Attorneys for Plaintiffipcasefilings.com/wp-content/uploads/2019/09/Allbirds.pdf · 2. Since then, Allbirds has enjoyed tremendous success and third-party recognition for its innovative

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ANNE H. PECK (124790) ([email protected]) Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130 Telephone: (650) 843-5000 Facsimile: (650) 849-7400 JOHN PAUL OLEKSIUK (283396) ([email protected]) ROSE M. KAUTZ (307831) ([email protected]) Cooley LLP 1333 2nd Street, Suite 400 Santa Monica, CA 90401-4100 Telephone: (310) 883-6400 Facsimile: (310) 883-6500 Attorneys for Plaintiff

Allbirds, Inc.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

ALLBIRDS, INC., a Delaware corporation,

Plaintiff,

v. GIESSWEIN WALKWAREN AG,

an Austrian aktiengesellschaft, and M. LEONARD INTERNATIONAL INC. d/b/a GIESSWEIN USA,

a Maine corporation, Defendants.

Case No. PLAINTIFF’S COMPLAINT FOR:

1. FEDERAL TRADEMARK

INFRINGEMENT

2. FEDERAL TRADE DRESS INFRINGEMENT

3. FEDERAL FALSE ADVERTISING

4. FEDERAL UNFAIR COMPETITION AND

FALSE DESIGNATION OF ORIGIN

5. COMMON LAW TRADEMARK

INFRINGEMENT AND UNFAIR

COMPETITION

6. TRADE DRESS INFRINGEMENT UNDER

CALIFORNIA COMMON LAW

7. UNFAIR BUSINESS COMPETITION

UNDER CALIFORNIA BUSINESS &

PROFESSIONS CODE § 17200 ET SEQ.

8. DECREE AND ORDER UNDER 15

U.S.C. § 1119

JURY TRIAL DEMANDED

Case 3:19-cv-05638-JSC Document 1 Filed 09/06/19 Page 1 of 30

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Plaintiff Allbirds, Inc. (“Allbirds”), by counsel, alleges as follows as its Complaint against

Defendants Giesswein Walkwaren AG (“Giesswein Austria”) and M. Leonard International Inc. d/b/a

Giesswein USA (“Giesswein USA”) (Giesswein Austria and Giesswein USA collectively,

“Giesswein”).

NATURE OF THE ACTION

1. When San Francisco-based footwear brand Allbirds launched in 2016, it sold only one

item: the WOOL RUNNERS® branded shoes—premium casual sneakers made from natural,

environmentally sustainable materials that were remarkably comfortable and machine-washable.

Allbirds’s WOOL RUNNERS® shoes were an instant sensation: Time magazine lauded them as “the

world’s most comfortable shoes,” Forbes called them “Shockingly Comfortable, Sustainable,

Beautiful,” and Esquire heralded them as “Affordable, Sustainable, and Genuinely Stylish.”

2. Since then, Allbirds has enjoyed tremendous success and third-party recognition for its

innovative WOOL RUNNERS® shoes. In only a few short years, Allbirds has grown from a Silicon-

Valley startup to a global company operating online and with brick-and-mortar stores across four

continents and valued at over $1 billion. WOOL RUNNERS® shoes were a game-changer in the

footwear market. In 2018, the Wall Street Journal reported that WOOL RUNNERS® shoes were

“Challenging Nike and Adidas” in spite of Allbirds’s relatively small size, and the company continues

to attract venture capitalist investors and celebrity supporters such as Leonardo DiCaprio, who

publicly praised Allbirds’s sustainable model, stating “[t]his kind of innovation is crucial for creating

a more sustainable future.” In July 2019, Business Insider reported that “Allbirds shoes have drawn

acclaim from shoppers and media far and wide for their use of innovative materials (merino wool,

eucalyptus, and sugar cane), all-day comfort, and simple yet instantly recognizable look.”

3. WOOL RUNNERS® shoes gained popularity not only because of their beautiful

styling and incredible comfort, but also because of their groundbreaking application of sustainable

materials. Allbirds devoted significant time, effort, and resources to developing, promoting, and

protecting the intellectual property in its WOOL RUNNERS® shoes, including its valuable brand

name and its revolutionary products, designs, and processes. As a result of Allbirds’s efforts and the

quality of Allbirds’s products, the WOOL RUNNERS® brand enjoys substantial goodwill in the


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marketplace, and the public has come to recognize and rely on that brand as an indication of the high

quality of Allbirds’s footwear.

4. Allbirds’s success has led to the rise of numerous competitors. Unfortunately, rather

than emulate Allbirds’s innovative approach to sustainability, these companies have instead tried to

duplicate the success of WOOL RUNNERS® footwear through unlawful imitation and appropriation.

One of the most flagrant such imitators is Giesswein, which introduced a line of infringing shoes that

look like WOOL RUNNERS® footwear, use the WOOL RUNNERS® trademark in their title, and

appropriate the messaging and branding of the WOOL RUNNERS®. Put another way, instead of

pursuing independent product development, Giesswein has chosen to copy Allbirds’s WOOL

RUNNERS® distinctive brand and revolutionary footwear designs, in violation of Allbirds’s

intellectual property rights and in order to confuse, attract and mislead consumers. As alleged in detail

below, Giesswein has engaged in trademark infringement, trade dress infringement, and related unfair

and deceptive business practices—all in an effort to unfairly leverage goodwill developed by Allbirds

through innovation and significant investment. Giesswein has also filed a meritless petition for

cancellation with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board.

