Sky Beauty v. Glam & Glits Nail Design - Complaint

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 1 of 30 PageID: 1
Gerard P. Norton
Christopher R. Kinkade
Nancy E. Halpern
FOX ROTHSCHILD LLP
997 Lenox Drive, Building 3
Lawrenceville, NJ 08648
Telephone: (609) 844-3020
Facsimile: (609) 896-1469
Email: gnorton@foxrothschild.com
ckinkade@foxrothschild.com
nhalpern@foxrothschild.com
Attorneys for Sky Beauty LLC
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
SKY BEAUTY, LLC,
Case No.:
Plaintiff,
COMPLAINT
v.
JURY DEMAND
GLAM AND GLITS NAIL DESIGN, INC.,

DBA KIARA SKY PROFESSIONAL
NAILS,
Defendant.
Plaintiff, Sky Beauty LLC (Sky Beauty) brings this action against Defendant, Glam
And Glits Nail Design, Inc., dba Kiara Sky Professional Nails (Glam and Glits) for a
declaratory judgment that it does not infringe any trade dress, trademark or design patent rights
of Defendant.
The Parties
1.
Plaintiff is a New Jersey limited liability company with its principal place of
business at 2360 Lakewood Road, Suite 3, Toms River, NJ 08755.
2.
Upon information and belief, Defendant is a California Corporation, with its
principal place of business at 8700 Swigert Ct., Suite 109-209, Bakersfield, CA 93311.
Jurisdiction and Venue
3.
This Court has subject matter jurisdiction over this complaint pursuant to the
Patent Laws of the United States, 35 U.S.C. 1 et seq., the Declaratory Judgment Act, 28
U.S.C. 2201-2202, and 28 U.S.C. 1331 and 1338(a).
An actual and justiciable
controversy exists between Sky Beauty and Glam and Glits regarding the invalidity and noninfringement of Glam and Glits claimed trade dress, trademarks and U.S. Design Patent No.
D758,737 (the '737 patent).
4.
Defendant, Glam and Glits, is subject to personal jurisdiction in this Court as
evidenced by its systematic and continuous contacts with the State of New Jersey. Further,
Defendant has asserted claims that Plaintiff is violating Defendants allegedly protected trade
dress, trademarks, and patent within this jurisdiction. Still further, Defendant interfered with
Sky Beautys business associates by threatening to sue them if they distribute Sky Beautys
products within this jurisdiction.
5.
Venue is proper in this jurisdiction pursuant to, inter alia, 28 U.S.C. 1391.
Background
6.
Plaintiff hereby incorporates by reference paragraphs 1 through 5 above as if
fully set forth herein.

7.
On or before July 2015, Plaintiff began preparations to launch its SKY nail
polish products.
8.
On July 28, 2015, Plaintiff received a letter from counsel for Defendant stating
that it considered Plaintiffs use of its SKY nail polish products to be infringing on Defendants
trade dress, common-law trademark rights in the marks KIARA SKY and KS KIARA SKY and
pending U.S. Design Patent Application No. 29/499,385. A true and correct copy of the letter
dated July 28, 2015 is attached hereto as Exhibit A.
9.
The letter (Ex. A.) was addressed to Ideal Salon Solutions, LLC at three
different addresses, including Sky Beautys address, 2360 Lakewood Road, Suite 3, Toms
River, NJ 08755. Sky Beauty and Ideal Salon Solutions, LLC are two separate corporations,
owned by the two same individuals.
Originally, Ideal Salon Solutions intended on
manufacturing and marketing the SKY nail polish products, but Sky Beauty took over that
activity.
10.
The letter (Ex. A.) states [i]f necessary, Kiara Sky Professional Nails can and
will file a lawsuit against Ideal Salon Solutions, as well as any of its substitutes, owners or alter
egos, to protect it KIARA SKY marks, its Kiara Sky Nail Polish Bottle Trade Dress, and the
goodwill associated with this intellectual property. Ex. A., p. 3.
11.
On August 31, 2015, Plaintiffs counsel sent a letter to Defendants counsel
denying that Plaintiff has violated Glam and Glits trade dress, trademark and patent rights, and
that there is any legitimate basis for the corresponding demands, namely, that Ideal Salon
Solutions cease and desist from using its SKY nail polish and related products. Plaintiffs
counsel also informed Defendants counsel that Plaintiff would be selling its nail polish under
the SKY MATCH mark. A true and correct copy of the letter dated August 31, 2015 is
attached hereto as Exhibit B.
12.
On October 30, 2015, Plaintiff filed its trademark application for the mark SKY
MATCH with the Trademark Office (Serial No. 86804838) and received a Notice of Allowance
on May 24, 2016. Plaintiff is currently planning the launch of a new brand, SKY MATCH,
under the trademark SKY MATCH.
13.
Given the history of the relatively amicable interaction between the parties and
nine months of silence from Defendant, Plaintiff was surprised to receive a demand letter from
Defendant on May 27, 2016, stating that it considered Plaintiffs use of its SKY [MATCH] nail
polish products infringing on Defendants pending U.S. Design Patent Application, which will
issue as Design Patent D 758,737 on June 14, 2016, as well as notification of Defendants
trademark rights in the registered marks KIARA SKY (U.S. TM Reg. 4913675), KS KIARA
SKY (U.S. TM Reg. 4879963), KS (U.S. TM Reg. 4913679), and KS (U.S. TM Reg.
4913681). A true and correct copy of the letter dated May 27, 2016 is attached hereto as
Exhibit C.
14.
On June 8, 2016, Plaintiffs counsel sent a letter to Defendants counsel denying
that Plaintiff has violated Glam and Glits trademark and patent rights, and that there is any
legitimate basis for the corresponding demands. Plaintiffs counsel also informed Defendants
counsel that Plaintiff would be selling its nail polish under the SKY MATCH mark. A true and
correct copy of the letter dated June 8, 2016 is attached hereto as Exhibit D.
15.
On June 24, 2016, Plaintiffs counsel sent a letter to Defendants counsel denying
that Plaintiff has violated Glam and Glits trademark and patent rights, and that there is any
legitimate basis for the corresponding demands. Plaintiffs counsel also informed Defendants
counsel that Plaintiff would be selling its nail polish under the SKY MATCH mark. A true and
correct copy of the letter dated June 24, 2016, with Appendix A is attached hereto as Exhibit
E.
16.
SKYs formative trademarks are commonly used in connection with nail polish.
For example, SKY trademark, is currently registered with the United States Patent and
Trademark Office as Registration Number 2059342 owned by LOreal.
In addition, the
following trademarks are registered in International Class: 03 covering goods described as nail
polish): BLUE SKY, Reg. No. 4730514; BLUESKYGEL, Reg. No. 4505042; and SKY RISE,
Reg. No. 4175701.
17.
On or around June 23, 2016 Glam and Glits threatened to sue Sky Beautys
distributors if they continue to distribute Sky Beautys products, interfering with Sky Beautys
contracts with its distributors, crippling its operations, and creating irreparable harm to its
reputation during its most critical phaseintroducing a new, non-infringing product to the
crowded nail polish space.
CLAIM I
(DECLARATORY JUDGMENT OF NO TRADE DRESS INFRINGEMENT)
18.
Sky Beauty incorporates by reference the factual allegations contained in
paragraphs 1 through 17 above as if fully set forth herein.

