Yeti Coolers v. Walmart - Complaint

Case 1:17-cv-01145 Document 1 Filed 12/08/17 Page 1 of 50
UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
YETI Coolers, LLC, Case No. 1:17-CV-01145
Plaintiff, COMPLAINT FOR DAMAGES AND

INJUNCTIVE RELIEF FOR:
v.
(1) BREACH OF CONTRACT;
Wal-Mart Stores, Inc., (2) TRADEMARK DILUTION IN
VIOLATION OF TEX. BUS. & COM.
Defendant. CODE 16.103;
(3) TRADE DRESS DILUTION IN
VIOLATION OF TEX. BUS. & COM.
CODE 16.103;
(4) TRADEMARK INFRINGEMENT IN
VIOLATION OF 15 U.S.C. 1114(1);
(5) TRADEMARK INFRINGEMENT IN
VIOLATION OF 15 U.S.C. 1125(a);
(6) TRADE DRESS INFRINGEMENT IN
VIOLATION OF 15 U.S.C. 1125(a);
(7) TRADEMARK DILUTION IN
VIOLATION OF 15 U.S.C. 1125(c);
(8) TRADE DRESS DILUTION IN
VIOLATION OF 15 U.S.C. 1125(c);
(9) UNFAIR COMPETITION AND
FALSE DESIGNATION OF ORIGIN
IN VIOLATION OF 15 U.S.C.
1125(a);
(10) COPYRIGHT INFRINGEMENT
UNDER 17 U.S.C. 501
(11) PATENT INFRINGEMENT IN
VIOLATION OF 35 U.S.C. 271;
(12) COMMON LAW TRADEMARK
INFRINGEMENT;
(13) COMMON LAW TRADE DRESS
INFRINGEMENT;
(14) COMMON LAW UNFAIR
COMPETITION;
(15) COMMON LAW
MISAPPROPRIATION; AND
(16) UNJUST ENRICHMENT.
Jury Trial Demanded