5. Through this action Allbirds seeks to enjoin Giesswein’s illegal conduct, obtain

compensation for the injury it has suffered thus far, and determine the parties’ respective rights to

registration at the United States Patent and Trademark Office.

THE PARTIES

6. Allbirds is a corporation organized and existing under the laws of the State of Delaware,

with its principal place of business at 730 Montgomery Street San Francisco, California 94111.

7. On information and belief, Defendant Giesswein Walkwaren AG is an

aktiengesellschaft organized and existing under the laws of Austria with its principal place of business

at Niederfeldweg 5-7, 6230 Brixlegg, Austria.

8. On information and belief, Defendant M. Leonard International Inc. is a Maine

corporation with its principal place of business having an address at 41 Canal St., Hill Mill Bldg.,

Lewiston, Maine 04240, operating as the subsidiary and authorized distributor of Giesswein

Walkwaren AG products in the United States under the name Giesswein USA.


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9. On information and belief, Giesswein regularly conducts business in the state of

California, including in this judicial district, where its shoes are sold.

JURISDICTION

10. This action arises under the Lanham Act, 15 U.S.C. §§ 1114, 1125, the California

Business & Professions Code, and the common law.

11. This Court has subject matter jurisdiction under 15 U.S.C. § 1121 (actions arising under

the Lanham Act); 28 U.S.C. § 1331 (federal question) and 28 U.S.C. § 1338(a) (any Act of Congress

relating to patents or trademarks); 28 U.S.C. § 1338(b) (action asserting claim of unfair competition

joined with a substantial and related claim under the trademark laws); and 28 U.S.C. § 1367

(supplemental jurisdiction over state common law claims). This Court has jurisdiction to determine the

right to registration, order the cancellation of registrations, and otherwise rectify the United States

Patent and Trademark Office’s registry with respect to the parties to the action under 15 U.S.C. § 1119.

12. This Court has personal jurisdiction over Giesswein because it has committed and

continues to commit acts of infringement in violation of 15 U.S.C. § 1114 and § 1125, and places

infringing products into the stream of commerce, with the knowledge or understanding that such

products are sold in the State of California, including in this District. The acts of Giesswein have

caused, and are continuing to cause, injury to Allbirds within this District.

13. Upon information and belief, Giesswein derives substantial revenue from the sale of

infringing products within this District, expects its actions to have consequences within this District,

and derives substantial revenue from interstate and international commerce with this District.

INTRADISTRICT ASSIGNMENT

14. Pursuant to Civil L.R. 3-2(c) and 3-5, this case involves Intellectual Property Rights

and is therefore to be assigned on a district-wide basis.

VENUE

15. Venue is proper within this District under 28 U.S.C. §§ 1391(b) and (c) because

Giesswein transacts business and offers for sale in this District products that infringe Allbirds’s

trademarks, and a substantial part of the events giving rise to Allbirds’s claims occurred in or were


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aimed at this District. In addition, venue is proper because Allbirds’s principal place of business is in

this District and Allbirds has suffered, and is continuing to suffer, harm in this District.

FACTUAL ALLEGATIONS

Allbirds’s Iconic WOOL RUNNERS® Shoes

16. Allbirds was founded by Tim Brown, a former professional soccer player with a

master’s degree in International Management, and Joey Zwillinger, a material science expert

specializing in renewable materials. Brown was surprised to learn that products made from Merino

wool—a remarkable and sustainable resource most frequently used in high-end men’s suiting by

brands like Tom Ford—were virtually absent in the footwear industry. Armed with the ambition to

create Better Shoes in a Better Way®, Brown and Zwillinger set out to craft a new type of footwear

that was revolutionary in both composition and appearance. WOOL RUNNERS® shoes were the

result—a new type of shoe carefully honed and designed after years of research and development.

17. The WOOL RUNNERS® shoes were an immediate market success, and Allbirds has

since expanded its footwear line to include the WOOL LOUNGER® slip-on, as well as products made

out of other sustainable materials, such as TREE RUNNERS® sneakers.

18. Allbirds has devoted substantial time, effort, and resources to developing, promoting,

and protecting its intellectual property, including its valuable brands and its revolutionary footwear

designs. WOOL RUNNERS® shoes have enjoyed widespread media coverage over the years,

including by Time, The New Yorker, Forbes, The Wall Street Journal, Inc., Business Insider,

Refinery29, Pitchbook, 7x7, Bloomberg Business, BuzzFeed, CBS, CNBC, CNN, Condé Nast Traveler,

Travel+Leisure, Design Milk, Esquire, Fast Company, Glamour, InStyle, The Los Angeles Times, The

New York Times, Mashable, People, Racked, Today, Us Weekly, Men’s Journal, The Daily Beast,

Vogue, Wired, and Cosmopolitan. Allbirds is the owner of 12 registered trademarks in the United

States, including for WOOL RUNNERS® (with several additional marks pending). As a result of

Allbirds’s efforts and the quality of the its products, Allbirds’s brands enjoy substantial goodwill in

the marketplace, and the public has come to recognize and rely upon Allbirds’s trademarks as an

indication of the high quality of Allbirds’s goods.