19.
There is no likelihood that consumers will be confused as to the source of the
parties products.
20.
Sky Beauty does not infringe and has not infringed any trade dress rights that
Glam and Glits may possess in its nail polish products.

21.
A judicial declaration of non-infringement of Glam and Glitss asserted trade
dress rights is necessary and appropriate to resolve this controversy.

CLAIM II
(DECLARATORY JUDGMENT OF NO PROTECTABLE TRADE DRESS)
22.
paragraphs 1 through 21 above as if fully set forth herein.

23.
Glam and Glits alleged trade dress is generic, functional, has not acquired
distinctiveness, and does not function as an indicator of source, or otherwise as a trademark.
24.
Glam and Glits does not possess any valid and protectable trade dress rights in
its nail polish products.

25.
A judicial declaration of Glam and Glits lack of protectable trade dress rights is
necessary and appropriate to resolve this controversy.

COUNT III
(NON-INFRINGEMENT OF THE GLAM AND GLITS TRADEMARKS)
26.
paragraphs 1 through 25 of this complaint, as if fully set forth herein.

27.
Plaintiffs use of SKY MATCH in connection with its nail polish product line is
not likely to cause confusion or mistake with Defendants use of KIARA SKY, KS KIARA
SKY, or KS, which are weak terms when used in connection with nail polish and related
services.
28.
Plaintiffs use of SKY MATCH in connection with its nail polish product line
and services does not infringe any protectable trademark rights Defendant may have in KIARA
SKY, KS KIARA SKY, or KS under federal or state trademark laws, including any of
Defendants rights that may flow from its trademark registrations, because they are weak terms
when used in connection with nail polish and related services.
29.
An actual and justiciable controversy exists between Plaintiff and Defendant
with respect to Defendants purported trademark rights.

30.
Declaratory relief will resolve this controversy.
31.
A judicial declaration of Glam and Glits lack of protectable trademark rights is
COUNT IV
(DECLARATORY JUDGMENT OF INVALIDITY OF DESIGN PATENT D758,737)
32.

33.
Glam and Glits claims to be the present owner of Design Patent D758,737 and
that it intends on enforcing its intellectual property rights against Sky Beauty. See Ex. C.
34.
As evidenced by the Complaint and Exhibits A-C, and by Glam and Glits
accusation of patent infringement against Sky Beauty, there exists a substantial and continuing,
actual and justiciable controversy between Plaintiff and Defendant concerning the validity of
the '737 patent.
35.
36.
A judicial declaration that the claims of the '737 patent are invalid for failure to
comply with one or more provisions of 35 U.S.C. 1 et seq., including but not limited to
102, 103, and/or 112 is necessary and appropriate to resolve this controversy.
COUNT V
(DECLARATORY JUDGEMENT OF NON-INFRINGEMENT OF DESIGN PATENT
D758,737)
37.

38.
Sky Beautys manufacture, use, sale, offer for sale, or importation of nail polish
products, including the SKY MATCH products, does not and has not infringed any valid and
enforceable claim of the '737 patent.
39.
40.
A judicial declaration that Sky Beauty does not infringe the claims of the '737 is

7
COUNT VI
(UNLAWFUL INTERFERENCE WITH PROSPECTIVE ECONOMIC ADVANTAGE)
41.

42.
Sky Beauty has a reasonable expectation of economic benefit from its launch of
its new SKY MATCH products.

43.
Glam and Glits have intentionally and maliciously interfered with Sky Beautys
sales of its products by threatening Sky Beautys distributors with law suits if they continued to
purchase and distribute those products.
44.
Despite its knowledge that Sky Beautys products did not infringe any of Glam
and Glits alleged intellectual property rights, as repeatedly advised by Sky Beautys attorney,
Glam and Glits wrongfully and without valid justification interfered with Sky Beautys
business relationship and damaged Sky Beautys reputation and expectancy of economic
benefit by interfering with sales of its newly launched non-infringing product.
45.
Glam and Glits has sought to and has harmed Sky Beauty and its business
interests and prospective economic advantages and Sky Beuaty is entitled to recover its
damages resulting from Glam and Glits unlawful conduct.
RELIEF SOUGHT:
WHEREFORE, Sky Beauty respectfully requests that this Court:
(1)
Enter judgment in favor of Plaintiff and against Defendant;
(2)
Issue an order declaring that Plaintiffs planned use of SKY MATCH will not
infringe on any federally or common law protected trade dress rights of Defendant;
(3)
Issue an order declaring that Plaintiff would not violate any federal or state law
as a result of its planned use of the SKY MATCH mark in commerce;
(4)
Enter a declaratory judgment that Plaintiff has not infringed any valid and
enforceable claim of the '737 patent;