COMPLAINT
Plaintiff, YETI Coolers, LLC (YETI), for its complaint against Wal-Mart Stores, Inc.
(Wal-Mart) alleges as follows:
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. Upon information and belief, Wal-Mart Stores, Inc. is a corporation organized
under the laws of the State of Delaware with a principal place of business at 702 S.W. 8th Street,
Bentonville, Arkansas, 72716, that does business under the name Walmart, including through the
web site www.walmart.com.
Jurisdiction and Venue
3. This is an action for damages and injunctive relief for Wal-Marts breach of
contract of a settlement agreement entered into on March 10, 2017 by YETI and Wal-Mart (the
Settlement Agreement). This action is also for trademark and trade dress infringement,
trademark and trade dress dilution, unfair competition and false designation of origin, patent
infringement, misappropriation, unjust enrichment, and copyright infringement. This action
arises under the Texas Business & Commerce Code, the Trademark Act of 1946, 15 U.S.C.
1051, et seq. (the Lanham Act), the Patent Act, 35 U.S.C. 1, et seq., 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 Wal-Mart because, inter alia, Wal-Mart
agrees that jurisdiction for the enforcement of the Settlement Agreement is in the Western
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District of Texas. This Court also has personal jurisdiction over Wal-Mart because, inter alia,
Wal-Mart 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) Wal-Mart operates multiple
store locations in the State of Texas, including in this District, (ii) Wal-Mart has advertised,
marketed, promoted, offered for sale, sold, and/or distributed, and continues to advertise, market,
promote, offer for sale, sell, distribute, manufacture, and/or import, infringing products to
customers and/or potential customers in the State of Texas, including in this District, (iii) Wal-
Marts 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, (iv) Wal-Mart has regularly and intentionally
done business in this District and sold its infringing products in this District providing Wal-Mart
with substantial infringing business revenue from this District, (v) Wal-Mart acted with
knowledge that its unauthorized use of YETIs rights would cause harm to YETI in the State of
Texas and in this District, (vi) Wal-Marts customers and/or potential customers reside in the
State of Texas, including in this District, and (vii) Wal-Mart benefits financially from the Texas
market, including, for example, through sales of infringing products that ultimately occur in
Texas, including in this District. Wal-Mart has sold infringing products, including on or through
its website at www.walmart.com, for distribution throughout Texas and this District, and has
delivered infringing products into the stream of commerce to purchasers in Texas, including in
this District.
6. Venue is proper in this District pursuant to at least 28 U.S.C. 1391(a)-(d),
federal law, and judicial doctrine. In the alternative, venue is proper under 28 U.S.C. 1400.
Venue is also proper because this Court previously entered an Order of Dismissal in a prior
litigation between YETI and Wal-Mart, Civil Action No. 1:16-cv-00454, and pursuant to that
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Order and to YETIs and Wal-Marts Settlement Agreement, venue is proper in this District for
the purpose of enforcement of or the resolution of any dispute arising from YETIs and Wal-
Marts settlement or related to their Settlement Agreement.
General Allegations YETIs Business and 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 YETIs 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, YETIs designs have become well-
known indicators of the origin and quality of YETIs insulated drinkware products. YETIs
designs also have acquired substantial secondary meaning in the marketplace and have become
famous. As discussed in more detail below, YETI owns various rights rights relating to its
insulated drinkware designs, including trademark rights, trade dress rights, patent rights, and
copyrights.
8. Several years ago, YETI introduced, amongst others, its 30 oz. Rambler
Tumbler, 20 oz. Rambler Tumbler, and Rambler Colster Beverage Holder 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 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.
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9. The designs of the Rambler Drinkware have distinctive and non-functional
features that identify to consumers that the origin of the Rambler Drinkware is YETI. As a
result of at least YETIs continuous and exclusive use of the Rambler Drinkware, YETIs
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. YETIs trade dress rights in the designs and appearances of the Rambler
Drinkware are collectively referred to as YETIs Trade Dress.
10. Exemplary images of a YETI 30 oz. Rambler Tumbler are shown below:
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.
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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
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:
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Illustration 2: Exemplary Images of a YETI 20 oz. Rambler Tumbler.
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
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tumbler lid of the YETI 20 oz. Rambler Tumbler; and the relationship of these features to each
other and to other features.
14. Exemplary images of a YETI Rambler Colster Beverage Holder are shown
below:
Illustration 3: Exemplary Images of a YETI Rambler Colster Beverage Holder.
YETI Rambler Colster Beverage Holder, which includes the design and appearance of the
curves and lines in the YETI Rambler Colster Beverage Holder; the design and appearance
of the profile of the YETI Rambler Colster Beverage Holder; the design and appearance of
the walls of the YETI Rambler Colster Beverage Holder; the design and appearance of the
rim of the YETI Rambler Colster Beverage Holder; the design, appearance, and placement of
the top plane of the upper band of the YETI Rambler Colster Beverage Holder; the design,
appearance, and placement of the side walls of the upper band of the YETI Rambler Colster
Beverage Holder; the design, appearance, and placement of the style line around the base of the
YETI Rambler Colster Beverage Holder; the color contrast and color combinations of the
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YETI Rambler Colster Beverage Holder and the upper band of the YETI Rambler Colster
Beverage Holder; and the relationship of these features to each other and to other features.
16. As a result of YETIs substantially exclusive and continuous use, advertising, and
sales of insulated drinkware products bearing YETIs Trade Dress, and the publicity and
attention that has been paid to YETIs Trade Dress, YETIs Trade Dress has become famous and
has acquired valuable goodwill and substantial secondary meaning in the marketplace, as
consumers have come to uniquely associate YETIs Trade Dress as source identifiers of YETI.
17. YETI has also used the trademark YETI throughout the United States and the
state of Texas in connection with its insulated drinkware products, cooler products, and other
products, and the trademarks RAMBLER, YETI COLSTER, and YETI RAMBLER
COLSTER throughout the United States and the state of Texas in connection with at least its
insulated drinkware products. YETI has used these trademarks throughout the United States and
the State of Texas, including with advertising and promoting YETIs Rambler Drinkware.
YETI has sold millions of units of the Rambler Drinkware bearing the YETI, RAMBLER,
YETI COLSTER, and YETI RAMBLER COLSTER trademarks throughout the United
States.
18. In view of YETIs extensive and continuous use of YETI, RAMBLER,
YETI COLSTER, and YETI RAMBLER COLSTER, consumers have come to associate
YETI, RAMBLER, YETI COLSTER, and YETI RAMBLER COLSTER as source
identifiers of YETI, and YETI owns trademark rights in the marks. Further, YETI owns several
trademark registrations, including:
i. Trademark Registration No. 3,203,869 (the 869 Registration) for
YETI for portable coolers;
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ii. Trademark Registration No. 4,948,370 (the 370 Registration) for
YETI for clothing;
iii. Trademark Registration No. 4,948,371 (the 371 Registration) for
YETI for clothing;
iv. Trademark Registration No. 4,833,419 (the 419 Registration) for
YETI COLSTER for stainless steel drink holders;
v. Trademark Registration No. 5,233,441 (the 441 Registration) for
RAMBLER for beverageware, cups, drinking glasses, tumblers for use
as drinking vessels, jugs, mugs, temperature-retaining drinking vessels,
storage containers for household or domestic use, namely, vacuum
container for hot or cold food and drink, beer growlers, insulated food and
drink containers, stainless steel tumblers for use as drinking vessels,
stainless steel drinking glasses, stainless steel beverageware, drinking
straws; and
vi. Trademark Registration No. 4,871,725 (the 725 Registration) for
YETI RAMBLER COLSTER for stainless steel drink holders.
19. Collectively, these trademarks are referred to as YETIs Trademarks. Copies of
the trademark registrations are attached as Exhibits 1-6.
20. As a result of, inter alia, YETIs exclusive, continuous, and substantial use of
YETI, RAMBLER, YETI COLSTER, and YETI RAMBLER COLSTER, YETIs
exclusive, continuous, and substantial advertising and promoting of products bearing YETI,
RAMBLER, YETI COLSTER, and YETI RAMBLER COLSTER, and the publicity and
attention that has been paid to YETIs YETI, RAMBLER, YETI COLSTER, and YETI
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RAMBLER COLSTER marks, these marks have become famous in the United States, including
in the State of Texas, and have acquired valuable goodwill and substantial secondary meaning in
the marketplace, as consumers have come to uniquely associate YETIs YETI, RAMBLER,
YETI COLSTER, and YETI RAMBLER COLSTER trademarks as source identifiers of
YETI.
21. YETI also owns U.S. Design Patent No. D752,397 (the 397 patent) related to a
beverage holder. The 397 patent is entitled Beverage Holder. On March 29, 2016, the 397
patent was duly and legally issued by the U.S. Patent Office to YETI. YETI owns the entire
right, title, and interest to the 397 patent. A copy of the 397 patent is attached as Exhibit 7. An
exemplary figure from the 397 patent is shown in Illustration 4 below.
Illustration 4: Exemplary Figure from the 397 Patent.
22. YETI also owns several copyrights related to its Rambler Drinkware products.
The U.S. Copyright Office registered these copyrights as follows:
i. Copyright Registration No. VA 1-974-722 (the 722 Registration);
ii. Copyright Registration No. VA 1-974-730 (the 730 Registration);
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iii. Copyright Registration No. VA 1-974-735 (the 735 Registration);
iv. Copyright Registration No. VA 1-974-732 (the 732 Registration); and
v. Copyright Registration No. VA 2-074-727 (the 727 Registration).
23. Collectively, these copyrights are referred to as YETIs Copyrights. Copies of
the copyright certificates are attached as Exhibits 8-12.
24. The 722 Registration is entitled YETI Rambler Colster Label. The 722
Registration certificate was duly and legally issued by the U.S. Copyright Office to YETI on
October 7, 2015. YETI owns the entire right, title, and interest to the YETI Rambler Colster
Label copyright. A copy of the 722 Registration certificate is attached as Exhibit 8 and the
corresponding label is shown in Illustration 5 below.
Illustration 5: YETI Rambler Colster Label for the 722 Registration.
25. The 730 Registration is entitled YETI Rambler 10 oz. Lowball Label. The
730 Registration certificate was duly and legally issued by the U.S. Copyright Office to YETI
on October 7, 2015. YETI owns the entire right, title, and interest to the YETI Rambler 10 oz.
Lowball Label copyright. A copy of the 730 Registration certificate is attached as Exhibit 9 and
the corresponding label is shown in Illustration 6 below.
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Illustration 6: YETI Rambler 10 oz. Lowball Label for the 730 Registration.
26. The 735 Registration is entitled YETI 30 oz. Rambler Tumbler Label. The
on October 7, 2015. YETI owns the entire right, title, and interest to the YETI 30 oz. Rambler
Tumbler Label copyright. A copy of the 735 Registration certificate is attached as Exhibit 10
and the corresponding label is shown in Illustration 7 below.
Illustration 7: YETI 30 oz. Rambler Tumbler Label for the 735 Registration.
27. The 732 Registration is entitled YETI 20 oz. Rambler Tumbler Label. The
on October 7, 2015. YETI owns the entire right, title, and interest to the YETI 20 oz. Rambler
Tumbler Label copyright. A copy of the 732 Registration certificate is attached as Exhibit 11
and the corresponding label is shown in Illustration 8 below.
Illustration 8: YETI 20 oz. Rambler Tumbler Label for the 732 Registration.
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28. The 727 Registration is entitled YETI 36 oz. Rambler Bottle Label. The 727
Registration certificate was duly and legally issued by the U.S. Copyright Office to YETI on
September 27, 2017. YETI owns the entire right, title, and interest to the YETI 36 oz. Rambler
Bottle Label copyright. A copy of the 727 Registration certificate is attached as Exhibit 12 and
the corresponding label is shown in Illustration 9 below.
Illustration 9: YETI 36 oz. Rambler Bottle Label for the 727 Registration.
General Allegations Wal-Marts Unlawful Activities
29. Wal-Mart has purposefully advertised, 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 drinkware products, that violate YETIs rights,
including the rights protected by YETIs Trade Dress, YETIs Trademarks, YETIs Copyrights,
and the 397 patent. On information and belief, Wal-Mart also is making or having made and/or
importing the infringing products into the United States. Wal-Marts infringing products are
confusingly similar imitations of YETIs products and are in the same size as YETIs products.
Wal-Marts actions have all been without the authorization of YETI.
30. Illustrations 10-13 below show examples of Wal-Marts infringing products.
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Illustration 10: Exemplary Image of Wal-Marts Koozie Infringing Product.
Illustration 11: Exemplary Image of Wal-Marts 30 oz. Infringing Product.
Illustration 12: Exemplary Image of Wal-Marts 20 oz. Infringing Product.
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31. As a result of Wal-Marts activities related to the infringing products, there is a
strong likelihood of confusion between Wal-Mart and its products on the one hand, and YETI
and its products on the other hand.
32. YETI used YETIs Trade Dress and Copyrights extensively and continuously
before Wal-Mart began advertising, promoting, selling, offering to sell, distributing,
manufacturing, and/or importing its infringing products. Moreover, YETIs 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 Wal-Mart commenced unlawful use of YETIs Trade
Dress.
33. On April 8, 2016, YETI filed a complaint against Wal-Mart regarding Wal-Marts
infringing products. YETI and Wal-Mart settled the dispute by entering into the Settlement
Agreement on March 10, 2017. This Court entered a Stipulated Order of Dismissal in that prior
suit pursuant to the Settlement Agreement. Order, YETI Coolers, LLC v. Wal-Mart Stores, Inc.,
No. 1:160-cv-454-RP (W.D. Tex. June 14, 2017), ECF No. 49. Despite Wal-Marts clear and
express obligations under the Settlement Agreement with regard to the Accused Products
identified in the Settlement Agreement, Wal-Mart continues to unlawfully advertise, market,
promote, sell, offer to sell, and/or distribute Accused Products, and take other actions, in breach
of the Settlement Agreement and in violation of YETIs rights.
34. Illustrations 13-17 below show examples of Wal-Marts continued advertisement,
marketing, promotion, and offers for sale of the Accused Products and infringing products in
breach of the Settlement Agreement and in violation of YETIs rights:
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Illustration 13: Exemplary Image of Wal-Mart Accused Product