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19. Allbirds has used its WOOL RUNNERS® brand in connection with its revolutionary

footwear in U.S. commerce since at least as early as February 29, 2016. Allbirds is also the owner of

U.S. Trademark Registration No. 5149527 for the WOOL RUNNERS® trademark, which Allbirds

applied for on April 15, 2016 and was granted on February 28, 2017. U.S. Trademark Registration

No. 5149527 is in full force and effect on the Principal Register of the United States Patent and

Trademark Office (“USPTO”).

20. As a result of Allbirds’s widespread use of the WOOL RUNNERS® trademark in the

United States, extensive advertising and promotion of the footwear sold in connection with that brand,

widespread media coverage of Allbirds’s WOOL RUNNERS® shoes and related footwear, the high

degree of customer recognition of the WOOL RUNNERS® trademark, the strong and loyal base of

customers that Allbirds enjoys for its WOOL RUNNERS® shoes, and the distinctiveness of the

WOOL RUNNERS® trademark, the WOOL RUNNERS® brand has become famous in the United

States.

21. WOOL RUNNERS® shoes are also immediately distinguished by their unique and

distinctive appearance, which Allbirds created using a combination of the following non-functional

elements (“WOOL RUNNERS® Trade Dress”) depicted below, including:

Sneaker-type shoe featuring wool-like texture on the entirety of the upper outer;

Embroidered eyelets;

Shoelaces composed of a three-yarn lace woven together;

Midsole and outsole of shoe appear attached as one piece; and

A series of horizontal lines visible across the width of the sole of the shoe that extends the

entire length of the sole.


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22. The WOOL RUNNERS® Trade Dress, which is a composite of the above-referenced

features, is non-functional in its entirety, visually distinctive, and is unique in the footwear industry.

23. The design of the WOOL RUNNERS® Trade Dress is neither essential to its use or

purpose nor does it affect the cost or quality of the shoe. There are numerous other designs available

that are equally feasible and efficient, none of which necessitate copying or imitating the WOOL

RUNNERS® Trade Dress. The aforesaid combination of features provides no cost advantages to the

manufacturer or utilitarian advantages to the consumer. These features, in combination, serve to

render WOOL RUNNERS® shoes as distinct and recognizable as goods originating from Allbirds.


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24. The WOOL RUNNERS® Trade Dress has also achieved a high degree of consumer

recognition and secondary meaning, which serves to identify Allbirds as the source of footwear

featuring said trade dress. Allbirds has spent substantial time, effort, and money in designing,

developing, advertising, promoting, and marketing WOOL RUNNERS® shoes, and has sold millions

of dollars-worth of WOOL RUNNERS® shoes.

25. Allbirds’s shoes, including those featuring the WOOL RUNNERS® Trade Dress, are

sold throughout the United States by Allbirds via retail locations and the Allbirds website,

www.allbirds.com.

26. Due to its use, sales, and advertising and promotional activities, Allbirds’s WOOL

RUNNERS® Trade Dress has achieved widespread acceptance and recognition among the consuming

public and trade throughout the United States.

27. WOOL RUNNERS® shoes are the most well-recognized and commercially successful

style of Allbirds’s footwear lines, having been featured on Allbirds’s advertising and promotional

materials as well as in various trade publications. Furthermore, WOOL RUNNERS® shoes have

received a large volume of unsolicited media attention, and has graced the pages of many popular

magazines nationwide, including Time, New York Times, Wired, Fast Company, Bloomberg Business,

Forbes and dozens of other popular media publications. Celebrities (including Oprah Winfrey, Emma

Watson, Gwyneth Paltrow, Matthew McConaughey, Ryan Gosling, Gayle King, Mindy Kaling, Hugh

Grant, Jenna Dewan, Cindy Crawford, Julianne Hough, Sophie Turner, Lana Condor, Noah Centineo,

Yara Shahidi, and Novak Djokovic), politicians (including former presidents Clinton, W. Bush, and

Obama, and New Zealand’s prime minister Jacinda Ardern, who gifted a pair to Australia’s prime

minister, Scott Morrison, during a state visit), and global business leaders (including Larry Page, Dick

Costolo, Ben Horowitz, Marissa Mayer, and Mary Meeker) can all be seen wearing WOOL

RUNNERS® shoes on major social media platforms, such as Instagram, as well as in popular press

such as The Daily Mail, People, and InStyle.

Giesswein’s Infringing Conduct

28. Notwithstanding Allbirds’s diligent efforts to monitor and prevent unauthorized uses

of its WOOL RUNNERS® trademark and footwear designs, Giesswein has engaged in reoccurring


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and willful infringement of the WOOL RUNNERS® trademark by using Allbirds’s WOOL

RUNNERS mark without authorization and by using the confusingly similar names MERINO WOOL

RUNNERS and MERINO RUNNERS (the “Infringing Names”) for footwear. Giesswein has also

engaged in in reoccurring and willful infringement of the WOOL RUNNERS® Trade Dress, including

but not limited to infringement arising from Giesswein’s deliberate and willful copying of Allbirds,

from Giesswein’s sale of footwear products under the Infringing Names (all of the foregoing are the

“Accused Products”), and from Giesswein’s other unfair and unlawful business practices.

