Ass Armor v. Under Armour

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No. 15-20853-Civ-COOKE/TORRES

ASS ARMOR, LLC, et al., Plaintiffs, v. UNDER ARMOUR, INC. Defendant. __________________________________________/

FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT AND CANCELLATION OF FEDERAL TRADEMARK REGISTRATIONS

Come Now Plaintiffs, Casey Taryn, LLC (“Taryn”) and Ass Armor, LLC (“Ass Armor”)

(collectively “Plaintiffs”) and file this First Amended Complaint for Declaratory Judgment

and Cancellation of Federal Trademark Registrations against Defendant, Under Armour, Inc.

(“Defendant”) as of right pursuant to Federal Rule of Civil Procedure 15(a)(1), and state as

follows:

NATURE OF THE ACTION

1. This is an action for declaratory judgment arising under the laws of the United

States. Pursuant to the federal declaratory judgment statute, 28 U.S.C. §§ 2201 and 2202,

and the federal Trademark Act (the “Lanham Act”) 15 U.S.C. § 1121, Plaintiffs are seeking a

declaration that their trademarks do not infringe upon Defendant’s trademarks.

2. This action also seeks cancellation, pursuant to the Lanham Act, 15 U.S.C. §§

1064 and 1119, of the three federal trademark registrations for the trademarks registered

to Defendant consisting solely of the term “ARMOUR,” namely, U.S. Registration Nos.

4354067, 3963256, and 3766130. Copies of these registrations are attached hereto as

Exhibit A. Collectively, the foregoing three trademarks are referred to herein as the

“ARMOUR Marks.”

3. The term “ARMOUR,” which is the British spelling of the word “ARMOR,” is

descriptive of protective athletic and/or athletic wear and other protective gear, which on

Case 1:15-cv-20853-MGC Document 41 Entered on FLSD Docket 11/16/2015 Page 1 of 21

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its own and without any additional term(s), cannot serve as a trademark to the exclusion of

others. Accordingly, Plaintiffs request the ARMOUR Marks should be canceled.

PARTIES

4. Plaintiff, Ass Armor, LLC is a Florida limited liability company with a principal

place of business at 1000 S. Ocean Boulevard, Suite 105, Boca Raton, Florida 33432.

5. Plaintiff, Casey Taryn, LLC is a Florida limited liability company with a

principal place of business at 1000 S. Ocean Boulevard, Suite 105, Boca Raton, Florida 33432.

6. Defendant, Under Armour, Inc. is a Maryland corporation with its principal

place of business at 1020 Hull Street, Baltimore, Maryland 21230.

JURISDICTION AND VENUE

7. This Court has jurisdiction over this action pursuant to the Federal

Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, et seq., the federal question statute,

28 U.S.C. § 1331, and the Lanham Act, 15 U.S.C. §§ 1064 and 1119, et seq. This Court has

subject matter jurisdiction pursuant to 15 U.S.C. §§ 1119 and 1121, and 28 U.S.C. §§ 1331.

This Court has personal jurisdiction over Defendant because (i) Defendant has operated,

conducted, engaged in, or carried on a business venture from which this action arises in this

State, and the Southern District of Florida, within the meaning of Fla. Stat. §48.193(1)(a);

and/or (ii) Defendant has engaged in substantial and not isolated activity within this state,

and the Southern District of Florida, within the meaning of Fla. Stat. §48.193(f).

8. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b)(2), (c)(2),

because: (i) a substantial part of the events giving rise to this claim occurred in this judicial

district; (ii) Plaintiffs maintain their principal places of business in this judicial district; and

(iii) Defendant is subject to personal jurisdiction in this judicial district. Defendant operates

a Factory House store in this judicial district and further, upon information and belief,

Defendant markets, promotes, and has sold tens or hundreds of thousands of its products

affixed with trademarks that are the subject of this action through retail stores and via its

website to consumers located within this judicial district.

FACTUAL BACKGROUND

Ass Armor Trademarks

9. On April 12, 2013, Taryn filed an application with the United States Patent and

Trademark Office (“USPTO”) to register the word mark “ASS ARMOR” (Serial No.