Called YETI Black Stainless Steel Tumbler

Called Stainless Steel Tumbler Vacuum Insulated Water Cup
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Called Steel 700ml Cups Cooler Rambler Tumbler

Called 2Pcs Handle for Ozark Trail 30-Ounce Tumbler, Yeti Rambler 30 oz.
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Illustration 17: Exemplary Image of Wal-Mart Accused Product Called Oak Leaf 3 Pcs Spill Proof and
Splash Resistant Lid for Ozark Trail 20 Ounce Tumbler, Yeti Rambler 20 oz.
35. In addition to infringing and diluting YETIs Trade Dress, Wal-Mart has also
unlawfully used and continues to unlawfully use YETIs Trademarks, including through
counterfeits, reproductions, copies, and/or colorable imitations thereof, in inter alia, advertising,
promoting, offering to sell, selling, distributing, manufacturing, and/or importing the infringing
products and/or labels, and is thereby infringing and diluting YETIs Trademarks and
intentionally trading on YETIs goodwill.
36. As a result of Wal-Marts activities related to use of YETIs Trademarks,
including through counterfeits, reproductions, copies, and/or colorable imitations thereof, there is
a likelihood of confusion between Wal-Mart and Wal-Marts products on the one hand, and
YETI and YETIs products on the other hand.
37. YETI used its Trademarks and Copyrights extensively and continuously before
Wal-Mart began advertising, promoting, selling, offering to sell, distributing, manufacturing,
and/or importing into the United States the infringing products. Moreover, YETIs Trademarks
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became famous and acquired secondary meaning in the United States and in the State of Texas
before Wal-Mart commenced unlawful use of YETIs Trademarks.
38. Illustrations 18 and 19 below show exemplary images of Wal-Marts unlawful use
of YETIs Trade Dress, YETIs Trademarks, and YETIs Copyrights, including through the use
of counterfeit products:
Illustration 18: Exemplary Images of Wal-Marts Illustration 19: Exemplary Images of YETIs 20 oz.
Counterfeit 20 oz. Tumbler Product. Rambler Tumbler.
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39. As a result of Wal-Marts activities related to use of YETIs Trade Dress, YETIs
Trademarks, and YETIs Copyrights, including through counterfeits, reproductions, copies,
and/or colorable imitations thereof, there is a likelihood of confusion between Wal-Mart and
Wal-Marts products on the one hand, and YETI and YETIs products on the other hand.
40. Wal-Mart has also engaged in, and continues to engage in, false advertising of
unlicensed and counterfeit products, including insulated beverage containers, components,
labels, and packaging materials thereof. Wal-Marts false advertising through the use of false
designation of origin, false or misleading description of fact, and/or false or misleading
representation of fact, which were used in commercial advertising or promotion, which
misrepresents the nature, characteristics, and qualities of goods resulted in and continues to result
in a false or misleading article being sold.
41. Wal-Marts use of YETIs Trade Dress, YETIs Trademarks, and YETIs
Copyrights, including through counterfeits, reproductions, copies, and/or colorable imitations
thereof has been intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least
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by Wal-Marts breach of the Settlement Agreement, direct copying of YETIs products, and
unlawful use of YETIs Trade Dress and YETIs Trademarks.
42. Under Section C.3 of the Settlement Agreement, Wal-Mart explicitly agreed to
provide YETI with specific notices, confirmations and validations by no later than November 15,
2017. Wal-Mart failed to provide these Notices confirmation and validations by November 15
and continues to fail to provide them despite repeat requests from YETI.
43. As discussed above and as set forth in the counts below, Wal-Marts actions are
unfair and unlawful.
Count I:
Breach of the Settlement Agreement
44. YETI realleges and incorporates the allegations set forth in paragraphs 1 through
43 as though fully set forth herein.
45. The Settlement Agreement entered into between YETI and Wal-Mart created a
valid and enforceable contract between the parties.
46. YETI has fulfilled its obligations and satisfied all conditions precedent under the
Settlement Agreement, including agreeing to dismiss YETIs prior pending lawsuit against Wal-
Mart.
47. Wal-Marts continued advertisement, marketing, promotion, offers for sale, sales,
and/or distribution of the Accused Products and infringing products constitutes a failure to
perform expressed obligations under the Settlement Agreement, and is therefore a breach of at
least Sections C.1, C.2, C.3, C.4, and C.5 of the Settlement Agreement.
48. Walmart also failed to provide and continues to fail to provide the notices,
confirmation and validations that Wal-Mart agreed to provide in Section C.3 of the Settlement
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Agreement. These failures constitute failures to perform expressed obligations under the
Settlement Agreement.
49. YETI has been injured and has lost one or more sales as a direct result of Wal-
Marts breach of the Settlement Agreement, and will continue to be injured, lose sales, and suffer
irreparable harm to its business, business reputation and intellectual property rights.
Count II:
Trademark Dilution Under Tex. Bus. & Com. Code 16.103
51. Based on the activities described above, including, for example, Wal-Marts use
of YETIs Trademarks, including through counterfeits, reproductions, copies, and/or colorable
imitations thereof, Wal-Mart is likely to dilute, has diluted, and continues to dilute YETIs
Trademarks in violation of 16.103 of the Texas Business & Commerce Code. Wal-Marts use
imitations thereof is likely to cause, and has caused, dilution of YETIs famous trademarks at
least by eroding the publics exclusive identification of YETIs Trademarks with YETI, by
lessening the capacity of YETIs famous trademarks to identify and distinguish YETIs products,
by associating YETIs Trade Dress with products of inferior quality, and by impairing the
distinctness of YETIs famous trademarks.
52. YETIs Trademarks are famous and are entitled to protection under Texas law.
YETI has extensively and continuously promoted and used its trademarks in the United States
and in the State of Texas. Through that extensive and continuous use, YETIs Trademarks have
become famous and well-known indicators of the origin and quality of YETIs products in the
United States and in the State of Texas and in geographic areas in Texas, and YETIs
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Trademarks are widely recognized by the public throughout Texas and in geographic areas in
Texas as a designation of the source of YETI and YETIs products. YETIs Trademarks have
also acquired substantial secondary meaning in the marketplace, including in the State of Texas
and in geographic areas in Texas. Moreover, YETIs Trademarks became famous and acquired
this secondary meaning before Wal-Mart commenced their unlawful use of YETIs Trademarks
in connection with the Accused Products and infringing products.
53. Wal-Marts use of YETIs Trademarks, including through counterfeits,
reproductions, copies, and/or colorable imitations thereof has caused, and, unless enjoined, will
continue to cause, substantial and irreparable injury to YETI for which YETI has no adequate
remedy at law, including at least substantial and irreparable injury to the goodwill and reputation
for quality associated with YETIs Trademarks, YETIs products, and YETI.
54. On information and belief, Wal-Marts use of YETIs Trademarks, including
through counterfeits, reproductions, copies, and/or colorable imitations thereof, has been
intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least by Wal-Marts
unlawful use of YETIs Trademarks to sell the Accused Products and infringing products, and by
Wal-Marts continuing disregard for YETIs rights.
55. YETI is entitled to injunctive relief, and YETI is also entitled to recover at least
Wal-Marts profits, YETIs actual damages, enhanced profits and damages, and reasonable
attorney fees under at least Tex. Bus. & Com. Code 16.104.
Count III:
Trade Dress Dilution Under Tex. Bus. & Com. Code 16.103
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57. Based on the activities described above, including, for example, Wal-Marts
advertising, promoting, offering to sell, selling, distributing, manufacturing, and/or importing the
Accused Products and infringing products, Wal-Mart is likely to dilute, have diluted, and
continue to dilute YETIs Trade Dress in violation of 16.103 of the Texas Business &
Commerce Code. Wal-Marts use of YETIs Trade Dress, including through counterfeits,
reproductions, copies, and/or colorable imitations thereof, is likely to cause, and has caused,
dilution of YETIs famous trade dress at least by eroding the publics exclusive identification of
YETIs famous trade dress with YETI, by lessening the capacity of YETIs famous trade dress to
identify and distinguish YETIs products, by associating YETIs trade dress with products of
inferior quality, and by impairing the distinctiveness of YETIs famous trade dress.
58. YETIs trade dress is famous and is entitled to protection under Texas law.
YETIs Trade Dress includes unique, distinctive, and non-functional designs. YETI has
extensively and continuously promoted and used its trade dress in the United States and in the
State of Texas. Through that extensive and continuous use, YETIs Trade Dress has become
famous and well-known indicators of the origin and quality of YETIs products in the United
States and in the State of Texas generally and in geographic areas in Texas, and YETIs Trade
Dress is widely recognized by the public throughout Texas and in geographic areas in Texas as
designations of the source of YETI and YETIs products. YETIs Trade Dress also has acquired
substantial secondary meaning in the marketplace, including in the State of Texas and in
geographic areas in Texas. Moreover, YETIs Trade Dress became famous and acquired this
secondary meaning before Wal-Mart commenced its unlawful use of YETIs Trade Dress in
connection with the Accused Products and infringing products.
26
