute a false designation of origin and unfair
4
5
6
competition in violation of 15 U.S.C. 1125(a).

54.
Skechers, by its actions, has irreparably injured and damaged
TerriKelly. Such irreparable injury will continue unless Skechers is permanently
enjoined by this Court from further violation of TerriKellys rights, for which
TerriKelly has no adequate remedy at law.
10
THIRD CLAIM FOR RELIEF
11
(California Common Law Trademark Infringement)
12
13
55.
14
56.
TerriKelly has a protectable interest in the YOGA PANTS FOR
15
16
17
YOUR FEET mark.

57.
TerriKellys common law rights in its mark under California common law.
18
19
20
21
22
Skechers acts complained of herein constitute infringement of
58.
TerriKelly seeks all damages to which it is entitled for Skechers
infringement in an amount to be determined by the Court.

59.
TerriKelly seeks injunctive relief to prevent the irreparable harm
Skechers infringement has caused and will continue to cause if not enjoined.
23
FOURTH CLAIM FOR RELIEF
24
(California Unfair Competition)
25
26
27
(California Common Law and Cal. Bus. and Prof. Code 17200 et seq.)
60.
28
16
COMPLAINT
1
2
3
61.
Skechers actions constitute unlawful and/or unfair business practices
in violation of California Business & Professions Code 17200 et seq.

62.
By virtue of the acts complained of herein, Skechers has intentionally
4
5
caused a likelihood of confusion among the consumers and public, injured
TerriKellys business reputation, and has unfairly competed in violation of
California Business & Professions Code 17200 et seq.
8
9
10
63.
Skechers is using a slogan that is identical to TerriKellys YOGA
PANTS FOR YOUR FEET mark and is likely to cause confusion.

64.
Skechers acts complained of herein constitute unlawful, unfair,
11
12
13
14
malicious, or fraudulent business practices, which have injured and damaged

TerriKelly.
65.
Upon information and belief, the acts of Skechers were done
15
knowingly, willfully, and maliciously with the intent to trade upon the good will of
16
TerriKelly.
17
66.
Skechers, by its actions, has irreparably injured and damaged
18
19
TerriKelly. Such irreparable injury will continue unless Skechers is permanently
20
enjoined by this Court from further violation of TerriKellys rights, for which
21
TerriKelly has no adequate remedy at law.
22
FIFTH CLAIM FOR RELIEF
23
(Unjust Enrichment)
24
67.
68.
The acts of Skechers complained of herein constitute unjust
25
26
27
enrichment as Skechers is benefitting from the valuable goodwill of TerriKellys
28
YOGA PANTS FOR YOUR FEET mark at TerriKellys expense.

17
COMPLAINT
1
2
3
PRAYER FOR RELIEF

WHERFORE, TerriKelly respectfully requests the Court to award TerriKelly the
following relief:
4
5
6
7
8
9
10
A.
That the Court render a final judgment in favor of TerriKelly and
against Skechers on all claims for relief herein;

B.
That Skechers be adjudged to have infringed TerriKellys rights in and
to its federally registered and common law YOGA PANTS FOR YOUR FEET mark;
C.
That the Court render a final judgment declaring Skechers has willfully
violated the provisions of 15 U.S.C. 1125(a) by infringing TerriKellys rights in
11
12
13
the YOGA PANTS FOR YOUR FEET mark;

D.
That the Court render a final judgment declaring that Skechers has
14
violated California Business & Professions Code 17200 et seq. by unfairly
15
competing with TerriKelly and that Skechers actions were done willfully and
16
knowingly;
17
18
19
20
21
E.
That the Court render a final judgment declaring Skechers has violated
California common law by unfairly competing with TerriKelly and that Skechers
actions were done willfully and knowingly;
F.
That Skechers, its officers, principals, agents, servants, employees,
22
attorneys, successors, and assigns and all other persons in active concert or
23
participation with any of them who receive actual notice of the injuction by personal
24
service or otherwise, be forthwith permanently enjoined from:
25
26
1.
using the YOGA PANTS FOR YOUR FEET mark, or any other
27
mark, symbol, or design that is confusingly similar to the YOGA
28
PANTS FOR YOUR FEET mark on or in connection with its

18
COMPLAINT
footwear or any other goods, including but not limited to flip
flops;
2.
filing any applications for registration of any trademarks
confusingly similar to TerriKellys YOGA PANTS FOR YOUR
FEET mark;
6
7
3.
falsely designating the origin of Skechers goods;
4.
unfairly competing with TerriKelly in any manner whatsoever;
5.
causing a likelihood of confusion or injury to TerriKellys
10
business reputation; and
11
6.
12
manufacturing, using, displaying, distributing, or selling any

goods that infringe the YOGA PANTS FOR YOUR FEET mark;
13
G.
14
That Skechers be required to account to TerriKelly for any and all
15
profits derived by Skechers and all damages sustained by TerriKelly by virtue of
16
Skechers actions complained of herein;
17
H.
That Skechers be ordered to pay over to TerriKelly all damages
18
19
20
TerriKelly has sustained as a consequence of the acts complained of herein, subject

to proof at trial;
I.
21
22
together with prejudgment and post-judgment interest;
23
24
That TerriKelly be awarded damages pursuant to 15 U.S.C. 1117,
J.
That Skechers actions be deemed willful and that this case be deemed
exceptional and the amount of damages be trebled and that the amount of profits be
25
26
27
increased by as many times as the Court deems appropriate, pursuant to 15 U.S.C.