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85/902,314) in International Class No. 28 for “a protective device worn for protection

against injury to one or both of the buttocks and the coccyx for use when engaging in athletic

activities.”

10. On April 12, 2013, Taryn filed an application with the USPTO for the word

mark “PROTECT YOUR ASSETS” in International Class No. 28 for “a protective device worn

for protection against injury to one or both of the buttocks and the coccyx for use when

engaging in athletic activities.” The word mark “PROTECT YOUR ASSETS” was registered

with the USPTO on February 17, 2015 (Registration No. 4,689,230).

11. On June 27, 2013, Taryn filed an application with the USPTO for the design

mark (Serial No. 85,971,961) in International Class No. 28 for “a protective

device worn for protection against injury to one or both of the buttocks and the coccyx for

use when engaging in athletic activities and protective wrist wear in the nature of wrist

guards for athletic use.”

12. The word mark “PROTECT YOUR ASSETS” is used in conjunction with the “ASS

ARMOR” word mark and the design mark:

13. Taryn licensed the word mark “ASS ARMOR,” the design mark

and the respective trademark applications and subsequent registrations to Ass Armor,

effective December 6, 2013.

14. The word marks and design mark listed in Paragraphs 9-13 will hereinafter be

collectively referred to as the “Ass Armor Marks.”

15. Ass Armor’s Marks were first used in commerce on or about January 31, 2014,

to identify the Ass Armor product described herein.

Ass Armor Product

16. Ass Armor sells one product — the Ass Armor Tailbone Short. The Ass Armor

Tailbone Short is an innovative product that provides aggressive tailbone protection that


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utilizes D30® XT smart impact protection for shock absorption. The Ass Armor Tailbone

Short is comprised of, in part, a barrier of a thin layer of comfort padding to ease shock at the

coccyx and a flexible tough shell for resistance.

17. The Ass Armor Tailbone Short contains both the word mark “ASS ARMOR” and

the donkey riding a snowboard as depicted in the design mark :

18. The Ass Armor Tailbone Short is primarily used for protection against injury

to one or both of the buttocks and the coccyx from falling while engaging in athletic activities,

primarily snow-related activities.

19. Plaintiffs are unaware of any actual confusion by consumers between the Ass

Armor Tailbone Short and any of Defendant’s products and Plaintiffs do not believe there is

or could be a likelihood of confusion among consumers between the Ass Armor Tailbone

Short and any of Defendant’s products.

Under Armour Trademarks

20. Defendant primarily sells athletic clothing, footwear, headwear and sports

equipment.

21. Defendant’s primary trademarks are its “UNDER ARMOUR” word marks and

its design mark.

Trademarks for Snow Clothing

22. Defendant’s word mark “UNDER ARMOUR” (Registration No. 3712052) in


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International Class No. 25, in part, for “Snow pants; Snowboard gloves; Snowboard mittens;

Snowboard pants…” was registered on November 17, 2009.

23. Defendant registered the design mark (Registration No.

3722112) in International Class No. 25, in part, for “Snow pants; Snowboard gloves;

Snowboard mittens; Snowboard pants…” on December 8, 2009.

24. Defendant’s word mark “UA” (Registration No. 4076189) in International

Class No. 25, in part, for “snow pants; snowboard gloves; snowboard pants, snowboard

socks…” was registered on December 27, 2011.

25. Defendant’s design mark (Registration No. 4142472) in

International Class No. 25, in part, for “Snow boots” was registered on May 15, 2012.

26. Upon information and belief, on its website, all of Defendant’s snow clothing

currently listed as goods and services for the trademarks listed in Paragraphs 22-25 contains

the design mark in at least one location on the exterior of product. Few of these

products contain the word mark “UNDER ARMOUR” on the exterior of the product, if any at

all.

27. In addition to the foregoing registered “UNDER ARMOUR” marks, Defendant

owns the word mark “UNDER ARMOUR” in connection with Registration Nos. 2279668;

3052160; 3700135; 4143498; 3812080; 3944542; 3929387; 4135826; 4143499; 2917039;

3178549; 3375771; 3638277; 4380298 and 3642614, listing goods and services not

associated with snow products.