59. Wal-Marts use of YETIs Trade Dress, including through counterfeits,
reproductions, copies, and/or colorable imitations thereof, has caused, and, unless enjoined, will
for quality associated with YETIs Trade Dress with YETI and YETIs drinkware products.
60. On information and belief, Wal-Marts use of YETIs Trade Dress, including
through counterfeits, reproductions, copies, and/or colorable imitations thereof has been
intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least by the similarity of
the Accused Products and infringing products to YETIs Trade Dress, as demonstrated in, for
example, Illustrations 1-3 and Illustrations 10-19 above, and by Wal-Marts continuing disregard
for YETIs rights.
Wal-Marts profits, actual damages, enhanced profits and damages, and reasonable attorney fees
under at least Tex. Bus. & Com. Code 16.104.
Count IV:
Trademark Infringement under 32(1) of the Lanham Act, 15 U.S.C. 1114(1)
63. Based on the activities described above, including, for example, Wal-Mart using
YETIs federally registered trademarks, including at least the trademarks protected by the 869
Registration, the 370 Registration, the 371 Registration, the 419 Registration, the 441
Registration, and the 725 Registration, including through counterfeits, reproductions, copies,
and/or colorable imitations thereof, in connection with advertising, promoting, offering for sale,
selling, distributing, manufacturing, and/or importing the Accused Products and infringing
27
products, Wal-Mart has infringed YETIs registered trademarks under 32(1) of the Lanham
Act, 15 U.S.C. 1114(1). Wal-Marts use of YETIs Trademarks, including through
counterfeits, reproductions, copies, and/or colorable imitations thereof, is likely to cause
confusion, or to cause mistake, or to deceive.
reproductions, copies, and/or colorable imitations thereof, has caused and, unless enjoined, will
continue to cause substantial and irreparable injury to YETI for which YETI has no adequate
65. On information and belief, Wal-Marts use of YETIs Trademarks, through
counterfeits, reproductions, copies, and/or colorable imitations thereof, has been intentional,
willful, and malicious. Wal-Marts bad faith is evidenced at least by its unlawful use of YETIs
Trademarks in an effort to sell the Accused Products and infringing products, and by Wal-Marts
continuing disregard for YETIs rights.
66. YETI is entitled to injunctive relief, and YETI is entitled to recover at least Wal-
Marts profits, YETIs actual damages, enhanced damages, costs, and reasonable attorney fees
under at least 15 U.S.C. 1114(1), 1116, and 1117.
Count V:
Trademark Infringement Under 43(a) of the Lanham Act, 15 U.S.C. 1125(a)
imitations thereof, Wal-Mart violates 43(a) of the Lanham Act, 15 U.S.C. 1125(a). Wal-
28
Marts use of YETIs Trademark, including through counterfeits, reproductions, copies, and/or
colorable imitations thereof is likely to cause confusion, mistake, or deception as to the
affiliation, connection, and/or association of Wal-Mart with YETI and as to the origin,
sponsorship, and/or approval of the Accused Products and infringing products, at least by
creating the false and misleading impression that the Accused Products and infringing products
are manufactured by, authorized by, or otherwise associated with YETI.
69. YETIs Trademarks are entitled to protection under the Lanham Act. YETIs
Trademarks are inherently distinctive. YETI has extensively and continuously promoted and
used its trademarks in the United States. Through that extensive and continuous use, YETIs
Trademarks have become well-known indicators of the origin and quality of YETIs products.
YETIs Trademarks have also acquired substantial secondary meaning in the marketplace.
Moreover, YETIs Trademarks acquired this secondary meaning before Wal-Mart commenced
their unlawful use of YETIs Trademarks in connection with the Accused Products and
infringing products.
reproductions, copies, and/or colorable imitations thereof has caused and, unless enjoined, will
29
unlawful use of YETIs Trademarks to sell the Accused Products and infringing products and by
under at least 15 U.S.C. 1125(a), 1116, and 1117.
Count VI:
Trade Dress Infringement Under 43(a) of the Lanham Act, 15 U.S.C. 1125(a)
74. Wal-Marts advertisements, promotions, offers to sell, sales, distribution,
manufacture, and/or importing of the Accused Products and infringing products violate 43(a)
of the Lanham Act, 15 U.S.C. 1125(a) by infringing YETIs Trade Dress. Wal-Marts use of
YETIs Trade Dress, including through counterfeits, reproductions, copies, and/or colorable
imitations thereof is likely to cause confusion, mistake, or deception as to the affiliation,
connection, and/or association of Wal-Mart with YETI and as to the origin, sponsorship, and/or
approval of the Accused Products and infringing products, at least by creating the false and
misleading impression that the Accused Products and infringing products are manufactured by,
authorized by, or otherwise associated with YETI.
75. YETIs Trade Dress is entitled to protection under the Lanham Act. YETIs
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, YETIs Trade Dress has become a well-known indicator of the origin and quality
of YETIs products. YETIs Trade Dress has also acquired substantial secondary meaning in the
marketplace. Moreover, YETIs Trade Dress acquired this secondary meaning before Wal-Mart
30
commenced its unlawful use of YETIs Trade Dress in connection with the Accused Products
and infringing products.
reproductions, copies, and/or colorable imitations thereof, has caused and, unless enjoined, will
for quality associated with YETIs Trade Dress, with YETI, and YETIs drinkware products.
for YETIs rights.
under at least 15 U.S.C. 1125(a), 1116, and 1117.
Count VII:
Trademark Dilution under 43(c) of the Lanham Act, 15 U.S.C. 1125(c)
imitations thereof, Wal-Mart is likely to dilute, has diluted, and continues to dilute YETIs
famous trademarks in violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c). Wal-Marts
31
use of YETIs Trademarks, including through counterfeits, reproductions, copies, and/or
colorable imitations thereof, is likely to cause, and has caused, dilution of YETIs famous
trademarks at least by eroding the publics exclusive identification of YETIs famous trademarks
with YETI and YETIs products, by lessening the capacity of YETIs famous trademarks to
identify and distinguish YETIs products, by associating YETIs Trademarks with products of
inferior quality, and by impairing the distinctiveness of YETIs famous trademarks.
81. YETIs Trademarks are famous and are entitled to protection under the Lanham
Act. YETIs Trademarks have acquired distinctiveness through YETIs extensive and
continuous promotion and use of YETIs Trademarks in the United States. Through that
extensive and continuous use, YETIs Trademarks have become famous well-known indicators
of the origin and quality of YETIs products throughout the United States, and are widely
recognized by the general consuming public as a designation of the source of YETI and YETIs
products. YETIs Trademarks have also acquired substantial secondary meaning in the
marketplace. Moreover, YETIs Trademarks became famous and acquired this secondary
meaning before Wal-Mart commenced their unlawful use of YETIs Trademarks in connection
with the Accused Products and infringing products.
32
Wal-Marts profits, YETIs actual damages, enhanced profits and damages, costs, and reasonable
attorney fees under at least 15 U.S.C. 1125(c), 1116, and 1117.
Count VIII:
Trade Dress Dilution Under 43(c) of the Lanham Act, 15 U.S.C. 1125(c)
86. Based on the activities described above, including, for example, Wal-Marts
advertising, marketing, promoting, offering for sale, selling, distributing, manufacturing, and/or
importing the Accused Products and infringing products, Wal-Mart is likely to dilute has diluted,
and continue to dilute YETIs famous trade dress in violation of 43(c) of the Lanham Act, 15
U.S.C. 1125(c). Wal-Marts use of YETIs Trade Dress, including through counterfeits,
reproductions, copies, and/or colorable imitations thereof, is likely to cause, and has caused,
dilution of YETIs famous trade dress, at least by eroding the publics exclusive identification of
YETIs famous trade dress with YETI and YETIs products, by lessening the capacity of YETIs
famous trade dress to identify and distinguish YETIs products, by associating YETIs Trade
Dress with products of inferior quality, and by impairing the distinctiveness of YETIs famous
trade dress
87. YETIs Trade Dress is famous and is entitled to protection under the Lanham Act.
YETIs Trade Dress includes unique, distinctive, and non-functional designs. YETIs Trade
Dress has acquired distinctiveness through YETIs extensive and continuous promotion and use
33
of YETIs Trade Dress in the United States. Through that extensive and continuous use, YETIs
Trade Dress has become a famous well-known indicator of the origin and quality of YETIs
products throughout the United States, and is widely recognized by the general consuming public
as a designation of the source of YETI and YETIs products. YETIs Trade Dress has also
acquired substantial secondary meaning in the marketplace. Moreover, YETIs Trade Dress
became famous and acquired this secondary meaning before Wal-Mart commenced its unlawful
use of YETIs Trade Dress in connection with the Accused Products and infringing products.
for YETIs rights.
Wal-Marts profits, actual damages, enhanced profits and damages, costs, and reasonable
attorney fees under at least 15 U.S.C. 1125(c), 1116, and 1117.
34
Count IX:
Unfair Competition and False Designation of Origin Under 43(a)
of the Lanham Act, 15 U.S.C. 1125(a)
92. Wal-Marts advertisements, marketing, promotions, offers to sell, sales,
distribution, manufacture, and/or importing of the Accused Products and infringing products, in
direct competition with YETI, violate 43(a) of the Lanham Act, 15 U.S.C. 1125(a) and
constitute unfair competition, false advertising, and false designation of origin, at least because
Wal-Mart has obtained an unfair advantage as compared to YETI through Wal-Marts use of
YETIs Trademarks and YETIs Trade Dress and because such uses are likely to cause consumer
confusion as to the origin and/or sponsorship/affiliation of Wal-Marts Accused Products and