(5)
Enter a declaratory judgment that the claims of the patents-in-suit are invalid
for failure to comply with one or more provisions of 35 U.S.C. 1 et seq., including but not
limited to 102, 103, and/or 112;
(6)
Enter a judgment that Glam and Glits be held liable for unlawful interference
with prospective economic advantage;

(7)
Order that Defendant pay compensatory damages to Plaintiff in an amount to
be determined at trial;
(8)
Award Sky Beauty its costs and reasonable attorneys fees incurred in this
action; and
(9)
Grant Sky Beauty any such other, further, different, or additional relief as this
Court deems just, equitable, and proper.

DEMAND FOR JURY TRIAL
Sky Beauty demands trial by jury on all issues triable to a jury.
Dated: June 24, 2016
Respectfully submitted,
FOX ROTHSCHILD LLP
By: s/Gerard P. Norton/
Gerard P. Norton
Nancy E. Halpern
Telephone: (609) 896-3600
Facsimile: (609) 896-1469
gnorton@foxrothschild.com
Attorneys for Plaintiff Sky Beauty LLC
9
LOCAL CIVIL RULE 11.2 CERTIFICATION

Pursuant to Local Civil Rule 11.2, the undersigned attorney for Plaintiff, Sky Beauty
LLC, certifies that, to the best of his knowledge, the matters in controversy are not the subject of
any other action pending in any court, or of any pending arbitration or administrative proceeding.
FOX ROTHSCHILD LLP

Gerard P. Norton
Nancy E. Halpern
Telephone: (609) 896-3600
Facsimile: (609) 896-1469
gnorton@foxrothschild.com
10
EXHIBIT A
LAPPLE IP LAW
18101 Von Karman Avenue

Third Floor
Irvine, CA 92612
Telephone: (949) 756-4889
Facsimile: (949) 242-9789
www.lappleiplaw.com
A PROFESSIONAL CORPORATION
INTELLECTUAL PROPERTY MATTERS
Patents I Trademarks I Copyrights I Trade Secrets
July 28, 2015

Via E-mail (Contact@SelectlSS.com) & COPIES by Certified Mail
President & CEO
Ideal Salon Solutions, LLC
1288 Carmen Court
Toms River, NJ 08755
President & CEO

999 Airport Road
Lakewood, NJ 08701
President & CEO

PO Box 1822
Toms River, NJ 08754
Re:
Infringement of Trademark and Trade Dress Rights of GLAM AND GUTS

NAIL DESIGN, INC. d.b.a. KIARA SKY PROFESSIONAL NAILS
Dear Sir or Madam:

Our law firm represents Glam and Glits Nail Design, Inc., d/b/a Kiara Sky Professional
Nails ("Kiara Sky Professional Nails"), in the protection and assertion of its intellectual property
rights. It has come to our attention that your company, Ideal Salon Solutions, LLC ("ISS" or
"You"), violates numerous intellectual property rights owned by Kiara Sky Professional Nails.
Accordingly, we hereby demand that ISS immediately cease and desist all advertising and sale of
your "SKY" nail polish and any related "SKY" products.
As you are aware, Kiara Sky Professional Nails is an established business offering soak
off gel polish and nail polish to beauty and nail-supply stores and nail technicians, both in the
United States and to select countries abroad.
Kiara Sky Professional Nails owns numerous trademark and trade dress rights and is in
the process of confirming additional rights with the United States Trademark Office. In
particular, Kiara Sky Professional Nails owns common-law trademark rights in the marks
KIARA SKY and KS KIARA SKY ("the KIARA SKY Marks" or "the Marks"). Kiara Sky
Professional Nails also has a pending application to register its trademark, KS KIARA SKY,
with the Trademark Office (Serial No. 86546329). Furthermore, Kiara Sky Professional Nails
owns common-law trade dress rights in the unique appearance of its Kiara Sky nail polish bottle
("Kiara Sky Nail Polish Bottle Trade Dress") (see Exhibit 1, attached) and has a pending designpatent application for the novel ornamental design of its Kiara Sky nail polish bottle.