“Gameday Armour” and “ARMOUR” Derivative Word Marks

28. Defendant also owns two (2) word marks for “GAMEDAY ARMOUR”:

Mark Registration No.

Class No. Goods and Services

GAMEDAY ARMOUR

4094318 25 Clothing, namely, shirts, t-shirts, short-sleeved shirts, shorts, clothing for athletic use, namely padded shorts; clothing for athletic use, namely, padded shirts.

GAMEDAY 4183752 28 Football girdles.


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ARMOUR

29. In addition to the “Gameday Armour” word mark, Defendant has the following

marks, which are derivatives of the “ARMOUR” mark: ARMOURED (Registration No.:

4443976); ARMOUR STRETCH (Registration No.: 3504324); ARMOURSTORM (Registration

No.: 3622968); ARMOUR GRABTACK (Registration No.: 3684393); ARMOURBLOCK

(Registration No.: 3069215); ARMOURFUSION (Registration No.: 3646904); ARMOURLOFT

(Registration No.: 3662480); ARMOURCHILL (Registration No.: 4112397); ARMOURGRIP

(Registration No.: 3880602); ARMOURFIT (Registration No.: 3938546) and ARMOURVENT

(Registration No.: 4642057).

30. The products associated with “GAMEDAY ARMOUR” are the Short Sleeve

Baselayer, the Girdle, and the Slider:

31. The Baselayer and the Girdle come in at least four (4) different color

combinations, with bright green and black being one possible combination. The Slider comes

only in a black and orange or gray and white color combination.

32. The Baselayer, the Girdle, and the Slider all prominently display Defendant’s

design mark.

33. The Girdle retails for $69.99.

34. The Slider retails for $49.99.

ARMOUR Marks

35. Defendant has three (3) word marks containing only the term “ARMOUR”

registered in International Class No. 28. International Class No. 28 is defined by the USPTO

as “Games and playthings; gymnastic and sporting articles not included in other classes;

decorations for Christmas trees.” The Explanatory Note specifically states that this class does

not include “certain clothing and footwear for special use.” Defendant’s trademarks for


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“ARMOUR” in International Class No. 28 are as follows:

Mark Registration No. Goods and Services ARMOUR 3766130 Athletic cups ARMOUR 3963256 Knee pads for athletic use ARMOUR 4354067 pre-wraps in the nature of athletic tape used

to restrain hair

36. As stated previously, these three (3) word marks containing only the term

“ARMOUR” are collectively referred to herein as the “ARMOUR Marks.”

37. On Defendant’s website, www.underamour.com all of Defendant’s products

currently using the ARMOUR Marks registered in International Class No. 28 are also affixed

with either Defendant’s design mark, Defendant’s UNDER ARMOUR mark, or

both.

38. Upon information and belief, to the extent when Defendant uses any of the

ARMOUR Marks in commerce, Defendant does not use the ARMOUR Marks separate and

apart from either its “UNDER ARMOUR” word mark(s) or its design mark.

39. None of Defendant’s products bearing the ARMOUR Marks are for coccyx

protection.

40. Upon information and belief, the terms “ARMOUR” and “ARMOR” are used by

the general public as descriptive terms for protective clothing, protective footwear, and/or

protective athletic and other gear and protective barriers, as evidenced by third-party use of

such terms. The use of “ARMOUR and “ARMOR” in this descriptive manner is further

evidenced by the Merriam-Webster dictionary definition of the terms: “a quality or

circumstance that affords protection.”

41. The fact that Defendant has obtained federal trademark registrations for the

ARMOUR Marks does not entitle Defendant to monopolize a term commonly used to describe

protective clothing, protective footwear, and/or protective athletic and other gear.

42. The ARMOUR Marks are not valid, protectable marks in that the terms

“ARMOUR” and “ARMOR,” by themselves, are merely descriptive of protective athletic gear


http://www.underamour.com/

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and/or athletic wear and similar products found in International No. Class 28. Defendant’s

registrations in the ARMOUR Marks constitute an appropriation of a descriptive term from

the language of commerce.