infringing products, at least by creating the false and misleading impression that the Accused
Products and infringing products are manufactured by, authorized by, or otherwise associated
with YETI.
93. YETIs Trademarks and YETIs Trade Dress are entitled to protection under the
Lanham Act. YETIs Trade Dress includes unique, distinctive, and non-functional designs.
YETI has extensively and continuously promoted and used its trademarks and trade dress in the
United States. Through that extensive and continuous use, YETIs Trademarks and YETIs
Trade Dress have become well-known indicators of the origin and quality of YETIs products.
YETIs Trademarks and YETIs Trade Dress have also acquired substantial secondary meaning
in the marketplace. Moreover, YETIs Trademarks and YETIs Trade Dress acquired this
secondary meaning before Wal-Mart commenced its unlawful use of YETIs Trademarks and
YETIs Trade Dress in connection with the Accused Products and infringing products.
35
94. Wal-Marts use of YETIs Trademarks and YETIs Trade Dress, including
through counterfeits, reproductions, copies, and/or colorable imitations thereof has caused and,
unless enjoined, will continue to cause substantial and irreparable injury to YETI for which
YETI has no adequate remedy at law, including at least substantial and irreparable injury to the
goodwill and reputation for quality associated with YETIs Trademarks and YETIs Trade Dress,
with YETI, and YETIs drinkware products.
95. On information and belief, Wal-Marts use of YETIs Trademarks and YETIs
Trade Dress, including through counterfeits, reproductions, copies, and/or colorable imitations
thereof, has been intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least
by the similarity of the Accused Products and infringing products to YETIs Trademarks and
YETIs Trade Dress, as demonstrated in, for example, Illustrations 1-3 and Illustrations 10-19
above, and by Wal-Marts continuing disregard for YETIs rights.
Wal-Marts profits, YETIs actual damages, enhanced damages, costs, and reasonable attorney
fees under at least 15 U.S.C. 1125(a), 1116, and 1117.
Count X
Copyright Infringement Under 17 U.S.C. 501
98. Based on the activities described above, including, for example, copying,
reproducing, making, displaying, distributing, using, and/or preparing derivative works of
YETIs Copyrightsand doing so to help advertise, promote, offer for sale, sell, distribute,
manufacture, and/or import its infringing productsWal-Mart has infringed YETIs Copyrights
in violation of at least 17 U.S.C. 501.
36
99. Wal-Marts acts of infringement are willful. Wal-Marts bad faith is evidenced at
least by Wal-Marts direct copying of YETIs Copyrights, and Wal-Mart then using these copies
to, inter alia, advertise, market, promote, offer for sale, sell, distribute, manufacture, and/or
import Wal-Marts drinkware. Wal-Marts bad faith is further evidenced by Wal-Marts
infringement of YETIs other rights, and Wal-Marts continuing disregard for YETIs rights.
100. Each infringement by Wal-Mart of YETIs Copyrights constitutes a separate and
distinct act of infringement.
101. Wal-Marts infringement of YETIs Copyrights has caused irreparable injury to
YETI.
YETIs actual damages and/or Wal-Marts profits under 17 U.S.C. 504(b), or in the alternative
statutory damages under 17 U.S.C. 504(c), and costs at least under 17 U.S.C. 505.
Count XI:
Patent Infringement Under 35 U.S.C. 271
104. Wal-Mart has infringed and upon information and belief will continue to infringe
the 397 patent at least by using, selling, and offering to sell, making and/or importing the Wal-
Mart Koozie beverage holders, which are covered by the claim of the 397 patent.
105. Wal-Marts acts of infringement have been without express or implied license by
YETI, are in violation of YETIs rights, and will continue unless enjoined by this Court.
106. On information and belief, Wal-Marts infringement has been, and continues to
be, deliberate, intentional, and willful.
37
107. On information and belief, this is an exceptional case in view of, inter alia, Wal-
Marts unlawful activities, including Wal-Marts deliberate, intentional and willful infringement.
108. YETI has been, is being, and will continue to be injured and has suffered, is
suffering, and will continue to suffer injury and damages for which it is entitled to relief at least
under at least 35 U.S.C. 281, 284, 285, and 289.
109. Wal-Mart also has caused, is causing, and will continue to cause irreparable harm
to YETI for which there is no adequate remedy at law and for which YETI is entitled to
injunctive relief under at least 35 U.S.C. 283.
Count XII
Common Law Trademark Infringement
111. Wal-Marts activities described above, including, for example, Wal-Marts use of
YETIs Trademarks, including through counterfeits, reproductions, copies, and/or colorable
imitations thereof, in direct competition with YETI, constitute common law trademark
infringement, at least because Wal-Marts use of YETIs Trademarks including through
counterfeits, reproductions, copies, and/or colorable imitations thereof is likely to cause
consumer confusion as to the origin and/or sponsorship/affiliation of the Accused Products and
infringing products, at least by creating the false and misleading impression that the Accused
Products and infringing products are manufactured by, authorized by, or otherwise associated
with YETI.
112. YETIs Trademarks are entitled to protection under the common law. YETI has
extensively and continuously promoted and used its trademarks in the United States and the State
of Texas. Through that extensive and continuous use, YETIs Trademarks have become well-
38
known indicators of the origin and quality of YETIs products. YETIs Trademarks have also
acquired substantial secondary meaning in the marketplace. Moreover, YETIs Trademarks
acquired this secondary meaning before Wal-Mart commenced their unlawful use of YETIs
Trademarks in connection with the Accused Products and infringing products.
YETIs damages, Wal-Marts profits, punitive damages, costs, and reasonable attorney fees.
Count XIII:
Common Law Trade Dress Infringement
direct competition with YETI, constitute common law trade dress infringement, at least because
Wal-Marts use of YETIs Trade Dress, including through counterfeits, reproductions, copies,
39
and/or colorable imitations thereof, is likely to cause consumer confusion as to the origin and/or
sponsorship/affiliation of the Accused Products and infringing products, at least by creating the
false and misleading impression that the Accused Products and infringing products are
manufactured by, authorized by, or otherwise associated with YETI.
118. YETIs Trade Dress is entitled to protection under the common law. YETIs
Trade Dress includes unique, distinctive, and non-functional designs. YETI has extensively and
continuously promoted and used its Trade Dress in the United States and the State of Texas.
Through that extensive and continuous use, YETIs Trade Dress has become well-known
indicators of the origin and quality of YETIs products. YETIs Trade Dress has also acquired
substantial secondary meaning in the marketplace. Moreover, YETIs Trade Dress acquired this
secondary meaning before Wal-Mart commenced its unlawful use of YETIs Trade Dress in
for YETIs rights.
40
Count XIV:
Common Law Unfair Competition
direct competition with YETI, constitute common law unfair competition, at least by palming
off/passing off of Wal-Marts goods, by simulating YETIs Trademarks and YETIs Trade Dress
in an intentional and calculated manner that is likely to cause consumer confusion as to origin
and/or sponsorship/affiliation of the Accused Products and infringing products, at least by
creating the false and misleading impression that the Accused Products and infringing products
are manufactured by, authorized by, or otherwise associated with YETI. Wal-Mart has also
interfered with YETIs business.
124. YETIs Trademark and Trade Dress are entitled to protection under the common
law. YETIs Trade Dress includes unique, distinctive, and non-functional designs. YETIs
Trademarks are inherently distinctive. YETI has extensively and continuously promoted and
used YETIs Trademarks and YETIs Trade Dress for years in the United States and the State of
Texas. Through that extensive and continuous use, YETIs Trademarks and YETIs Trade Dress
have become well-known indicators of the origin and quality of YETIs products. YETIs
Trademarks and YETIs Trade Dress have also acquired substantial secondary meaning in the
marketplace. Moreover, YETIs Trademarks and YETIs Trade Dress acquired this secondary
41
meaning before Wal-Mart commenced its unlawful use of YETIs Trademarks and YETIs Trade
Dress in connection with the Accused Products and infringing products.
125. On information and belief, Wal-Marts use of YETIs Trademark and YETIs
thereof, has caused and, unless enjoined, will continue to cause substantial and irreparable injury
to YETI for which YETI has no adequate remedy at law, including at least substantial and
irreparable injury to the goodwill and reputation for quality associated with YETIs Trademarks,
YETIs Trade Dress, with YETI, and YETIs drinkware products.
126. On information and belief, Wal-Marts use of YETIs Trademarks and YETIs
thereof, has been intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least
by the similarity of the Accused Products and infringing products to YETIs Trademarks and
YETIs Trade Dress, as demonstrated in, for example, Illustrations 1-3 and Illustrations 10-19
above, and by Wal-Marts continuing disregard for YETIs rights.
Count XV:
Common Law Misappropriation
direct competition with YETI, constitute common law misappropriation.
42
130. YETI created the products covered by YETIs Trademarks and YETIs Trade
Dress through extensive time, labor, effort, skill, and money. Wal-Mart has wrongfully used
YETIs Trademarks and YETIs Trade Dress, including through counterfeits, reproductions,
copies, and/or colorable imitations thereof, in competition with YETI and gained a special
advantage because Wal-Mart was not burdened with the expenses incurred by YETI. Wal-Mart
has commercially damaged YETI, at least by causing consumer confusion as to origin and/or
sponsorship/affiliation of the Accused Products and infringing products, by creating the false and