President & CEO
July 28, 2015
Page 2
Kiara Sky Professional Nails has continually used KIARA SKY throughout the U.S. and
other parts of the world as its trademark since at least July 2014. Kiara Sky Professional Nails
has continually used the Marks and the Kiara Sky Nail Polish Bottle Trade Dress in association
with the sale of soak-off gel and nail polish, as well as in advertising campaigns, at trade shows
and in industry magazine advertisements. Products branded with the KIARA SKY marks and
the Kiara Sky Nail Polish Bottle Trade Dress are currently sold in over two-hundred (200) nail
and beauty supply stores, and used in thousands of nail salons in the U.S. The Kiara Sky
products, using the KIARA SKY Marks and Kiara Sky Nail Polish Bottle Trade Dress are
regularly and continuously featured in positive reviews on industry online sites. Accordingly,
Kiara Sky Professional Nails' distributors, customers, and the general public have come to
recognize the KIARA SKY Marks and the Kiara Sky Nail Polish Bottle Trade Dress as part of an
established and successful soak-off gel and nail polish brand.
We have discovered that ISS is intentionally trading on the goodwill of Kiara Sky
Professional Nails. Specifically, we recently learned that ISS is planning to begin selling a line
of soak-off gel and nail polish under the name "SKY." (See Exhibit 2, attached.) Your use of
this name is confusingly similar to the KIARA SKY Marks. In addition, we understand that your
proposed "SKY" product will be packaged in a bottle that is confusingly similar in appearance
the appearance to the KIARA SKY nail polish bottle. Consequently,
-- if not identical to
your advertising and any sales of "SKY" nail polish violate the common law trademark rights,
trade name rights, and trade dress rights of Kiara Sky Professional Nails.
It is clear that your use of the "SKY" mark and the confusingly similar Sky bottle shape,
is intended to and actually does confuse and misdirect customers seeking the goods of
Kiara Sky Professional Nails. In the last three weeks, Kiara Sky has received numerous contacts
from customers and potential customers who, in fact, have been confused by your "SKY" mark
and Sky bottle and who have mistakenly believed that your product and packaging was a genuine
product from Kiara Sky Professional Nails.
The conduct of Ideal Salon Solutions is actionable under federal law because you have
damaged ---- and continue to cause damage to Kiara Sky Professional Nails in every state in
which you have advertised and/or made sales. Your activities are unlawful and constitute
intentional trademark infringement, trade-dress infringement and unfair competition. Moreover,
upon issuance of a design patent for the Kiara Sky nail polish bottle, your conduct will also
constitute patent infringement under federal law.
President & CEO

July 28, 2015
Page 3
This letter constitutes Kiara Sky Professional Nails' demand that you immediately cease
and desist any and all advertising, sale or use of the confusingly similar "SKY" name and Sky
bottle.
Federal trademark law provides numerous remedies for trademark and trade dress
infringement
including, but not limited to, preliminary and permanent injunctive relief,
money damages, disgorgement of your profits, the destruction or confiscation of your infringing
products and promotional materials, and where intentional infringement is shown a court
award of treble money damages as well as Kiara Sky Professional Nail's attorneys' fees.
If necessary, Kiara Sky Professional Nails can and will file a lawsuit against Ideal Salon
Solutions, as well as any of its subsidiaries, owners or alter egos, to protect its KIARA SKY
marks, its Kiara Sky Nail Polish Bottle Trade Dress, and the goodwill associated with this
intellectual property. Once we do so, Kiara Sky Professional Nails we will seek:
(i)
preliminary and permanent injunctions against any further use of the confusingly
similar "SKY" mark or sale of the "SKY" nail polish;
(ii)
an order from the court directing you to take steps, including destruction of all
infringing "SKY" nail polish and advertising, and corrective advertising, to repair
the damage you have and continue to do to the rights and goodwill of Kiara Sky
Professional Nails;
(iii)
an accounting of your profits from infringing sales and an award of those profits
to Kiara Sky Professional Nails;
(iv)
an award money damages equal to all lost profits of Kiara Sky Professional Nails
due to infringing sales of the "SKY" nail polish;
(v)
treble money damages due to intentional infringement; and
(vi)
reimbursement for its attorney's fees.
You can avoid legal action only by immediately ceasing and desisting from any and all
infringing activity, including by stopping at once your use of the "SKY" name and/or use of the
"SKY" nail polish bottle to market, promote, or sell all nail polish.
President & CEO

July 28, 2015
Page 4
We demand that you provide, within seven (7) days of the receipt of this letter, written
confirmation of your agreement to these terms, including your agreement to cease any sales of
"SKY" gels and nail polish. We further demand that, that within (14) days of the receipt of this
letter, ISS stop, pull and cancel all advertising using the all use of the confusingly similar "SKY"
mark and/or "SKY" nail polish bottle.
If you fail or refuse to do so, we will proceed to a lawsuit naming ISS, as well as any
subsidiaries, owners, or alter egos involved with the violations of our client's rights.
I recommend you consult with an attorney before taking any action. If you or your
attorney have, any questions, pleaSe feel free to contact me.
Sincerely,
LAPPLE IP LAW, P.C.
/s Matthew C. Lapple/
Matthew C. Lapple, Esq.
Exhibit 1
KIARA
SKY.
I- GEL POLISH et
KIARA SKY
a
orbase .0;e1
PROF ESSI0NAL
t\AIL LACQUER
t.
4" 5 11 oz
"
rttate u!as
Exhibit 2
t
ernova
Near
ttuti
.1"s,
087 Lc,
riw,rsoi
EXHIBIT B
Gerard P. Norton
Direct Dial: (609) 844-3020
Email Address: gnorton@foxrothschild.com
August 31, 2015

VIA EMAIL (matt@lappleiplaw.com)
and FIRST CLASS MAIL
Lapple IP Law
18101 Von Karman Avenue, Third Floor
Irvine, CA 92612
Re:
Dear Mr. Lapple:

We represent Ideal Salon Solutions, LLC (Ideal Salon Solutions). We have had the
opportunity to review your letter of July 28, 2015 sent on behalf of your client Glam and Glits Nail
Design, Inc., dba Kiara Sky Professional Nails (Kiara Sky Professional Nails) and offer you the
following response.
We respectfully disagree with the allegations that Ideal Salon Solutions has violated your
clients trademark and patent rights, and that there is any legitimate basis for the corresponding
demands, namely, that Ideal Salon Solutions cease and desist from using its SKY nail polish and
related products.
Kiara Sky Professional Nails does not possess exclusive rights to the use of the SKY
trademark, as that mark is currently registered with the United States Patent and Trademark Office as
Registration Number 2059342 owned by LOreal. In addition to the foregoing SKY Registration,
the following trademarks are registered in International Class: 03 covering goods described as nail
polish): BLUE SKY, Reg. No. 4730514; BLUESKYGEL, Reg. No. 4505042; and SKY RISE, Reg.
No. 4175701. Clearly, Kiara Sky Professional Nails cannot claim exclusive rights to use and
registration of the term SKY for use in connection with nail polish, and as such, Ideal Salon
Solutions use of the mark SKY in advertising its nail polish and related products cannot be found to
infringe Kiara Sky Professional Nails common law trademark rights to KIARA SKY and KS
KIARA SKY marks, as well as pending trademark application nos. 86717308 and 86546329, in
those marks respectively.