“Protect This House” Word Mark

43. Defendant has also registered the following marks for its slogan, “Protect This

House”:

Mark Registration No.

International Class No.

Goods and Services

3806998 25 Full line of athletic clothing; footwear; athletic footwear; sneakers; shirts; crew shirts; mock turtleneck shirts; t-shirts; polo shirts; sport shirts; sports shirts; knit shirts; long-sleeved shirts; short-sleeved shirts; moisture-wicking sports shirts; sweat shirts; sweaters; sleeveless jerseys; sports jerseys; tank tops; fleece pullovers; hooded pullovers; hooded sweatshirts; vests; undershirts; underwear; thongs; boxer briefs; boxer shorts; briefs; bras; sports bras; moisture-wicking sports bras; pants; sports pants; moisture-wicking sports pants; sweat pants; capri pants; bib overalls; leggings; baselayers bottoms; baselayer tops; shorts; skorts; dresses; jackets; sports jackets; rain jackets; coats; foul weather gear; wind pants; wind resistant jackets; wind shirts; waterproof jackets; waterproof pants; rain trousers; rainproof jackets; rainwear; wristbands; sweat bands; headbands; beanies; visors; hats; bucket hats; caps; skull caps; skull wraps; hoods; scarves; gloves; mittens; belts; socks; men's dress socks; ankle socks; clothing, namely, hand-warmers; clothing for athletic use, namely, padded shirts, padded pants, padded shorts, and padded elbow compression sleeves; football shoes; baseball caps; baseball cleated shoes; baseball belts; softball cleated shoes; golf shirts; golf trousers; golf shorts; golf socks; hunting vests; hunting shirts; bib overalls for hunting; camouflage gloves; camouflage


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jackets; camouflage pants; camouflage shirts; camouflage vests; running shoes; running socks; running shorts; running pants; ski bibs; ski gloves; ski jackets; ski pants; ski wear; snow pants; snowboard gloves; snowboard mittens; snowboard pants; snowboard socks; soccer boots; soccer shorts; soccer jerseys; soccer socks; tennis wear; training shoes; cleats for attachment to shoes; fishing shirts; fishing pants; cleated football shoes; football belts; volleyball jerseys; basketball shorts. basketball socks; basketball jerseys; hockey socks; lacrosse jerseys; cleated lacrosse shoes; lacrosse shorts; field hockey jerseys.

3721852 35 On-line retail store services featuring apparel, sporting goods, and accessories for apparel and sporting goods; Retail store services featuring apparel, sporting goods, and accessories for apparel and sporting goods.

3806998

25 Full line of athletic clothing; footwear; athletic footwear; sneakers; shirts; crew shirts; mock turtleneck shirts; t-shirts; polo shirts; sport shirts; sports shirts; knit shirts; long-sleeved shirts; short-sleeved shirts; moisture-wicking sports shirts; sweat shirts; sweaters; sleeveless jerseys; sports jerseys; tank tops; fleece pullovers; hooded pullovers; hooded sweatshirts; vests; undershirts; underwear; thongs; boxer briefs; boxer shorts; briefs; bras; sports bras; moisture-wicking sports bras; pants; sports pants; moisture-wicking sports pants; sweat pants; capri pants; bib overalls; leggings; baselayers bottoms; baselayer tops; shorts; skorts; dresses; jackets; sports jackets; rain jackets; coats; foul weather gear; wind pants; wind resistant jackets; wind shirts; waterproof jackets; waterproof pants; rain trousers; rainproof jackets; rainwear; wristbands; sweat bands; headbands; beanies; visors; hats; bucket hats; caps; skull caps; skull wraps; hoods; scarves; gloves; mittens; belts; socks; men's