29. On information and belief, Giesswein is also engaged in the design, distribution,

marketing, and sale of footwear made from wool to consumers in the United States, including

consumers in the State of California. According to the “Store Locator” on the Giesswein USA website

(https://www.giesswein-usa.com/store-locator), Giesswein footwear is sold in at least 15 different

retail locations in California, including in San Francisco:

* * * *


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30. The Giesswein USA website (https://www.giesswein-usa.com/giesswein-usas-

exclusively-designed-footbeds) explains that Giesswein Austria is the parent company of Giesswein

USA, and that U.S. consumers can either purchase Giesswein shoes from Austria via

www.giesswein.com, or they can purchase shoes from www.giesswein-usa.com, the “authorized

distributor of Giesswein product in the United States,” or an authorized retailer, which provide “styles

that have been exclusively designed for our customers in the USA” and “a streamlined Euro/US sizing

conversion, our arch-support foot beds and US-based, highly responsive customer service.”


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31. The Giesswein Austria website confirms “We currently ship to the USA….” See

https://us.giesswein.com/pages/faq and https://us.giesswein.com/pages/delivery-returns.

32. In February 2017, Allbirds learned that Giesswein Austria had launched a Kickstarter

campaign for a line of shoes called MERINO RUNNERS. These shoes shared many similarities with

Allbirds’s WOOL RUNNERS® shoes, including having similar wool upper and sole color

combinations, having a replaceable insole made of castor beans, a thick but lightweight sole, and a

wool body that regulates temperature and allows the shoe to be worn without socks. In fact,

Giesswein’s infringing footwear products appeared nearly identical in all material respects to

Allbirds’s WOOL RUNNERS® shoes, as pictured below—similarities that were further exacerbated

and likely to confuse consumers due to Giesswein’s use of the confusingly similar names MERINO

RUNNERS and MERINO WOOL RUNNERS:

ALLBIRDS GIESSWEIN


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ALLBIRDS GIESSWEIN

33. Moreover, Giesswein’s Kickstarter campaign deceptively described the MERINO

RUNNERS as the “first Fashion Outdoor Runners made from 100% pure Merino Wool” and lifted

several of its feature descriptions directly from Allbirds, including emphasizing that the shoes were

made from natural materials, could be worn without socks, and provided temperature regulation.

34. Allbirds sent a cease and desist letter to Giesswein’s counsel on March 9, 2017,

objecting to Giesswein’s use of the Infringing Names and sales of the Accused Products.

35. On March 22, 2017, Giesswein applied to register GIESSWEIN MERINO RUNNERS

(and Design) in connection with “Clothing, namely, jackets, cardigans, vests, pants, coats, skirts,

dresses, sweatshirts and pullovers; footwear; headwear; pelerines; headbands; hosiery; ear muffs; neck

scarves; soles for footwear,” claiming a priority date of September 23, 2016 based on a foreign

registration. The application resulted in U.S. Trademark Registration No. 5326486 which was granted

November 7, 2017.

36. Allbirds also objected to Giesswein’s advertisement, available at

https://youtu.be/IQwycxq0CYo, which misleadingly suggested that Giesswein invented the “world’s

first” wool footwear. A screenshot from the video, which is captioned “Introducing the world's first

fashion outdoor runners, made from pure MERINO WOOL” is below:


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37. In the video, two apparent Giesswein employees “Mark” and “John” stated that they

“wanted to invent something new,” so they “came up with the idea of creating some wool, lightweight,

and extremely comfortable outdoor runners,” as shown in the screenshot below:

38. On May 10, 2017, Allbirds sent a second letter to Giesswein’s counsel regarding the

name MERINO RUNNERS and advertisements that inaccurately claimed Giesswein was the first to


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create wool sneakers. A snapshot of the relevant advertisement, which was included in this second

letter and was available at https://www.facebook.com/merinorunners, is shown below:

39. Despite these unequivocal communications specifically advising Giesswein of

Allbirds’s federally registered rights to the WOOL RUNNERS® trademark, Giesswein began using

WOOL RUNNERS® and expanded its use of confusingly similar product names and descriptions in

a deliberate and willful imitation of Allbirds’s WOOL RUNNERS® brand.

40. Giesswein made dozens of posts on social media platforms located in this District and

on its website, and also placed numerous advertisements on the internet through service providers

located in this District. For example, below is a screenshot of a Giesswein ad on Google® from April

5, 2018:


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41. And below is a screenshot of Giesswein’s website from October 12, 2018, as captured

by the Internet Archive (https://web.archive.org/web/20181012170037/https://us.giesswein.com):

42. Giesswein also continued to audaciously and falsely advertise that it was the original

creator of WOOL RUNNERS® footwear, including on social media platforms such as Instagram, as

shown in the screenshot from June 20, 2018 below:


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43. Allbirds consistently expressed concerns regarding consumer confusion and objected

to Giesswein’s conduct, but wished to resolve its dispute with Giesswein without resorting to

litigation, if possible.

44. Instead of remedying its confusing use of the WOOL RUNNERS® brand and

misleading advertisements, however, Giesswein Austria responded by filing a petition to cancel

Allbirds’s WOOL RUNNERS® trademark on August 10, 2018 on the grounds that “wool runners” is

generic or merely descriptive. The action is currently pending before the Trademark Trial and Appeal

Board of the USPTO as Cancellation No. 92069219.

45. The USPTO, however, has already determined in issuing the registration for the WOOL

RUNNERS® trademark on the Principal Register that WOOL RUNNERS® is inherently distinctive.