August 31, 2015
Page 2
With regard to your allegation that Ideal Salon Solutions infringes Kiara Sky Professional
Nails trade dress and design patent rights (pending application), numerous other companies,
including but not limited to Orlys Gelfx; Nanacoco, Inc.s nail polish; LeChat Nail Care Products
Perfect Match; OPIS nail polish; Angelacqs nail and gel lacquer; Creative Nail Designs Shellac;
Essies nail gel and polish; and Color Clubs nail gel and polish are also selling nail polish products
in bottles similar in design to Kiara Sky Professional Nails product. Thus, your Clients use of its
alleged trade dress will not be found to be a substantially exclusive use in commerce, since
numerous other companies are also selling nail polish products in bottles similar in design to Kiara
Sky Professional Nails product.
It is also worth noting that all of these nail polish products are marketed in bottles of similar
size and shape, and actually have noticeable differences. For example, the Kiara Sky Professional
Nails bottle is marked with the letters KS raised on the top of the screw-on brush applicator handle,
has a pronounced shoulder on the top of the bottle and has an indented circular base on the bottom of
the bottle, whereas Ideal Salon Solutions bottle does not contain any of these features in its soon to
be marketed product. Thus, even if your client was found to possess some type of trade dress or
design patent right, the two product designs are distinct such that there is no likelihood of confusion
and the two designs would not appear substantially the same to the ordinary observer.
Notwithstanding our disagreement with respect to the scope of Kiara Sky Professional Nails
alleged trademark and patent rights, Ideal Salon Solutions will agree to change its product name
from SKY to SKY MATCH. Based upon all of these factors, we conclude that there is no likelihood
of confusion between your clients product and my clients proposed product. Therefore, we have
advised our client that it may begin selling its nail polish products under the SKY MATCH
name/trademark.
I have been informed that Kiara Sky Professional Nails has been contacting my Clients
suppliers and threatening them with trademark infringement litigation. We demand that your client
immediately cease and desist from its tortious interference with Ideal Salon Solutions contractual
and business relationships with its suppliers.
This letter does not constitute a complete or exhaustive statement of all of Ideal Salon
Solutions rights, claims, contentions or legal theories regarding this matter. Nothing stated herein is
intended as, nor should it be deemed to constitute, a waiver or relinquishment of any of Ideal Salon
Solutions rights or remedies, whether legal or equitable, all of which are hereby expressly reserved.
Nothing stated herein is intended as, nor should be deemed to constitute, an admission of Ideal Salon
Solutions. This letter is made pursuant to Federal Rule of Evidence 408.
Very truly yours,
FOX ROTHSCHILD LLP
EXHIBIT C
LAPPLE UBELL IP LAW, LLP

PATENTS I TRADEMARKS I COPYRIGHTS I TRADE SECRETS
FRANKLIN D. UBELL*
MA I 1 HEW C. LAPPLE*
18101 VON KARMAN AVE,
*REGISTERED PATENT
HA TRAN LAPPLE
3RD FLOOR
A1 1 ORNEY
IRVINE, CALIFORNIA 92612
WWW.LAPPLEUBELL.COM
T +1 949-756-4889
F +1 949.242-9789
May 27, 2016
Via Email (gnorton@pfoxrothschild.com) and First Class Mail

Gerard P. Norton, Esq.
Fox Rothschild, LLP
P.O. Box 5231
Princeton, NJ 08543-5231
Re:
Updated Cease & Desist Demand to Ideal Salon Solutions, LLC
Dear Mr. Norton:

We write to update you regarding the issuance of certain intellectual property rights of
Glam and Glits Nail Design, Inc., d/b/a Kiara Sky Professional Nails ("Kiara Sky Professional
Nails"). We also renew our demand that Ideal Salon Solutions, LLC ("ISS"), and its individual
owners respect the intellectual property of Kiara Sky Professional Nails.
Introduction
As you will recall, we corresponded in July and August 2015. In your letter of August 31,
2015, you made certain claims and representations regarding the intellectual property of Kiara Sky
Professional Nails and the prospective SKY nail polish products of ISS. You also informed us of
the advice you provided to ISS regarding this matter. However, to the best of our knowledge, your
client did not begin offering for sale or selling any of the infringing SKY products in 2015.
Accordingly, we deemed that neither further action, nor a response, was necessary at that time.
However, it has come to our attention that ISS recently may have reversed course and that ISS
intends soon to begin offering for sale and selling its SKY nail polish and related SKY products.
Accordingly, we write to warn ISS to drop its renewed efforts to offer to sell the infringing SKY
nail polish.
U.S. Design Patent No. D758737

Over the past nine months, the intellectual property rights of Kiara Sky Professional Nails
have continued to grow in strength and number.
In our prior correspondence, we notified ISS that Kiara Sky Professional Nails was seeking
design patent protection for its novel and ornamental nail polish bottle. The U.S. Patent Office
has allowed the design patent for the Kiara Sky nail polish bottle. The design patent will issue as