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dress socks; ankle socks; clothing, namely, hand-warmers; clothing for athletic use, namely, padded shirts, padded pants, padded shorts, and padded elbow compression sleeves; football shoes; baseball caps; baseball cleated shoes; baseball belts; softball cleated shoes; golf shirts; golf trousers; golf shorts; golf socks; hunting vests; hunting shirts; bib overalls for hunting; camouflage gloves; camouflage jackets; camouflage pants; camouflage shirts; camouflage vests; running shoes; running socks; running shorts; running pants; ski bibs; ski gloves; ski jackets; ski pants; ski wear; snow pants; snowboard gloves; snowboard mittens; snowboard pants; snowboard socks; soccer boots; soccer shorts; soccer jerseys; soccer socks; tennis wear; training shoes; cleats for attachment to shoes; fishing shirts; fishing pants; cleated football shoes; football belts; volleyball jerseys; basketball shorts. basketball socks; basketball jerseys; hockey socks; lacrosse jerseys; cleated lacrosse shoes; lacrosse shorts; field hockey jerseys.

3721852 35 On-line retail store services featuring apparel, sporting goods, and accessories for apparel and sporting goods; Retail store services featuring apparel, sporting goods, and accessories for apparel and sporting goods

PROTECT THIS HOUSE

3426653 35 Retail store services featuring apparel and sporting goods.

PROTECT THIS HOUSE

3402229 18, 25 Sports Bags, Sack Packs (Class 18); Hats, Shirts, Headwear for Winter and Summer (Class 25)

44. The word mark and design marks listed in Paragraphs 21-43 will hereinafter

be collectively referred to as “Under Armour Marks.”

Similarity of Mark Placement and Color Scheme

45. Many athletic short products display the product name or manufacturer on the


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waistband of the short.

46. The Nike Pro Combat Compression 9” Short 2.0 Baseball Vapor Slider has a

color combination similar to the Ass Armor Tailbone Short and Defendant’s Girdle as well as

a word and design mark placement similar to the Ass Armor Tailbone Short and Defendant’s

Girdle and Slider:

47. The Nike Pro Combat Compression 9” Short 2.0 Baseball Vapor Slider sells for

$29.99.

48. The Adidas Techfit Base 9” Compression Short has a word and design mark

placement similar to the Ass Armor Tailbone Short and Defendant’s Girdle and Slider:

49. The Adidas Techfit Base 9” Compression Short sells for $24.99.

50. The Burton Total Impact Short has a word and design mark placement similar

to the Ass Armor Tailbone Short and Defendant’s Girdle and Slider:


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51. The Burton Total Impact Short retails for $94.95.

52. The Flexforce X D30 Protective Short V1 has a word and design mark

placement similar to the Ass Armor Tailbone Short and Defendant’s Girdle and Slider:

53. The Flexforce X D30 Protective Short V1 retails for $69.95.

Additional “Armor”/ “Armour” Trademarks

54. Other than the Ass Armor Marks, there are eleven (11) live trademark

registrations for coccyx-protection products. None of these trademarks are owned by

Defendant.

55. In addition to the Ass Armor Marks, there are one thousand two hundred and

fifty three (1,253) live trademarks containing the word “Armor.” See Exhibit B.

Ass Armor Sales and Marketing

56. Ass Armor currently sells the Ass Armor Tailbone Short through its own

website, www.assarmor.com, as well as at trade shows to small retail stores for or around

$89.99.

57. In addition to advertising on social media platforms, Ass Armor has spent a

considerable amount of money and effort promoting and advertising its Ass Armor Tailbone

Short.

58. Ass Armor’s marketing plan is comprised of both a local and national

marketing plan.


http://www.assarmor.com/

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59. Locally, Ass Armor targets ski resorts in Utah, Colorado and Lake Tahoe and

focuses on getting its name known and the Ass Armor Tailbone Shore in the hands of the

consumer. The “Ass Armor Snow Team” hands out free merchandise featuring Ass Armor

Marks at ski resorts. Ass Armor also provides the Ass Armor Tailbone Short to snowboard

instructors to give/lend to students who are having trouble.

60. The marketing plan includes the Ass Armor Snow Team to be present to hand

out merchandise bearing Ass Armor Marks and the Ass Armor Tailbone Short at large-scale

winter sport events. Ass Armor’s marketing plan also discusses partnership and/or

sponsorship agreements with these events and/or athletes competing in these events.