Indeed, under Section 33 of the Lanham Act, a trademark registration on the Principal Register such

as Allbirds’s WOOL RUNNERS® registration is “prima facie evidence of the validity of the registered

mark.” See 15 U.S.C. § 1115(a).


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46. Despite Allbirds’s registration of the WOOL RUNNERS® trademark and Allbirds’s

objections, Giesswein continued, and in fact continues, to use unlawfully leverage Allbirds’s WOOL

RUNNERS® trademark. Below, for example, is a screenshot from Google® Ads in February 2019:

47. The following screenshots are from Giesswein’s website in May 2019:


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48. The screenshot below is from Google® Ads in August 2019:

49. Allbirds has not granted a license or any other form of permission to Giesswein with

respect to any of its trademarks, trade dress, or other intellectual property.

50. Giesswein’s use of the Infringing Names in connection with its infringing footwear and

the other conduct described herein creates a deceptive and misleading affiliation between Giesswein

and Allbirds. Allbirds is not affiliated with Giesswein, and has not consented to, sponsored, endorsed,

or approved of Giesswein’s wool footwear, use of the Infringing Names, and other confusingly similar

product names and descriptions in connection with the production, marketing, or sale of any products

or services.

51. Allbirds further believes and alleges that Giesswein is a competitor and has copied

Allbirds’s WOOL RUNNERS® Trade Dress in an effort to exploit Allbirds’s reputation in the market.

52. On information and belief, Giesswein’s actions are willful and reflect an intent to

confuse consumers and profit from the goodwill and consumer recognition associated with Allbirds’s

WOOL RUNNERS® trademark and WOOL RUNNERS® Trade Dress, and Giesswein’s infringing

acts have misled and confused and were intended to cause confusion, or to cause mistake, or to deceive

as to the affiliation, connection, or association of Giesswein’s products with Allbirds, or as to the

origin, sponsorship, or approval of the Accused Products by Allbirds.


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FIRST CAUSE OF ACTION

Federal Trademark Infringement Under 15 U.S.C. § 1114

53. Allbirds realleges and incorporates herein by reference paragraphs 1 through 52 of this

Complaint as if fully set forth here.

54. The WOOL RUNNERS® trademark is an inherently distinctive, strong, valid, and

protectable registered trademark owned by Allbirds.

55. Allbirds is informed and believes, and on that basis alleges, that Giesswein has

marketed and sold in commerce products and services under the WOOL RUNNERS® trademark and

under the confusingly similar Infringing Names.

56. Giesswein’s use of the WOOL RUNNERS® trademark, the Infringing Names, and

other confusingly similar product names and descriptions in connection with footwear is likely to

cause confusion, mistake, or deception as to the source or sponsorship of Giesswein’s products and/or

mislead the consuming public to believe that Allbirds has authorized, approved, or somehow

sponsored Giesswein’s footwear.

57. The actions of Giesswein described above and specifically, without limitation,

Giesswein’s use of the WOOL RUNNERS® trademark, the Infringing Names, and other confusingly

similar product names and descriptions in connection with their footwear constitute trademark

infringement in violation of 15 U.S.C. § 1114.

58. Allbirds has been, and will continue to be, damaged and irreparably harmed by the

actions of Giesswein, which will continue unless Giesswein is enjoined by this Court. Allbirds has no

adequate remedy at law in that the amount of damage to Allbirds’s business and reputation and the

diminution of the goodwill of the WOOL RUNNERS® trademark are difficult to ascertain with

specificity. Allbirds is therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116.

59. Allbirds is entitled to recover damages in an amount to be determined at trial and the

profits made by Giesswein on the sales of any products and services through Giesswein’s use of the

WOOL RUNNERS® trademark, the Infringing Names, and other confusingly similar product names

and descriptions in the United States. Furthermore, Allbirds is informed and believes, and on that

basis alleges, that the actions of Giesswein were undertaken willfully and with the intention of causing


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confusion, mistake, and deception, making this an exceptional case entitling Allbirds to recover treble

damages, reasonable attorneys’ fees, and costs pursuant to 15 U.S.C. § 1117, as well as prejudgment

interest.

SECOND CAUSE OF ACTION

Trade Dress Infringement Under 15 U.S.C. § 1125

60. Allbirds realleges and incorporates herein by reference paragraphs 1 through 59 of this

Complaint as if fully set forth here.

61. The WOOL RUNNERS® Trade Dress is non-functional in its entirety, visually

distinctive, and is unique in the footwear industry.

62. The design of the WOOL RUNNERS® Trade Dress is neither essential to its use or

purpose nor does it affect the cost or quality of the shoe. There are numerous other designs available

that are equally feasible and efficient, none of which necessitate copying or imitating the WOOL

RUNNERS® Trade Dress. The aforesaid combination of features provides no cost advantages to the

manufacturer or utilitarian advantages to the consumer. These features, in combination, serve to

render WOOL RUNNERS® shoes distinct and recognizable as goods originating from Allbirds.

63. The WOOL RUNNERS® Trade Dress has achieved a high degree of consumer

recognition and secondary meaning, which serves to identify Allbirds as the source of footwear

featuring said trade dress.

64. Allbirds has spent substantial time, effort, and money in designing, developing,

advertising, promoting, and marketing WOOL RUNNERS® shoes and has sold millions of dollars’

worth of said shoes.

