Yeti Coolers, LLC v. Hogg Outfitters, LLC

Complaint

Western District of Texas, txwd-1:2018-cv-00512

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4 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS AUSTIN DIVISION YETI Coolers, LLC, Case No. 1:18-cv-00512 Plaintiff, COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: v. (1) TRADE DRESS INFRINGEMENT Hogg Outfitters, LLC, IN VIOLATION OF 15 U.S.C. § 1125(a); Defendant. (2) TRADE DRESS DILUTION IN VIOLATION OF 15 U.S.C. § 1125(c); (3) UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN IN VIOLATION OF 15 U.S.C. § 1125(a); (4) TRADE DRESS DILUTION IN VIOLATION OF TEX. BUS. & COM. CODE § 16.103; (5) COMMON LAW TRADE DRESS INFRINGEMENT; (6) COMMON LAW UNFAIR COMPETITION; (7) COMMON LAW MISAPPROPRIATION; AND (8) UNJUST ENRICHMENT. Jury Trial Demanded COMPLAINT Plaintiff, YETI Coolers, LLC ("YETI"), for its complaint against Hogg Outfitters, LLC ("Hogg"), alleges as follows: 4 The Parties 1. YETI is a company organized and existing under the laws of the State of Delaware with a principal place of business at 7601 Southwest Parkway, Austin, TX 78735. 2. On information and belief, Hogg Outfitters, LLC is a corporation organized and existing under the laws of the State of New Jersey with a principal place of business at 160 Raritan Center Parkway, Suite 5, Edison, New Jersey, 08837. Hogg maintains a Registered Agent in the State of New Jersey. Hogg may be served at its Registered Agent, LegalZoom, 330 Changebridge Road, Suite 101, Pine Brook, New Jersey, 07058. Jurisdiction and Venue 3. This is a complaint for damages and injunctive relief based on Hogg's drinkware- related sales and includes multiple grounds for relief including trade dress infringement, trade dress dilution, unfair competition and false designation of origin, misappropriation, and unjust enrichment. This complaint arises under the Texas Business & Commerce Code; the Trademark Act of 1946, 15 U.S.C. § 1051, et seq. ("the Lanham Act"); federal common law; and state common law, including the law of Texas. 4. This Court has subject matter jurisdiction over this action pursuant to at least 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(a) & (b), and 1367(a). 5. This Court has personal jurisdiction over Hogg because, inter alia, Hogg is purposefully and intentionally availing itself of the privileges of doing business in the State of Texas, including in this District. Among other things, (i) Hogg has advertised, marketed, promoted, offered for sale, sold, distributed, manufactured, and/or imported, and continues to advertise, market, promote, offer for sale, sell, distribute, manufacture, and/or import, infringing products to customers and/or potential customers, including in this District, at least through 2 4 Hogg's principal web site, www.hoggoutfitters.com, Home Depot U.S.A., Inc.'s principal web site, www.homedepot.com, and www.amazon.com, (ii) Hogg's tortious acts giving rise to this lawsuit and harm to YETI have occurred and are occurring in the State of Texas, including in this District, (iii) on information and belief, Hogg acted with knowledge that their unauthorized use of YETI's rights would cause harm to YETI in the State of Texas and in this District, and (iv) Hogg's customers and/or potential customers reside in the State of Texas, including in this District. 6. Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391(a)-(d). General Allegations – YETI's Intellectual Property 7. For years, YETI has engaged in the development, manufacture, and sale of insulated products, including insulated drinkware. YETI created unique, distinctive, and non- functional designs to use with YETI's insulated drinkware. YETI has extensively and continuously promoted and used these designs for years in the United States and in Texas. Through that extensive and continuous promotion and use, YETI's designs have become well- known indicators of the origin and quality of YETI's insulated drinkware products. YETI's designs also have acquired substantial secondary meaning in the marketplace and have become famous. As discussed in more detail below, YETI owns various rights relating to its insulated drinkware designs, including trade dress rights. 8. Several years ago, YETI introduced its 30 oz. Rambler® Tumbler and 20 oz. Rambler® Tumbler into the marketplace (collectively, "Rambler® Drinkware"). YETI has sold millions of the Rambler® Drinkware throughout the United States, including sales to customers in the State of Texas. YETI has invested significant resources in the design, development, manufacture, advertising, and marketing of the Rambler® Drinkware. The designs and features 3 4 of the Rambler® Drinkware have received widespread and unsolicited public attention. For example, the Rambler® Drinkware have been featured in numerous newspaper, magazine, and Internet articles. 9. The designs of the Rambler® Drinkware are distinctive and non-functional and identify to consumers that the origin of the Rambler® Drinkware is YETI. As a result of at least YETI's continuous and exclusive use of the Rambler® Drinkware, YETI's marketing, advertising, and sales of the Rambler® Drinkware, and the highly valuable goodwill and substantial secondary meaning acquired as a result, YETI owns trade dress rights in the designs and appearances of the Rambler® Drinkware, which consumers have come to uniquely associate with YETI. 10. Exemplary images of a YETI 30 oz. Rambler® Tumbler are shown below: Illustration 1: Exemplary Images of a YETI 30 oz. Rambler® Tumbler. 4 4 Illustration 1: Exemplary Images of a YETI 30 oz. Rambler® Tumbler. 