61. Nationally, Ass Armor targets parents with children who snowboard, students

learning to snowboard, and older snowboarders looking to be more careful. Ass Armor

targets and sends the Ass Armor Tailbone Short to blog writers that focus on winter sports,

including snowboarding.

Ass Armor Acclaim

62. On October 23, 2014, Snowlink published a review of the Ass Armor Tailbone

Short entitled, “Ass Armor Lives Up to the Name With Advanced Snowboarding Tailbone

Innovation.”

63. On December 12, 2014, the Los Angeles Times listed the Ass Armor Tailbone

Short in its “Winter equipment to protect you from ice, snow, the dark and cold” article.

64. On December 17, 2014, USA Today listed the Ass Armor Tailbone Short as one

of the “10 gifts for skiers and snowboarders this season.”

65. On December 24, 2014, Snowboarding Transworld listed the Ass Armor

Tailbone Short as a “Top Product of 2014.”

66. On January 14, 2015, Blue Ridge Outdoors magazine published a review of the

Ass Armor Tailbone Short.

67. On January 28, 2015, Maxim magazine listed the Ass Armor Tailbone Short as

“Best New Snowboard Gear.”

Under Armour Sales and Marketing

68. Defendant markets and sells its products containing Under Armour Marks on

a national scale. Defendant sells its products containing Under Armour Marks on its online

store, its own factory stores and through other retail establishments, including sporting


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goods stores.

69. Defendant advertises and markets its product containing Under Armour

Marks through print and digital media, including national magazines, national newspapers,

billboards, television commercials, its own catalog and website, and social media.

70. Defendant also sponsors individual athletes and outfits a number of sports

teams, providing them with clothing containing Under Armour Marks.

Procedural History

71. In April 2014, Defendant filed a Notice of Opposition before the Trademark

Trial and Appeal Board (TTAB), opposing Plaintiffs’ registration of the word mark “ASS

ARMOR” and the design mark .

72. Defendant did not oppose the mark “PROTECT YOUR ASSETS”, which is now

registered.

73. On January 20, 2015, despite the fact that its opposition proceeding was still

pending before the TTAB, Defendant filed an action for trademark infringement, trademark

dilution, unfair competition, and cybersquatting in the United States District Court for the

District of Maryland, Baltimore Division.

74. Thereafter, on January 22, 2015, Defendant, with Plaintiffs’ consent, filed a

motion to suspend the TTAB proceeding.

75. Plaintiffs filed a Motion to Dismiss the Complaint filed in the District of

Maryland for lack of personal jurisdiction.

76. Despite the descriptiveness of the terms “ARMOR” and “ARMOUR,” and of the

ARMOUR Marks, Defendant has attempted to restrict Plaintiffs’ right to use the term

“ARMOR” in conjunction with their “Ass Armor” mark by opposing Plaintiffs’ trademark

applications and claiming Plaintiffs’ use of the “Ass Armor” mark infringes Defendant’s

“UNDER ARMOUR” marks and ARMOUR Marks.

77. In violation of 15 U.S.C. § 1115 of the Lanham Act, Defendant attempts to

restrict the fair use of the terms “ARMOUR” and “ARMOR” by Plaintiffs and others within the

marketplace, which has given rise to the present controversy, necessitating the cancellation


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of Defendant’s federally registered ARMOUR Marks, and a declaration of Plaintiffs’ rights

with respect to its use of the name “Ass Armor” to identify its Ass Armor Tailbone Short.

CLAIMS FOR RELIEF

COUNT I

Declaratory Judgment of Trademark Non-Infringement of the Word Mark

“ASS ARMOR” Under 28 U.S.C. §§ 2201 and 2202 et seq.

78. Plaintiffs repeat and re-allege each of the allegations contained in Paragraphs

1 through 77 of this First Amended Complaint as if fully set forth herein.

79. Declaratory relief will serve the useful purpose of clarifying and settling the

legal rights between the parties with respect to the “ASS ARMOR” word mark.