65. The WOOL RUNNERS® Trade Dress is one of the most well recognized and

commercially successful styles of the Allbirds brand of footwear.

66. Due to its use, extensive sales, and significant advertising and promotional activities,

the WOOL RUNNERS® Trade Dress has achieved widespread acceptance and recognition among

the consuming public and trade throughout the United States.

67. There are numerous other shoe designs in the footwear industry, none of which

necessitate copying or imitating the WOOL RUNNERS® Trade Dress. However, due to the


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popularity and consumer recognition achieved by WOOL RUNNERS® shoes, said design has often

been the subject of infringement by third-parties, including by Giesswein.

68. Allbirds is informed and believes and herein alleges that Giesswein is a competitor and

has deliberately copied the WOOL RUNNERS® Trade Dress in an effort to exploit Allbirds’s

reputation in the market.

69. The Accused Products produced, distributed, advertised and offered for sale by

Giesswein bear nearly identical reproductions of the WOOL RUNNERS® Trade Dress, such as to

cause a likelihood of confusion as to the source, sponsorship or approval by Allbirds of Giesswein’s

products.

70. Giesswein’s use of the WOOL RUNNERS® Trade Dress is without Allbirds’s

permission or authority and in total disregard of Allbirds’s rights to control its intellectual property.

71. Giesswein’s use of the WOOL RUNNERS® Trade Dress is likely to lead to and result

in confusion, mistake or deception, and is likely to cause the public to believe that Giesswein’s

products are produced, sponsored, authorized, licensed by or otherwise connected or affiliated with

Allbirds, all to the detriment of Allbirds.

72. The actions of Giesswein described above and specifically, without limitation,

Giesswein’s use of the WOOL RUNNERS® Trade Dress, and other confusingly similar product

designs in connection with their footwear constitute trade dress infringement in violation of 15 U.S.C.

§ 1125.




diminution of the goodwill of the WOOL RUNNERS® Trade Dress are difficult to ascertain with

specificity. Allbirds is therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116.

74. Allbirds is entitled to recover damages in an amount to be determined at trial and the

profits made by Giesswein on the sales of any products and services through Giesswein’s use of the

WOOL RUNNERS® Trade Dress, and other confusingly similar product designs in the United States.

Furthermore, Allbirds is informed and believes, and on that basis alleges, that the actions of Giesswein


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were undertaken willfully and with the intention of causing confusion, mistake, and deception, making

this an exceptional case entitling Allbirds to recover treble damages, reasonable attorneys’ fees, and

costs pursuant to 15 U.S.C. § 1117, as well as prejudgment interest.

THIRD CAUSE OF ACTION

False Advertising Under 15 U.S.C. § 1125(a)

75. Allbirds realleges and incorporates herein by this reference paragraphs 1 through 74 of

this Complaint as if fully set forth here.

76. Giesswein has made material, false and misleading representations of fact in

commercial advertisements about the nature and qualities of its footwear made from wool, including

statements such as those described above that Giesswein is the creator of “The Original Wool Runner,”

which have deceived and/or are likely to deceive consumers.

77. Giesswein’s conduct constitutes false advertisement and unfair competition in violation

of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

78. Because of Giesswein’s conduct, Allbirds has been, and will continue to be, damaged

and irreparably harmed, and such harm will continue unless Giesswein is enjoined by this Court.

Allbirds has no adequate remedy at law in that the amount of damage to Allbirds’s business and

reputation and the diminution of the goodwill of the WOOL RUNNERS® trademark and WOOL

RUNNERS® Trade Dress are difficult to ascertain with specificity. Allbirds is therefore entitled to

injunctive relief pursuant to 15 U.S.C. § 1116.

79. Allbirds is entitled to recover damages in an amount to be determined at trial and profits

made by Giesswein on the sales of any products through use of the WOOL RUNNERS® trademark,

the WOOL RUNNERS® Trade Dress, the Infringing Names, and other confusingly similar product

names, descriptions, or designs. Furthermore, Allbirds is informed and believes, and on that basis

alleges, that the actions of Giesswein were undertaken willfully and with the intention of causing an

association between the WOOL RUNNERS® brand and Giesswein’s footwear, making this an

exceptional case entitling Allbirds to recover treble damages, reasonable attorneys’ fees, and costs

pursuant to 15 U.S.C. § 1117, as well as prejudgment interest.


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FOURTH CAUSE OF ACTION

Federal Unfair Competition And False Designation Of Origin

Under 15 U.S.C. § 1125



81. Giesswein has used in commerce and without Allbirds’s authorization or consent the

WOOL RUNNERS® trademark, the Infringing Names, and other similar product names and

descriptions, which are confusingly similar to Allbirds’s WOOL RUNNERS® trademark, along with

product designs and configurations that are confusingly similar to Allbirds’s WOOL RUNNERS®

Trade Dress.

82. Giesswein’s actions as described herein are likely to cause confusion and deception

among the consuming public and are likely to lead the consuming public to believe that Allbirds has

authorized, approved, or somehow sponsored Giesswein’s Accused Products and use of the WOOL

RUNNERS® trademark, the Infringing Names, and/or the WOOL RUNNERS® Trade Dress.

83. Giesswein’s actions constitute unfair competition and false designation of origin in

violation of 15 U.S.C. § 1125(a).