misleading impression that the Accused Products and infringing products are manufactured by,
authorized by, or otherwise associated with YETI, and by taking away sales that YETI would
have made.
common law. YETIs Trade Dress include unique, distinctive, and non-functional designs.
YETI has extensively and continuously promoted and used YETIs Trademarks and YETIs
Trade Dress for years in the United States and the State of Texas. Through that extensive and
continuous use, YETIs Trademarks and YETIs Trade Dress have become a well-known
indicator of the origin and quality of YETIs insulated drinkware products. YETIs Trademarks
and YETIs Trade Dress have also acquired substantial secondary meaning in the marketplace.
Moreover, YETIs Trademarks and YETIs Trade Dress acquired this secondary meaning before
Wal-Mart commenced its unlawful use of YETIs Trademarks and YETIs Trade Dress in
through counterfeits, reproductions, copies, and/or colorable imitations thereof, has caused and,
unless enjoined, will continue to cause substantial and irreparable commercial injury to YETI for
43
which YETI has no adequate remedy at law, including at least substantial and irreparable injury
to the goodwill and reputation for quality associated with YETIs Trademarks and YETIs Trade
Dress with YETI and YETIs products. Moreover, as a result of its misappropriation, Wal-Mart
has profited and, unless such conduct is enjoined by this Court, will continue to profit by
misappropriating the time, effort, and money that YETI invested in establishing the reputation
and goodwill associated with YETIS Trademarks and YETIs Trade Dress with YETI and
YETIs products.
133. On information and belief, Wal-Marts misappropriation of YETIs Trademarks
and YETIs Trade Dress, including through counterfeits, reproductions, copies, and/or colorable
imitations thereof, has been intentional, willful, and malicious. Wal-Marts bad faith is
evidenced at least by the similarity of the Accused Products and infringing products to YETIs
Trademarks and YETIs Trade Dress, as demonstrated in, for example, Illustrations 1-3 and
Illustrations 10-19 above, and by Wal-Marts continuing disregard for YETIs rights.
Count XVI:
Unjust Enrichment
direct competition with YETI, constitute unjust enrichment, at least because Wal-Mart has
wrongfully obtained benefits at YETIs expense. Wal-Mart has also, inter alia, operated with an
undue advantage.
44
137. YETI created the products covered by YETIs Trademarks and YETIs Trade
Dress through extensive time, labor, effort, skill, and money. Wal-Mart has wrongfully used and
is wrongfully using YETIs Trademarks and YETIs Trade Dress, including through counterfeits,
reproductions, copies, and/or colorable imitations thereof, in competition with YETI, and has
gained and is gaining a wrongful benefit by undue advantage through such use. Wal-Mart has
not been burdened with the expenses incurred by YETI, yet Wal-Mart is obtaining the resulting
benefits for its own business and products.
common law. YETIs Trade Dress includes unique, distinctive, and non-functional designs.
YETI has extensively and continuously promoted and used YETIs Trademarks and YETIs
Trade Dress for years in the United States and the State of Texas. Through that extensive and
continuous use, YETIs Trademarks and YETIs Trade Dress have become well-known
indicators of the origin and quality of YETIs insulated drinkware products. YETIs Trademarks
and YETIs Trade Dress have also acquired substantial secondary meaning in the marketplace.
Moreover, YETIs Trademarks and YETIs Trade Dress acquired this secondary meaning before
Wal-Mart commenced its unlawful use of YETIs Trademarks and YETIs Trade Dress and
colorable imitations thereof in connection with the Accused Products and infringing products.
through counterfeits, reproductions, copies, and/or colorable imitations thereof, has caused and,
unless enjoined, will continue to cause substantial and irreparable commercial injury to YETI for
which YETI has no adequate remedy at law, including at least substantial and irreparable injury
to the goodwill and reputation for quality associated with YETIs Trademarks and YETIs Trade
Dress with YETI and YETIs products. YETI accumulated this goodwill and reputation through
45
extensive time, labor, effort, skill, and investment. Wal-Mart has wrongfully obtained and is
wrongfully obtaining a benefit at YETIs expense by taking undue advantage and free-riding on
YETIs efforts and investments, and enjoying the benefits of YETIs hard-earned goodwill and
reputation.
140. On information and belief, Wal-Marts unjust enrichment at YETIs expense has
been intentional, willful, and malicious. Wal-Marts bad faith is evidenced at least by the
similarity of the Accused Products and infringing products to YETIs Trademarks and YETIs
Trade Dress, as demonstrated in, for example, Illustrations 1-3 and Illustrations 10-19 above, and
by Wal-Marts continuing disregard for YETIs rights.
Wal-Marts profits.
Demand for Jury Trial
142. YETI hereby demands a jury trial on all issues so triable.
Relief Sought
WHEREFORE, Plaintiff respectfully prays for:
1. A judgment that Wal-Mart has breached the Settlement Agreement and is liable to
YETI for breach of contract;
2. An award of damages adequate to compensate YETI for Wal-Marts breach of the
Settlement Agreement;
3. An Order permanently enjoining Wal-Mart, its officers, directors, agents,
servants, employees, attorneys, and all others in active concert or participation with Wal-Mart,
directly or indirectly, from continued breach of the Settlement Agreement;
46
4. An award to YETI of its reasonable attorneys fees incurred with respect to
enforcement of the Settlement Agreement;
5. Judgment that Wal-Mart has (i) diluted YETIs Trademarks and YETIs Trade
Dress in violation of Tex. Bus. & Com. Code 16.103; (ii) infringed YETIs Trademarks in
violation of 1114(1) of Title 15 in the United States Code; (iii) infringed YETIs Trademarks
and Trade Dress in violation of 1125(a) of Title 15 in the United States Code; (iv) diluted
YETIs Trademarks and YETIs Trade Dress in violation of 1125(c) of Title 15 in the United
States Code; (v) engaged in unfair competition and false designation of origin in violation of
1125(a) of Title 15 in the United States Code; (vi) YETIs Copyrights in violation of 501 of
Title 17 in the United States Code; (vii) infringed the 397 patent in violation of 271 of Title 35
in the United States Code; (viii) violated YETIs common law rights in YETIs Trademarks and
YETIs Trade Dress; (ix) engaged in common law unfair competition; (x) engaged in common
law misappropriation; and (xi) been unjustly enriched at YETIs expense, and that these
wrongful activities by Wal-Mart were willful;
6. An injunction against further infringement and dilution of YETIs Trademarks,
further infringement and dilution of YETIs Trade Dress, further infringement of the 397 patent,
further acts of unfair competition, misappropriation, unjust enrichment, further infringement of
YETIs Copyrights by Wal-Mart, and each of its agents, employees, servants, attorneys,
successors and assigns, and all others in privity or acting in concert with any of them, including
at least from selling, offering to sell, distributing, importing, or advertising the Accused Products
and infringing products, or any other products that use a copy, reproduction, or colorable
imitation of the 397 patent, YETIs Trademarks, YETIs Trade Dress, and/or YETIs
47
Copyrights, pursuant to at least 15 U.S.C. 1116, 17 U.S.C. 502, 35 U.S.C. 283, and Tex.
Bus. & Com. Code 16.104;
7. An Order that Wal-Mart pay YETI for all profits and damages resulting from
Wal-Marts infringing activities and that the award to YETI be trebled, as provided for under 15
U.S.C. 1117, or, at YETIs election, that YETI be awarded statutory damages from Wal-Mart
in the amount of $2,000,000.00 per counterfeit mark per type of goods sold, as provided by at
least 15 U.S.C. 1117(c);
8. An Order directing Wal-Mart to recall all Accused Products and infringing
products sold and/or distributed and provide a full refund for all recalled Accused Products and
infringing products;
9. An Order directing the destruction of (i) all Accused Products and infringing
products, including all recalled Accused Products and infringing products, (ii) any other products
that use a copy, reproduction, or colorable imitation of YETIs Trademarks or YETIs Trade
Dress in Wal-Marts possession or control, (iii) all plates, molds, and other means of making the
Accused Products and infringing products in Wal-Marts possession, custody, or control, and (iv)
all advertising materials related to the Accused Products and infringing products in Wal-Marts
possession, custody, or control, including on the Internet, pursuant to at least 15 U.S.C. 1118;
10. An Order directing Wal-Mart to publish a public notice providing proper
attribution of YETIs Trademarks, YETIs Trade Dress, and YETIs Copyrights to YETI, and to
provide a copy of this notice to all customers, distributors, and/or others from whom the Accused
Products and infringing products are recalled;
11. An Order barring importation of the Accused Products and infringing products
and/or colorable imitations thereof into the United States, and barring entry of the Accused
48
Products and infringing products and/or colorable imitations thereof into any customhouse of the
United States, pursuant to at least 15 U.S.C. 1125(b);
12. An award of Wal-Marts profits, YETIs actual damages, enhanced damages,
exemplary damages, costs, prejudgment and post judgment interest, and reasonable attorney fees
pursuant to at least 15 U.S.C. 1114(1), 1125(a), 11125(c), 1116, and 1117, Texas common
law, and Tex. Bus. & Com. Code 16.104;
13. An award of YETIs actual damages and/or Wal-Marts profits, or in the
alternative statutory damages under, and costs pursuant to 17 U.S.C. 504(b, c) and 505;
14. An award of damages to compensate YETI for the patent infringements that have
occurred pursuant to 35 U.S.C. 284, or an award of Wal-Marts profits from their patent
infringements pursuant to 35 U.S.C. 289, together with prejudgment interest and costs and
reasonable attorney fees, pursuant to 35 U.S.C. 284 and 285; and
15. Such other and further relief as this Court deems just and proper.
Dated: December 8, 2017 Respectfully submitted,
By: /s/ Joseph J. Berghammer