80. An actual and present controversy exists between Plaintiffs and Defendant

with respect to Plaintiffs’ ability to use the term “armor” as part of the Ass Armor Marks to

identify their product, the Ass Armor Tailbone Short. Plaintiffs believe the word “armor” is

descriptive and is of ordinary meaning and usage, and that under any circumstances,

Plaintiffs have the right to use the term “armor” as part of the Ass Armor Marks to fairly and

properly identify its products.

81. Defendant has notified Plaintiffs that it objects to Plaintiffs’ use of the term

“armor” in its Ass Armor Marks and Defendant has raised its objection claiming trademark

rights and entitlement to the word “armor.” Plaintiffs will be damaged by the inability to

lawfully use the “ASS ARMOR” mark.

82. Under the circumstances, a controversy of sufficient immediacy and reality

exists with respect to the “ASS ARMOR” word mark to warrant the issuance of a declaratory

judgment.

83. Therefore, an actual and justiciable controversy exists between Plaintiffs and

Defendant regarding whether infringement exists.

84. Plaintiffs seek, under the Declaratory Judgment Act, 28 U.S.C. §§ 2201(a) and

2202, a declaration that the use of the mark “ASS ARMOR” is entirely lawful and does not

constitute trademark infringement of Under Armour’s Marks under any applicable law.


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85. Plaintiffs request this Court declare Defendant is estopped and otherwise

barred from claiming Plaintiffs infringed upon the Under Armour Marks or any associated

rights it may have to the word “armor.”

COUNT II

Declaratory Judgment of Trademark Non-Infringement of the Design Mark

Under 28 U.S.C. §§ 2201 and 2202 et seq.




legal rights between the parties with respect to the design mark.

88. An actual and present controversy exists between Plaintiffs and Defendant

with respect to Plaintiffs’ ability to use the term “armor” in its design mark. Plaintiffs believe

the word “armor” is descriptive and is of ordinary meaning and usage, and that under any

circumstances, Plaintiffs have the right to use the term “armor” in conjunction with the

design mark to fairly and properly identify its products.

89. Defendant has notified Plaintiffs that it objects to Plaintiffs’ use of the term

“armor” in its design mark and Defendant has raised its objection claiming

trademark rights and entitlement to the word “armor.” Plaintiffs will be damaged by the

inability to lawfully use the design mark.


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exists with respect to the design mark to warrant the issuance of a declaratory

judgment.




2202, a declaration that the use of design mark is entirely lawful and does not

constitute trademark infringement of the Under Armour Marks under any applicable law.


barred from claiming Plaintiffs infringed upon the Under Armour Marks or any associated

rights it may have to the word “armor.”

COUNT III

Declaratory Judgment of Trademark Non-Infringement of the Word Mark

“PROTECT YOUR ASSETS”

Under 28 U.S.C. §§ 2201 and 2202 et seq.




legal rights between the parties with respect to the “PROTECT YOUR ASSETS” word mark.

96. Defendant has notified Plaintiffs that it objects to Plaintiffs’ use of the phrase

“PROTECT YOUR ASSETS.” Plaintiffs will be damaged by the inability to lawfully use the

“PROTECT YOUR ASSETS” mark.


exists with respect to the “PROTECT YOUR ASSETS” word mark to warrant the issuance of a

declaratory judgment.




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2202, a declaration that the use of the phrase “PROTECT YOUR ASSETS” is entirely lawful

and does not constitute trademark infringement upon the Under Armour Marks under any

applicable law.


barred from claiming Plaintiffs infringed upon the Under Armour Marks.

COUNT IV

Cancellation of Federal Trademark Registrations

Under 15 U.S.C. §§ 1064 and 1119



102. Defendant claims ownership of three federal trademark registrations in

International Class No. 28 for the ARMOUR Marks, which each consist solely of the term

“ARMOUR.” See Exhibit A.

103. The term “ARMOUR” on its own is descriptive and does not qualify for

registration under the Lanham Act, 15 U.S.C. §§ 1052(e)(1) and 1064.