84. Upon information and belief, Giesswein’s acts of unfair competition, as described

above, are deliberate and willful and undertaken with the intent to misappropriate the goodwill and

reputation associated with Allbirds’s WOOL RUNNERS® footwear.




diminution of the goodwill of the WOOL RUNNERS® trademark and WOOL RUNNERS® Trade

Dress are difficult to ascertain with specificity. Allbirds is therefore entitled to injunctive relief

pursuant to 15 U.S.C. § 1116.





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names, descriptions, or designs. Furthermore, Allbirds is informed and believes, and on that basis

alleges, that the actions of Giesswein were undertaken willfully and with the intention of causing an

association between the WOOL RUNNERS® brand and Giesswein’s footwear, making this an

exceptional case entitling Allbirds to recover treble damages, reasonable attorneys’ fees, and costs

pursuant to 15 U.S.C. § 1117, as well as prejudgment interest.

FIFTH CAUSE OF ACTION

Common Law Trademark Infringement and Unfair Competition



88. Allbirds owns common law trademark rights in the WOOL RUNNERS® trademark

throughout the United States and in the State of California, and all such rights owned by Allbirds are

superior to any rights that Giesswein may claim to have in its use of WOOL RUNNERS, the Infringing

Names, or related words or marks.

89. Allbirds is informed and believes, and on that basis alleges, that Giesswein has

marketed and sold in commerce products and services under the WOOL RUNNERS® trademark,

under the confusingly similar Infringing Names, and under other confusingly similar product names

and descriptions.

90. Giesswein’s use of the WOOL RUNNERS® trademark, the Infringing Names, and

other confusingly similar product names and descriptions in connection with footwear is likely to

cause confusion, mistake, or deception as to the source or sponsorship of Giesswein’s products and/or

is likely to lead the consuming public to believe that Allbirds has authorized, approved, or somehow

sponsored Giesswein’s footwear.

91. Giesswein’s conduct, including as described above, constitutes trademark infringement

and unfair competition in violation of the common law of the State of California.

92. As a direct and proximate result of Giesswein’s conduct, Allbirds has suffered and will

continue to suffer substantial damage unless Giesswein is enjoined by this Court. Under California

common law, Allbirds is entitled to injunctive relief and compensatory and punitive damages.


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Giesswein’s conduct is aggravated by willfulness, wantonness, malice and reckless disregard for the

rights and welfare of Allbirds, for which California law allows the imposition of exemplary and

punitive damages in an amount sufficient to punish and make an example of Giesswein, and to deter

it from similar conduct in the future.

SIXTH CAUSE OF ACTION

Trade Dress Infringement Under California Common Law



94. Allbirds has common law rights to the WOOL RUNNERS® Trade Dress in the state

of California due to its extensive promotion and sales of products bearing said trade dress within the

state of California.

95. Allbirds’s WOOL RUNNERS® Trade Dress has achieved a high degree of consumer

recognition and secondary meaning nationwide and within the state of California, which serves to

identify Allbirds as the source of high-quality goods.

96. Giesswein’s infringement of the WOOL RUNNERS® Trade Dress constitutes

common law trade dress infringement in violation of the common law of the State of California.

97. Giesswein’s unauthorized use of the WOOL RUNNERS® Trade Dress has caused and

is likely to cause confusion as to the source of Giesswein’s products, all to the detriment of Allbirds.

98. Giesswein’s acts are willful, deliberate, and intended to confuse the public and to injure

Allbirds.

99. Allbirds has no adequate remedy at law to compensate it fully for the damages that

have been caused and which will continue to be caused by Giesswein’s infringing conduct, unless

Giesswein enjoined by this Court.

100. As a direct and proximate result of Giesswein’s conduct, Allbirds has suffered and will

continue to suffer substantial damage unless Giesswein is enjoined by this Court. Under California

common law, Allbirds is entitled to injunctive relief and compensatory and punitive damages.

101. Giesswein’s conduct is aggravated by willfulness, wantonness, malice and reckless

disregard for the rights and welfare of Allbirds, for which California law allows the imposition of


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exemplary and punitive damages in an amount sufficient to punish and make an example of Giesswein,

and to deter it from similar conduct in the future.

SEVENTH CAUSE OF ACTION

Unfair Competition Under Cal. Bus. & Prof. Code § 17200, Et Seq.

102. Allbirds realleges and incorporates herein by this reference paragraphs 1 through 101

of this Complaint as if fully set forth here.

103. By the acts described herein, Giesswein has engaged in unlawful and unfair business

practices that have injured and will continue to injure Allbirds’s business and property in violation of

Cal. Bus. & Prof. Code § 17200, et seq.




diminution of the goodwill of the WOOL RUNNERS® trademark and WOOL RUNNERS® Trade

Dress are difficult to ascertain with specificity. Allbirds is therefore entitled to injunctive relief.




names, descriptions, or designs.

106. Finally, as a direct and proximate result of Giesswein’s conduct alleged herein,

Giesswein has been unjustly enriched and should be ordered to disgorge any and all profits earned as

a result of its unlawful conduct.

EIGHTH CAUSE OF ACTION

Decree and Order Under 15 U.S.C. § 1119

107. Allbirds realleges and incorporates herein by this reference paragraphs 1 through 106

of this Complaint as if fully set forth here.

108. This is an action involving the marks contained in U.S. Registration Nos. 5149527 and

5326486, both of which are involved in pending USPTO Cancellation No. 92069219.