Gerard P. Norton, Esq.
May 27, 2016
Page 2
U.S. Design Patent No. D758737 on June 14, 2016. All prior art referenced in your August 31,
2015 letter was disclosed to the Patent Office and considered by the Examiner.
In addition, a continuation design patent application is pending.
As you are aware, an infringer of a design patent is subject to an award of monetary
damages in the amount of the patent owner's lost profits due to the infringement, or the
infringer's total profit from the infringement, whichever is more. 35 U.S.C. 284; 35 U.S.C.
289. Further, in light of the kind of willful infringement that your client is contemplating, such
an award of damages may be increased up to three times, and the court may impose attorneys' fees.
Trademark Registrations
Since our last correspondence, Kiara Sky Professional Nails has also secured the following
U.S. Trademark Registrations:
KIARA SKY (U.S. TM Reg. No. 4913675);
KS KIARA SKY (U.S. TM Reg. No. 4879963);
KS (U.S. TM Reg. No. 4913679); and
KS (U.S. TM Reg. No. 4913681)
Conclusion
Kiara Sky Professional Nails has protected - and will continue to protect - its intellectual
property rights in its unique and ornamental Kiara Sky nail polish bottle and its well-known
KIARA SKY trademarks. We demand that, on or before the close of business on June 10, 2016,
ISS and its individual owners provide their assurance that they will respect these intellectual
property rights and agree not to attempt to sell the infringing SKY nail gel products. If ISS and its
individual owners fail to do so, Kiara Sky Professional Nails reserves all rights to enforce its
intellectual property against ISS, as well as its individual owners, in a court of law.
If you have any questions, give me a call.
Very truly yours,
Digitally signed by
Matthew C. Lapple
Date: 2016.05.27 10:49:59
Matthew C. 1...apis;e -07'00'
EXHIBIT D
Mail: P.O. Box 5231, Princeton, NJ 08543-5231

Princeton Pike Corporate Center
Lawrenceville, NJ 08648-2311
Tel 609.896.3600 Fax 609.896.1469
www.foxrothschild.com
GERARD P. NORTON
Direct Dial: 609-844-3020
Email Address: GNorton@FoxRothschild.com
June 8, 2016
Via Email (matt@lappleiplaw.com)
and First-Class Mail
Lapple Ubell IP Law, LLP
18101 Von Karman Avenue, 3rd Floor
Irvine, CA 92612
Re:
Dear Mr. Lapple:

As you know we represent Ideal Salon Solutions, LLC (Ideal Salon Solutions). We have
had the opportunity to review your letter of May 27, 2016 sent on behalf of your client Glam and
Glits Nail Design, Inc., dba Kiara Sky Professional Nails (Kiara Sky Professional Nails) and offer
you the following response.
As we previously informed you on August 31, 2015, we respectfully disagree with the
allegations that Ideal Salon Solutions has violated your clients patent and trademark rights, and that
there is any legitimate basis for the corresponding demands. With regard to your allegation that
Ideal Salon Solutions infringes Kiara Sky Professional Nails design patent rights, we will respond
after we have had an opportunity to review the matter, which will be subsequent to June 10, 2016
date, as, according to your correspondence, U.S. Design Patent No. D758737 will not even issue
until June 14, 2016.
With regard to your comments on Kiara Sky Professional Nails U.S. trademark registrations,
we previously informed you that your client does not possess exclusive rights to the use of the SKY
trademark. The actions of the U.S. Trademark Office and those in the industry only serve to further
support this position as our clients pending application for registration of its SKY MATCH
trademark was examined, approved, successfully published for opposition and has since been
allowed.

June 8, 2016
Page 2
Solutions rights, claims, contentions or legal theories regarding this matter. Nothing stated herein is
intended as, nor should it be deemed to constitute, a waiver or relinquishment of any of Ideal Salon
Solutions rights or remedies, whether legal or equitable, all of which are hereby expressly reserved.
Nothing stated herein is intended as, nor should be deemed to constitute, an admission of Ideal Salon
Solutions. This letter is made pursuant to Federal Rule of Evidence 408.
Very truly yours,
FOX ROTHSCHILD LLP
EXHIBIT E
Mail: P.O. Box 5231, Princeton, NJ 08543-5231

Princeton Pike Corporate Center
Lawrenceville, NJ 08648-2311
Tel 609.896.3600 Fax 609.896.1469
www.foxrothschild.com
GERARD P. NORTON
Direct Dial: 609-844-3020
Email Address: GNorton@FoxRothschild.com
June 24, 2016

Via Email (matt@lappleiplaw.com) and First-Class Mail
Lapple Ubell IP Law, LLP
18101 Von Karman Avenue, 3rd Floor
Irvine, CA 92612
Re:
Dear Mr. Lapple:

This is a follow-up to our June 8, 2016 letter responding to your letter of May 27, 2016 sent
on behalf of your client, Glam and Glits Nail Design, Inc., dba Kiara Sky Professional Nails (Kiara
Sky Professional Nails). Please be advised that we also represent Sky Beauty LLC an unrelated
entity who will be marketing this line of products.
As we previously informed you on August 31, 2015, we respectfully disagree with the
allegations that my client, Ideal Salon Solutions, has violated your clients patent and trademark
rights, and that there is any legitimate basis for the corresponding demands. With regard to your
allegation that Ideal Salon Solutions infringes Kiara Sky Professional Nails U.S. Design Patent No.
D758737 (the '737 Patent), we have reviewed the '737 Patent and find substantial differences
between the patent claim and my clients SKY MATCH nail polish product. Such differences
include the size and shape of the bottle and its components including the cap to which the brush is
attached, screw threads and bumper on bottle neck, shoulder on the top and base of the bottle, and
circular ridge on the bottom of the bottle. (See Appendix A attached hereto). Thus, the '737 Patent
claim and SKY MATCH nail polish product designs are distinct such that there is no likelihood of
confusion and the two designs would not appear substantially the same to the ordinary observer.
We conclude that there is no infringement by my clients making, using, selling, offering for sale or
importing into the United States, its SKY MATCH nail polish product.