104. Defendant has no protectable trademark rights in the terms “ARMOUR” or

“ARMOR,” or in the ARMOUR Marks, when used on its own in connection with the marketing

and sale of protective athletic gear and/or athletic wear and similar products because the

terms are merely descriptive of such products. Further, upon information and belief, the

ARMOUR Marks have not acquired distinctiveness or achieved secondary meaning in

connection with Defendant’s products in International Class No. 28.

105. Pursuant to the Lanham Act, this Court has jurisdiction to order the USPTO to

make appropriate entries on the Federal Register with respect to the ARMOUR Marks, and

their inability to serve as proper indicators of origin, due to their descriptiveness.

106. Defendant’s federal trademark registrations in the ARMOUR Marks were

improvidently allowed and should be canceled pursuant to 15 U.S.C. §§ 1064 and 1119.

107. Plaintiffs are likely to be damaged if the federal trademark registrations in the

ARMOUR Marks are not canceled because Defendant may be able to prevent Plaintiffs from

using the descriptive term “armor” in their “Ass Armor” mark, which Plaintiffs have already


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spent considerable time and resources developing as an identifier for their Ass Armor

Tailbone Short.

108. Plaintiffs request that this Court order the cancellation of the registrations in

the ARMOUR Marks and order such other and further relief as this Court finds just and

proper.

PRAYER FOR RELIEF

WHEREFORE, Taryn and Ass Armor respectfully request that this Court grant the

following relief:

(a) Declare that Plaintiffs’ use of the “ASS ARMOR” word mark, their design mark

, and the “PROTECT YOUR ASSETS” word mark do not infringe any of

rights in any of the Under Armour Marks.

(b) Enter Final Judgment cancelling Defendant’s three federal trademark

registrations in the ARMOUR Marks, and directing the Director of the United States

Patent and Trademark Office to remove such registrations from the Principal

Register.

(c) Declare that (i) the terms “ARMOUR” and “ARMOR” are descriptive terms used

to describe protective athletic gear and/or athletic wear; (ii) Defendant does not have

exclusive rights to the terms “ARMOUR” or “ARMOR” in reference to protective

athletic gear and/or athletic wear, and cannot control the use of that term or force

others to stop using it; (iii) Defendant’s federal trademark registrations for the

ARMOUR Marks should be canceled, and cannot be used by Defendant to prohibit the

use of the terms “ARMOUR” or “ARMOR” on others’ products or services, including

Plaintiffs; (iv) Plaintiffs’ use of the term “ARMOR” in conjunction with its “Ass Armor”

mark has at all times been a proper, fair use that does not violate any rights that

Defendant may have; and (v) Defendant has waived, and is otherwise estopped and

barred from claiming Plaintiffs infringed the rights, if any, that Defendant owns in the

terms “ARMOUR” or “ARMOR.”

(d) Award Plaintiffs their actual costs incurred by Plaintiffs related to this action;


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(e) Find that the present case is exceptional and award Plaintiffs their actual and

reasonable attorneys’ fees for services rendered to Plaintiffs in this action under the

Lanham Act or as otherwise provided by law;

(f) Award Plaintiffs pre- and post-judgment interest;

(g) A trial by jury on all triable issues; and

(h) Such other relief as the Court deems just and proper.

JURY DEMAND

Plaintiffs hereby demand a trial by jury on all issues wherein trial by jury is

permissible.

Dated: November 16, 2015 Respectfully submitted,

/s/W. John Eagan John Cyril Malloy, III Florida Bar No. 964,220 [email protected] Oliver Alan Ruiz Florida Bar No. 524,786 [email protected] Francisco J. Ferreiro Florida Bar No. 37,464 [email protected] William John Eagan Florida Bar No. 105,101 [email protected] MALLOY & MALLOY, P.L. 2800 S.W. Third Avenue Miami, Florida 33129 Telephone: (305) 858-8000 Facsimile: (305) 858-0008

Local Counsel - On Behalf Of KING & BALLOW Laura M. Mallory Douglas R. Pierce [email protected] [email protected] 315 Union Street, Ste. 1100 Nashville, TN 37201 Telephone: (615) 259-3456


mailto:[email protected]




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Facsimile: (888) 688-0482 Attorneys for Plaintiffs


Documents

Ass Armor v. Under Armour