1117;
28
19
COMPLAINT
1
2
3
K.
That an award of reasonable costs, expenses, and attorneys fees be
awarded to TerriKelly pursuant to 15 U.S.C. 1117; and

L.
Such other and further relief as this Court may deem just.
4
5
Respectfully submitted,
6
7
8
Dated: May 13, 2015
By:
9
10
11
/s/ Lisa M. Martens

Lisa M. Martens
Nancy L. Ly
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
20
COMPLAINT
1
2
3
DEMAND FOR TRIAL BY JURY

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff
TerriKelly hereby requests a trial by jury on all claims and issues so triable.
4
5
Respectfully submitted,
6
7
8
9
Dated:
May 13, 2015
By:
10
11
12
/s/ Lisa M. Martens

Lisa M. Martens
Nancy L. Ly
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
21
COMPLAINT
TABLE OF EXHIBITS
Page #
2
3
Exhibit A ..4
Exhibit B ..13
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
22
COMPLAINT
EXHIBIT A
Exhibit A - Page 1
Exhibit A - Page 2

TRADEMARK ASSIGNMENT COVER SHEET
Electronic Version v1.1
Stylesheet Version v1.2
SUBMISSION TYPE:
NEW ASSIGNMENT
NATURE OF CONVEYANCE:
ASSIGNMENT OF THE ENTIRE INTEREST AND THE GOODWILL
CONVEYING PARTY DATA

Name
Formerly
Terri Kelly
Execution Date
05/07/2015
Entity Type
INDIVIDUAL:UNITED STATES
RECEIVING PARTY DATA

Name:
Terrikelly LLC
Street Address:
1 Pauma Lane
City:
Palm Desert
State/Country:
CALIFORNIA
Postal Code:
92260
Entity Type:
LIMITED LIABILITY COMPANY:CALIFORNIA
PROPERTY NUMBERSTotal: 1
Property Type
Registration Number:
Number
4730442
Word Mark
YOGA PANTS FOR YOUR FEET
CORRESPONDENCE DATA
Fax Number:
8587775545
Phone:
8587775545
Email:
jamie@justtrademarks.com
Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent using a fax number, if provided; if that is
unsuccessful, it will be sent via US Mail.
Correspondent Name:
Jamie Shelden
Address Line 1:
1760 Suite F, PMB 220 Airline Highway
Address Line 4:
Hollister, CALIFORNIA 95023
NAME OF SUBMITTER:
Jamie Shelden
Signature:
/Jamie Shelden/
Date:
05/07/2015
Total Attachments: 1
source=Scan0009#page1.tif
RECEIPT INFORMATION
Exhibit A - Page 3

ETAS ID:
Receipt Date:
Fee Amount:
TM340652
05/07/2015
$40
Exhibit A - Page 4
EXHIBIT B
March 25, 2015

Via email: mlerner@kleinberglerner.com
and Fax: 310.557.1540
Marshall A. Lerner
Kleinberg & Lerner, LLP
1875 Century Park E, Suite 1150
Los Angeles, CA 90067-2502
Re:
Sketchers USA Inc.s Infringement of the YOGA PANTS FOR YOUR FEET
Trademark
Dear Mr. Lerner:

This firm represents Terri Kelly of Palm Desert, CA in connection with trademark and other
matters. We are writing regarding your client, Sketchers USA Inc. IIs (Sketchers) unauthorized
use of the YOGA PANTS FOR YOUR FEET tagline in connection the companys television and
social media advertising campaign for Sketchers new STRETCH FIT womens shoes.
Our client, Terri Kelly, launched her footwear company back in November 2013 introducing her
own line of comfort flip flops under the TERRI KELLY trademark. With a focus on simplicity
and comfort, the TERRI KELLY line has quickly become the popular favorite casual footwear
amongst the yoga crowd and others. A few months later, the company began using the
tagline/trademark YOGA PANTS FOR YOUR FEET in connection with the TERRI KELLY
line of flip flops.
Ms. Kelly adopted the YOGA PANTS FOR YOUR FEET tagline and trademark in January
2014 and since then the company has actively promoted the trademark in connection with its
footwear on its website at www.terrikelly.com, Twitter, Instagram, Facebook and in other social
media. TERRI KELLY footwear is sold directly through the companys website as well as in
specialty boutiques around the country and online at Zulily and 11Maine. The products are
promoted nationwide via the Outdoor Retailers trade show in Salt Lake City, the Wanderlust
yoga festival in Squaw Valley, and at various fairs and festivals. TERRI KELLY flip flops were
also recently featured as an editors pick in LA Yoga Magazine. Ms. Kelly owns United States
trademark application serial number 86290872 for the YOGA PANTS FOR YOUR FEET
trademark covering footwear. The application was published for opposition on February 17,
2015 and we expect the registration to issue shortly.
Exhibit B - Page 1
My client has invested a great deal of time, money and effort promoting its footwear and in
building an outstanding reputation for high quality, high comfort products. As a result of the
companys extensive advertising and social media marketing efforts, the YOGA PANTS FOR
YOUR FEET tagline and trademark has come, in short order, to embody substantial and valuable
goodwill.
It has recently come to Ms. Kellys attention that Sketchers began an apparently nationwide
advertising campaign for its new line of stretchable shoes using the YOGA PANTS FOR
YOUR FEET tagline. It also appears that the tagline is trending on Twitter in connection with
Sketchers new footwear line. As my client has substantial nationwide rights in this trademark
based on prior use and based on her federal trademark application, Sketchers use of the identical
tagline in connection with virtually identical products is likely to cause confusion among
consumers as to the source and/or sponsorship of your clients footwear products. Any
continued use of the YOGA PANTS FOR YOUR FEET trademark by Sketchers constitutes
trademark infringement in violation of federal law and state laws governing trademark
infringement and unfair business practices.
While we would like to believe that Sketchers was unaware of Ms. Kelly rights in the YOGA
PANTS FOR YOUR FEET trademark when the company chose to use the tagline in their
nationwide television advertising campaign, a cursory Google search quickly reveals multiple
references to Ms. Kellys products and the YOGA PANTS FOR YOUR FEET trademark. Until
the Sketchers television campaign, in fact, all Google search references were to Ms. Kellys
company, and no others. As I am sure you will understand, in order to protect her rights, my
client cannot permit Sketchers to continue to use the YOGA PANTS FOR YOUR FEET
trademark in any television, print, online or other advertising spots.
To avoid any consumer confusion, my client requires that Sketchers agree in writing that the
company will immediately cease all use the trademark and pull the currently running television
ad campaign and any other promotional uses of the YOGA PANTS FOR YOUR FEET tagline
immediately. We have copied litigation counsel on this notice and will expect immediate written
confirmation no later than Friday, March 27, 2015 that Sketchers will resolve this matter as
requested. Your clients prompt attention to this matter will prevent the need for further legal
action by my client.
Sincerely,
Jamie R. Shelden, Esq.

cc:
Terri Kelly
Jamie R. Shelden, Esq.

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

Yoga Pants For Your Feet Trademark Complaint PDF

Enviado por

Dados do documento

Descrição original:

Título original

Direitos autorais

Formatos disponíveis

Compartilhar este documento

Compartilhar ou incorporar documento

Opções de compartilhamento

Você considera este documento útil?

Este conteúdo é inapropriado?

Direitos autorais:

Formatos disponíveis

Yoga Pants For Your Feet Trademark Complaint PDF

Enviado por

Direitos autorais:

Formatos disponíveis

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

Lisa M. Martens (SBN 195824)

Attorneys for Plaintiff TerriKelly, LLC

IN THE UNITED STATES DISTRICT COURT

TERRIKELLY, LLC, a California limited

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

COMPLAINT FOR FEDERAL

DEMAND FOR JURY TRIAL

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

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

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

Skechers) states and alleges as follows:

Plaintiff, TerriKelly is a limited liability company organized and

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

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

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

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

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

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

Skechers U.S.A., Inc.

JURISDICTION AND VENUE

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

This Court has personal jurisdiction over Skechers. Skechers has

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

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

Skechers has a continuous, systematic, and substantial presence within

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

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

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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 4 of 30

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

branded them as yoga pants for your feet.

Recognizing the importance of intellectual property rights, Ms. Kelly

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

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

sheet are attached hereto as Exhibit A.

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

TerriKellys federal registration of the YOGA PANTS FOR YOUR

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

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 5 of 30

Case 3:15-cv-01086-GPC-DHB Document 1 Filed 05/13/15 Page 6 of 30

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

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

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

around the world.

TerriKelly flip-flops are also promoted nationwide through the

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

editors pick in LA Yoga Magazine.

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

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

have enjoyed substantial success.

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

including Twitter, Instagram, and Facebook.

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

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

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

Skechers footwear is marketed and sold in over 600 stores worldwide.

Skechers advertises and markets its footwear extensively on a variety

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

TerriKelly recently learned of a commercial being shown on television

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

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