June 24, 2016
Page 2
With regard to your comments on Kiara Sky Professional Nails U.S. trademark registrations,
we previously informed you that your client does not possess exclusive rights to the use of the SKY
trademark. The actions of the U.S. Trademark Office and those in the industry only serve to further
support this position as our clients pending application for registration of its SKY MATCH
trademark was examined, approved, successfully published for opposition and has since been
allowed.
I have been informed that Kiara Sky Professional Nails has been contacting my Clients
distributors and threatening them with patent and trademark litigation. In fact, yesterday a
distributor of my Client returned their shipment saying that Glam and Glits just announced to
everyone that they will sue whoever will take in my Clients nail polish products. We demand that
your client immediately cease and desist from its tortious interference with my Clients contractual
and business relationships with its suppliers.
Solutions or Sky Beautys rights, claims, contentions or legal theories regarding this matter.
Nothing stated herein is intended as, nor should it be deemed to constitute, a waiver or
relinquishment of any of my Clients rights or remedies, whether legal or equitable, all of which are
hereby expressly reserved. Nothing stated herein is intended as, nor should be deemed to constitute,
an admission of Ideal Salon Solutions or Sky Beauty. This letter is made pursuant to Federal Rule of
Evidence 408.
Very truly yours,
FOX ROTHSCHILD LLP

GPN/kp
Enclosure

APPENDIX A
DISTINCTIVE DIFFERENCES BETWEEN
SKY BEAUTYS
SKY nail polish products
DESIGN FEATURE
Top of cap
Narrowest width cap
Bottom of bottle
Neck
Threads on neck
Lower thread to bumper
Edge of shoulder
Body
Bottom of edge
Bottom Edge
Bottom
KIARA SKY PROFESSIONAL NAILS1

Design Patent D758737
(Nail Polish Bottle)
SKY BEAUTY
KIARA SKY
Indented dot
KS or no design
1.75
1.8
Indented number
Covered by ingredient label
1.45 cm from neck to top edge 1.6 cm from neck to top edge
0.15 cm between each other
<0.1 cm between each other
0.15-0.3 cm
0.3-0.5
0.15 cm
0.35 cm
3.2 cm circumference
3.35 cm circumference
Marked circumferential
Slight tethering
indentation
0.2 cm sharp notches
Slightly smooth elevated
circumferentially around
ridges circumferentially
bottom edge
around bottom edge
Indented number
Covered by ingredient label
and
threads
neck
Notches on edge of
bottom
bumper
shoulder
SIDE
VIEW
Bottom of
edge
BOTTOM VIEW
1
Glam And Glits Nail Design, Inc. does business as Kiara Sky Professional Nails
Case 3:16-cv-03729-FLW-LHG Document 1-1 Filed 06/24/16 Page 1 of 1 PageID: 31
Gerard P. Norton
Nancy E. Halpern
FOX ROTHSCHILD LLP
Telephone: (609) 844-3020
Facsimile: (609) 896-1469
Email: gnorton@foxrothschild.com
ckinkade@foxrothschild.com
nhalpern@foxrothschild.com
Attorneys for Sky Beauty LLC
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
SKY BEAUTY, LLC,
Plaintiff,
Case No.: 3:16-cv-03729

CORPORATE DISCLOSURE
STATEMENT
v.
Document electronically filed
GLAM AND GLITS NAIL DESIGN, INC.,
DBA KIARA SKY PROFESSIONAL
NAILS,
Defendant.
The undersigned counsel for Plaintiff, Sky Beauty LLC (Sky Beauty) certifies that this
party does not have a parent corporation, nor is there any publicly held corporation that owns
10% or more of this partys stock.
Respectfully submitted,
FOX ROTHSCHILD LLP
Gerard P. Norton
Nancy E. Halpern
Telephone: (609) 896-3600
Facsimile: (609) 896-1469
Case 3:16-cv-03729-FLW-LHG Document 1-2 Filed 06/24/16 Page 1 of 1 PageID: 32
CIVIL COVER SHEET
JS 44 (Rev. 11/15)
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS
DEFENDANTS
GLAM AND GLITS NAIL DESIGN, INC., DBA KIARA SKY

PROFESSIONAL NAILS
SKY BEAUTY, LLC

OCEAN
(b) County of Residence of First Listed Plaintiff
County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES)

NOTE:
(c) Attorneys (Firm Name, Address, and Telephone Number)
Attorneys (If Known)
FOX ROTHSHILD LLP

997 LENOX DRIVE, BUILDING 3, LAWRENCEVILLE, NJ 08648
609-896-3600
II. BASIS OF JURISDICTION (Place an X in One Box Only)

" 1
U.S. Government
Plaintiff
" 3
Federal Question
(U.S. Government Not a Party)
" 2
U.S. Government
Defendant
" 4
Diversity
(Indicate Citizenship of Parties in Item III)
KERN
(IN U.S. PLAINTIFF CASES ONLY)

IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

18101 VON KARMAN AVENUE, 3RD FLOOR, IRVINE, CA 92612
949-756-4889
III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

(For Diversity Cases Only)
PTF
Citizen of This State
" 1
DEF
" 1
and One Box for Defendant)

PTF
DEF
Incorporated or Principal Place
" 4
" 4
of Business In This State
Citizen of Another State
" 2
"
Incorporated and Principal Place

of Business In Another State
" 5
" 5
Citizen or Subject of a
Foreign Country
" 3
"
Foreign Nation
" 6
" 6
IV. NATURE OF SUIT (Place an X in One Box Only)