11. YETI has trade dress rights in the overall look, design, and appearance of the YETI 30 oz. Rambler® Tumbler, which includes the design and appearance of the curves, tapers, and lines in the YETI 30 oz. Rambler® Tumbler; the design and appearance of the profile of the YETI 30 oz. Rambler® Tumbler; the design and appearance of the walls of the YETI 30 oz. Rambler® Tumbler; the design and appearance of the rim of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the taper in the side wall of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the upper portion, mid portion, and bottom portion of the side wall of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the style line around the base of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the tab on the lid of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the drinking opening on the lid of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the top plane of the lid of the YETI 30 oz. Rambler® Tumbler; the design, appearance, and placement of the side walls of the lid of the YETI 30 oz. Rambler® Tumbler; the color contrast and color combinations of the YETI 30 oz. Rambler® Tumbler and the tumbler lid of the YETI 30 oz. Rambler® 5 4 Tumbler; and the relationship of these features to each other and to other features. 12. Exemplary images of a YETI 20 oz. Rambler® Tumbler are shown below: Illustration 2: Exemplary Images of a YETI 20 oz. Rambler® Tumbler. 6 4 13. YETI has trade dress rights in the overall look, design, and appearance of the YETI 20 oz. Rambler® Tumbler, which includes the design and appearance of the curves, tapers, and lines in the YETI 20 oz. Rambler® Tumbler; the design and appearance of the profile of the YETI 20 oz. Rambler® Tumbler; the design and appearance of the walls of the YETI 20 oz. Rambler® Tumbler; the design and appearance of the rim of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the taper in the side wall of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the style line around the base of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the tab on the lid of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the drinking opening on the lid of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the top plane of the lid of the YETI 20 oz. Rambler® Tumbler; the design, appearance, and placement of the side walls of the lid of the YETI 20 oz. Rambler® Tumbler; the color contrast and color combinations of the YETI 20 oz. Rambler® Tumbler and the tumbler lid of the YETI 20 oz. Rambler® Tumbler; and the relationship of these features to each other and to other features. 14. As a result of YETI's exclusive, continuous, and substantial use, advertising, and sales of insulated drinkware products bearing YETI's trade dress and the publicity and attention that has been paid to YETI's trade dress, YETI's trade dress in its 30 oz. Rambler® Tumbler and its 20 oz. Rambler® Tumbler each have become famous and have acquired valuable goodwill and substantial secondary meaning in the marketplace, as consumers have come to uniquely associate YETI's trade dress as source identifiers of YETI. 7 4 General Allegations – Hogg's Unlawful Activities 15. Hogg has purposefully advertised, marketed, promoted, offered for sale, sold, distributed, manufactured, and/or imported, and continues to advertise, market, promote, offer for sale, sell, distribute, manufacture, and/or import products, that violate YETI's rights, including the rights protected by YETI's intellectual property. Hogg's infringing products are confusingly similar imitations of YETI's products and are in the same size as YETI's products. Hogg's actions have all been without the authorization of YETI. 16. Exemplary images of Hogg's infringing products are shown below: 8 4 Illustration 1: Exemplary Image of 30 oz. infringing products. Illustration 2: Exemplary Image of 20 oz. infringing products. 17. As a result of Hogg's activities related to the infringing products, there is a likelihood of confusion between Hogg and its products on the one hand, and YETI and its products on the other hand. 9 4 18. YETI used its trade dress extensively and continuously before Hogg began advertising, promoting, offering to sell, selling, distributing, manufacturing, and/or importing its infringing products. Moreover, YETI's trade dress became famous and acquired secondary meaning in the United States and in the State of Texas generally and in geographic areas in Texas before Hogg commenced its unlawful use of YETI's trade dress. 19. As discussed above and as set forth in the counts below, Hogg's actions are unfair and unlawful. Count I: Trade Dress Infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) 20. YETI realleges and incorporates the allegations set forth in paragraphs 1 through 19 as though fully set forth herein. 21. Hogg's advertisements, promotions, offers to sell, sales, distribution, manufacture, and/or importing of the infringing products violate § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by infringing YETI's trade dress. Hogg's use of YETI's trade dress and/or colorable imitations thereof is likely to cause confusion, mistake, or deception as to the affiliation, connection, and/or association of Hogg with YETI and as to the origin, sponsorship, and/or approval of the infringing products, at least by creating the false and misleading impression that the infringing products are manufactured by, authorized by, or otherwise associated with YETI. 22. YETI's trade dress is entitled to protection under the Lanham Act. YETI's trade dress includes unique, distinctive, and non-functional designs. YETI has extensively and continuously promoted and used its trade dress in the United States. Through that extensive and continuous use, YETI's trade dress has become a well-known indicator of the origin and quality of YETI's products. YETI's trade dress has also acquired substantial secondary meaning in the 10 4 marketplace. Moreover, YETI's trade dress acquired this secondary meaning before Hogg commenced its unlawful use of YETI's trade dress in connection with the infringing products. 23. Hogg's use of YETI's trade dress and/or color