Joseph R. Knight
Texas Bar No. 11601275
jknight@ebbklaw.com
Ewell, Brown, Blanke, & Knight LLP
111 Congress Avenue
Suite 2800
Austin, Texas 78701
Telephone: (512) 770-4010
Facsimile: (512) 684-7681
Joseph J. Berghammer (admitted in the Western

District of Texas)
Illinois Bar No. 6273690
49
jberghammer@bannerwitcoff.com
Marc S. Cooperman (admitted in the Western
District of Texas)
mcooperman@bannerwitcoff.com
Kevin Dam (pro hac vice forthcoming)
kdam@bannerwitcoff.com
Banner & Witcoff, Ltd.
Ten South Wacker Drive
Suite 3000
Chicago, IL 60606-7407
Telephone: (312) 463-5000
Facsimile: (312) 463-5001
ATTORNEYS FOR YETI COOLERS, LLC
50
Case 1:17-cv-01145 Document 1-1 Filed 12/08/17 Page 1 of 2
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4
EXHIBIT 5
Reg. No. 5,233,441 YETI COOLERS, LLC (DELAWARE LIMITED LIABILITY COMPANY)
5301 Southwest Parkway, Suite 200
Registered Jun. 27, 2017 Austin, TX 78735
CLASS 21: Beverageware; cups; drinking glasses; tumblers for use as drinking vessels; jugs;
Int. Cl.: 21 mugs; temperature-retaining drinking vessels; storage containers for household or domestic
use, namely, vacuum container for hot or cold food and drink; beer growlers; insulated food
Trademark and drink containers; stainless steel tumblers for use as drinking vessels; stainless steel
drinking glasses; stainless steel beverageware; drinking straws
Principal Register
FIRST USE 3-31-2014; IN COMMERCE 3-31-2014
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