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109. USPTO Cancellation No. 92069219 should be dismissed with prejudice because the

mark contained in U.S. Registration No. 5149527 is not generic nor merely descriptive without

acquired distinctiveness.

110. U.S. Registration No. 5326486 should be cancelled on the basis of priority and

likelihood of confusion with the WOOL RUNNERS® trademark.

111. In connection with the foregoing, Allbirds is entitled to a determination by the Court

regarding the right to registration, and an order of the cancellation of registration, through a decree

and order certified by the court to the Director of the USPTO pursuant to 15 U.S.C. § 1119. USPTO

Cancellation No. 92069219 should be stayed until the decree and order sought herein is issued.

PRAYER FOR JUDGEMENT AND RELIEF

WHEREFORE, Allbirds requests the following relief:

A. That this Court enter judgment in favor of Allbirds on each of its claims for relief;

B. That Allbirds be granted preliminary and permanent injunctive relief under 15 U.S.C. § 1051,

et seq. and California Business and Professions Code § 17200, et seq; specifically, that

Giesswein and all of its officers, agents, servants, representatives, employees, attorneys, parent

and subsidiary corporations, assigns and successors in interest, and all other persons acting in

concert with it be preliminarily and permanently enjoined from (i) using the WOOL

RUNNERS® trademark, the Infringing Names, WOOL RUNNERS® Trade Dress, and any

other product names and descriptions that are confusingly similar to Allbirds’s WOOL

RUNNERS® trademark, in connection with the marketing, promotion, advertising, sale, or

distribution of any products and services and (ii) from any acts of infringement of the WOOL

RUNNERS® trademark and the WOOL RUNNERS® Trade Dress;

C. That Giesswein be ordered to destroy any remaining inventory of infringing or diluting

products as well as any and all advertising and promotional materials, displays, marketing

materials, web pages and all other data or things relating to the Infringing Names, footwear

sold under the Infringing Names, footwear infringing the WOOL RUNNERS® Trade Dress,

and similar wool footwear pursuant to 15 U.S.C. § 1118.

D. That Giesswein be required to file, within thirty (30) days from entry of an injunction, a


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declaration with this Court signed under penalty of perjury certifying the manner in which

Giesswein has complied with the terms of the injunction and destruction order;

E. That this Court decree and declare that Allbirds’s WOOL RUNNERS® trademark is inherently

distinctive, and thus judgment should be entered in favor of Allbirds and against Giesswein in

USPTO Cancellation No. 92069219 dismissing the action with prejudice; that U.S.

Registration No. 53326486 should be cancelled on the basis of priority and likelihood of

confusion with the WOOL RUNNERS® trademark; that USPTO Cancellation No. 92069219

should be stayed until the decree and order sought herein is issued; and further that this Court

certify said decree and order to the Director of the USPTO under 15 U.S.C. § 1119;

F. That Giesswein is adjudged to have violated 15 U.S.C. § 1114 and Allbirds’s rights under the

common law by infringing Allbirds’s WOOL RUNNERS® trademark;

G. That Giesswein is adjudged to have violated 15 U.S.C. § 1125(a) by making material, false

and misleading representations of fact in commercial advertisements about the nature and

qualities of Giesswein’s infringing footwear;

H. That Giesswein is adjudged to have violated 15 U.S.C. § 1125(a) and Allbirds’s rights under

the common law by unfairly competing against Allbirds by using a false designation of origin

for Giesswein’s infringing footwear;

I. That Giesswein is adjudged to unlawfully and unfairly compete against Allbirds under the laws

of the State of California, Cal. Bus. & Prof. Code § 17200, et seq.;

J. That Allbirds be awarded all actual damages sustained as a result of Giesswein’s conduct

and/or restitution and/or the costs for corrective advertising in amounts to be determined at

trial;

K. That Allbirds be awarded Giesswein’s profits derived from the acts described above, including

without limitation Giesswein’s infringing use of using the WOOL RUNNERS® trademark,

the Infringing Names, the WOOL RUNNERS® Trade Dress, and any other product names and

descriptions that are confusingly similar to Allbirds’s WOOL RUNNERS® trademark, or as

determined by an appropriate accounting;

L. That Allbirds be awarded three times three times of all Allbirds’s damages and all Giesswein’s


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profits, suffered as a result of Giesswein’s willful, intentional, and deliberate acts in violation

of the Lanham Act, as well as Allbirds’s costs, attorneys’ fees, and expenses in this suit under

15 U.S.C. § 1117;

M. That Allbirds be awarded damages in an amount sufficient to compensate it for the damage

caused by Giesswein’s unfair competition under Cal. Bus. & Prof. Code § 17200, et seq;

N. That Allbirds be granted prejudgment and post judgment interest;

O. That Allbirds be granted costs associated with the prosecution of this action; and

P. That Allbirds be granted such further relief as the Court may deem just and equitable.

DEMAND FOR JURY TRIAL

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Allbirds demands a trial by jury

on all matters that may be so tried.

Dated: September 6, 2019

COOLEY LLP /s/ John Paul Oleksiuk

John Paul Oleksiuk (283396) Attorneys for Plaintiff Allbirds, Inc.


Documents

Attorneys for Plaintiffipcasefilings.com/wp-content/uploads/2019/09/Allbirds.pdf · 2. Since then, Allbirds has enjoyed tremendous success and third-party recognition for its innovative