PARTICULAR FONT STYLE, SIZE OR COLOR
OWNER OF U.S. REG. NO. 4831955, 4871725
SER. NO. 86-908,950, FILED 02-16-2016

NANCY G ULRICH, EXAMINING ATTORNEY
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. 1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. 1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. 1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. 1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5233441
EXHIBIT 6
EXHIBIT 7
US00D752397S
(12) United States Design Patent do Patent No.: US D752,397 S

Seiders et al. (45) Date of Patent: ::: Mar. 29, 2016
(54) BEVERAGE HOLDER OTHER PUBLICATIONS

(71) Applicant: YETI Coolers, LLC, Austin, TX (US) Hooler the handheld cooler, published on Apr. 12, 2014, retrieved
from https://web.archive.org/web/20140412062054/http://www.
(72) Inventors: Roy Joseph Seiders, Austin, TX (US); hoolercooler.com/ on Aug. 4, 2015.
John Alan Tolman, Austin, TX (US)
* cited by examiner
(73) Assignee: YETI Coolers, LLC, Austin, TX (US)
Primary Examiner Terry Wallace
(**) Term: 14 Years 74) Attorney,
ey, Agent,
Ag or Firm Banner & Witcoff, Ltd.
(21) Appl. No. 29/500,908
(22) Filed: Aug. 29, 2014 (57) CLAIM
(51) LOC (10) Cl. ................................................ 0706 The ornamental design for a beverage holder, as shown and
(52) U.S. CI. described.
USPC .......................................... D7/624.2; D7/608
(58) Field of Classification Search
USPC ....................................... D7/70 708; D9/455
CPC ........... B65D 81/3881; B65D 81/3886; A47G DESCRIPTION
23/0241; A47G 23/0266; A47G 19/2288 - - - -
See application file for complete search history. FIG. 1 is a top, front, right perspective view of a beverage
holder showing our new design;
(56) References Cited FIG. 2 is a front view thereof;
FIG. 3 is a right side view thereof;
|U.S. PATENT DOCUMENTS FIG. 4 is a rear view thereof;
D455,052 S
5
4/2002 Gullick tal
ll III.C.KSOIn e .
FIG. 5 is a left side view thereof.
- - -
D455,612 S
6,626,326 B2
4/2002 Gullickson et al.
9/2003 Murakami
FIG. 6 is a top view thereof, and
FIG. 7 is a bottom view thereof.
8,251,247 B1 * 8/2012 Breckner ........... A47G 23/0241
220/592.16 1 Claim, 4 Drawing Sheets
U.S. Patent Mar. 29, 2016 Sheet 1 of 4 US D752,397 S

;
f
g
EXHIBIT 8
EXHIBIT 9
EXHIBIT 10
EXHIBIT 11
EXHIBIT 12

Yeti Coolers v. Walmart - Complaint

Uploaded by

Yeti Coolers v. Walmart - Complaint

Uploaded by

Case 1:17-cv-01145 Document 1 Filed 12/08/17 Page 1 of 50

UNITED STATES DISTRICT COURT

YETI Coolers, LLC, Case No. 1:17-CV-01145

Plaintiff, COMPLAINT FOR DAMAGES AND

Jury Trial Demanded

(Wal-Mart) alleges as follows:

2. Upon information and belief, Wal-Mart Stores, Inc. is a corporation organized

web site www.walmart.com.

Jurisdiction and Venue

infringement, misappropriation, unjust enrichment, and copyright infringement. This action

and state common law, including the law of Texas.

6. Venue is proper in this District pursuant to at least 28 U.S.C. 1391(a)-(d),

Marts settlement or related to their Settlement Agreement.

General Allegations YETIs Business and Intellectual Property

9. The designs of the Rambler Drinkware have distinctive and non-functional

Drinkware are collectively referred to as YETIs Trade Dress.

Illustration 1: Exemplary Images of a YETI 30 oz. Rambler Tumbler.

Illustration 2: Exemplary Images of a YETI 20 oz. Rambler Tumbler.

other and to other features.

Illustration 3: Exemplary Images of a YETI Rambler Colster Beverage Holder.

18. In view of YETIs extensive and continuous use of YETI, RAMBLER,

YETI, RAMBLER, YETI COLSTER, and YETI RAMBLER COLSTER as source

trademark registrations, including:

i. Trademark Registration No. 3,203,869 (the 869 Registration) for

YETI for portable coolers;

ii. Trademark Registration No. 4,948,370 (the 370 Registration) for

YETI for clothing;

iii. Trademark Registration No. 4,948,371 (the 371 Registration) for

YETI for clothing;

iv. Trademark Registration No. 4,833,419 (the 419 Registration) for

YETI COLSTER for stainless steel drink holders;

v. Trademark Registration No. 5,233,441 (the 441 Registration) for

RAMBLER for beverageware, cups, drinking glasses, tumblers for use

as drinking vessels, jugs, mugs, temperature-retaining drinking vessels,

storage containers for household or domestic use, namely, vacuum

drink containers, stainless steel tumblers for use as drinking vessels,

stainless steel drinking glasses, stainless steel beverageware, drinking

vi. Trademark Registration No. 4,871,725 (the 725 Registration) for

YETI RAMBLER COLSTER for stainless steel drink holders.

19. Collectively, these trademarks are referred to as YETIs Trademarks. Copies of

the trademark registrations are attached as Exhibits 1-6.

YETI, RAMBLER, YETI COLSTER, and YETI RAMBLER COLSTER, YETIs

YETI COLSTER, and YETI RAMBLER COLSTER trademarks as source identifiers of

exemplary figure from the 397 patent is shown in Illustration 4 below.

Illustration 4: Exemplary Figure from the 397 Patent.

The U.S. Copyright Office registered these copyrights as follows:

i. Copyright Registration No. VA 1-974-722 (the 722 Registration);

ii. Copyright Registration No. VA 1-974-730 (the 730 Registration);

iii. Copyright Registration No. VA 1-974-735 (the 735 Registration);

iv. Copyright Registration No. VA 1-974-732 (the 732 Registration); and

v. Copyright Registration No. VA 2-074-727 (the 727 Registration).

23. Collectively, these copyrights are referred to as YETIs Copyrights. Copies of

the copyright certificates are attached as Exhibits 8-12.

corresponding label is shown in Illustration 5 below.

Illustration 5: YETI Rambler Colster Label for the 722 Registration.

the corresponding label is shown in Illustration 6 below.

and the corresponding label is shown in Illustration 7 below.

and the corresponding label is shown in Illustration 8 below.

the corresponding label is shown in Illustration 9 below.

General Allegations Wal-Marts Unlawful Activities

Wal-Marts actions have all been without the authorization of YETI.

30. Illustrations 10-13 below show examples of Wal-Marts infringing products.

Illustration 10: Exemplary Image of Wal-Marts Koozie Infringing Product.

Illustration 11: Exemplary Image of Wal-Marts 30 oz. Infringing Product.

Illustration 12: Exemplary Image of Wal-Marts 20 oz. Infringing Product.

31. As a result of Wal-Marts activities related to the infringing products, there is a

and its products on the other hand.

before Wal-Mart began advertising, promoting, selling, offering to sell, distributing,

identified in the Settlement Agreement, Wal-Mart continues to unlawfully advertise, market,

of the Settlement Agreement and in violation of YETIs rights.

34. Illustrations 13-17 below show examples of Wal-Marts continued advertisement,

breach of the Settlement Agreement and in violation of YETIs rights:

Illustration 13: Exemplary Image of Wal-Mart Accused Product

Illustration 14: Exemplary Image of Wal-Mart Accused Product

Illustration 15: Exemplary Image of Wal-Mart Accused Product

Illustration 16: Exemplary Image of Wal-Mart Accused Product