CONTRACT
"
"
"
"
"
"
"
"
"
"
"
"
TORTS
110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
& Enforcement of Judgment
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excludes Veterans)
153 Recovery of Overpayment
of Veterans Benefits
160 Stockholders Suits
190 Other Contract
195 Contract Product Liability
196 Franchise
"
"
"
"
"
"
"
"
"
"
"
"
"
"
"
"
REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property
"
"
"
"
"
"
"
PERSONAL INJURY
310 Airplane
315 Airplane Product
Liability
320 Assault, Libel &
Slander
330 Federal Employers
Liability
340 Marine
345 Marine Product
Liability
350 Motor Vehicle
355 Motor Vehicle
Product Liability
360 Other Personal
Injury
362 Personal Injury Medical Malpractice
CIVIL RIGHTS
440 Other Civil Rights
441 Voting
442 Employment
443 Housing/
Accommodations
445 Amer. w/Disabilities Employment
446 Amer. w/Disabilities Other
448 Education
FORFEITURE/PENALTY
PERSONAL INJURY
" 365 Personal Injury Product Liability
" 367 Health Care/
Pharmaceutical
Personal Injury
Product Liability
" 368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
" 370 Other Fraud
" 371 Truth in Lending
" 380 Other Personal
Property Damage
" 385 Property Damage
Product Liability
PRISONER PETITIONS
Habeas Corpus:
" 463 Alien Detainee
" 510 Motions to Vacate
Sentence
" 530 General
" 535 Death Penalty
Other:
" 540 Mandamus & Other
" 550 Civil Rights
" 555 Prison Condition
" 560 Civil Detainee Conditions of
Confinement
" 625 Drug Related Seizure

of Property 21 USC 881
" 690 Other
BANKRUPTCY
" 422 Appeal 28 USC 158
" 423 Withdrawal
28 USC 157
PROPERTY RIGHTS
" 820 Copyrights
" 830 Patent
" 840 Trademark
LABOR
" 710 Fair Labor Standards
Act
" 720 Labor/Management
Relations
" 740 Railway Labor Act
" 751 Family and Medical
Leave Act
" 790 Other Labor Litigation
" 791 Employee Retirement
Income Security Act
"
"
"
"
"
SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))
FEDERAL TAX SUITS

" 870 Taxes (U.S. Plaintiff
or Defendant)
" 871 IRSThird Party
26 USC 7609
IMMIGRATION
" 462 Naturalization Application
" 465 Other Immigration
Actions
OTHER STATUTES
" 375 False Claims Act
" 376 Qui Tam (31 USC
3729(a))
" 400 State Reapportionment
" 410 Antitrust
" 430 Banks and Banking
" 450 Commerce
" 460 Deportation
" 470 Racketeer Influenced and
Corrupt Organizations
" 480 Consumer Credit
" 490 Cable/Sat TV
" 850 Securities/Commodities/
Exchange
" 890 Other Statutory Actions
" 891 Agricultural Acts
" 893 Environmental Matters
" 895 Freedom of Information
Act
" 896 Arbitration
" 899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
" 950 Constitutionality of
State Statutes
V. ORIGIN (Place an X in One Box Only)

" 1 Original
Proceeding
" 2 Removed from

State Court
" 3
Remanded from
Appellate Court
" 4 Reinstated or
Reopened
" 5 Transferred from

Another District
(specify)
" 6 Multidistrict
Litigation
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
28 U.S.C. 2201-2202
VI. CAUSE OF ACTION Brief description of cause:
DECLARATORY JUDGMENT OF NON-INFRINGMENT OF PATENT, TRADEMARK AND TRADEDRESS
" CHECK IF THIS IS A CLASS ACTION

VII. REQUESTED IN
UNDER RULE 23, F.R.Cv.P.
COMPLAINT:
VIII. RELATED CASE(S)
(See instructions):
IF ANY
JUDGE
DATE
CHECK YES only if demanded in complaint:

" Yes
" No
JURY DEMAND:
DEMAND $
DOCKET NUMBER
SIGNATURE OF ATTORNEY OF RECORD
s/Gerard P. Norton, Esq.
06/24/2016
FOR OFFICE USE ONLY

RECEIPT #
AMOUNT
APPLYING IFP
JUDGE
MAG. JUDGE

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Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 1 of 30 PageID: 1

GLAM AND GLITS NAIL DESIGN, INC.,

business at 2360 Lakewood Road, Suite 3, Toms River, NJ 08755.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 2 of 30 PageID: 2

Upon information and belief, Defendant is a California Corporation, with its

An actual and justiciable

Defendant, Glam and Glits, is subject to personal jurisdiction in this Court as

Plaintiff hereby incorporates by reference paragraphs 1 through 5 above as if

fully set forth herein.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 3 of 30 PageID: 3

Originally, Ideal Salon Solutions intended on

On August 31, 2015, Plaintiffs counsel sent a letter to Defendants counsel

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 4 of 30 PageID: 4

On June 8, 2016, Plaintiffs counsel sent a letter to Defendants counsel denying

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 5 of 30 PageID: 5

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 17 above as if fully set forth herein.

There is no likelihood that consumers will be confused as to the source of the

Glam and Glits may possess in its nail polish products.

A judicial declaration of non-infringement of Glam and Glitss asserted trade

dress rights is necessary and appropriate to resolve this controversy.

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 21 above as if fully set forth herein.

distinctiveness, and does not function as an indicator of source, or otherwise as a trademark.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 6 of 30 PageID: 6

its nail polish products.

necessary and appropriate to resolve this controversy.

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 25 of this complaint, as if fully set forth herein.

An actual and justiciable controversy exists between Plaintiff and Defendant

with respect to Defendants purported trademark rights.

Declaratory relief will resolve this controversy.

A judicial declaration of Glam and Glits lack of protectable trademark rights is

necessary and appropriate to resolve this controversy.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 7 of 30 PageID: 7

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 31 of this complaint, as if fully set forth herein.

Declaratory relief will resolve this controversy.

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 36 of this complaint, as if fully set forth herein.

Declaratory relief will resolve this controversy.

necessary and appropriate to resolve this controversy.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 8 of 30 PageID: 8

Sky Beauty incorporates by reference the factual allegations contained in

paragraphs 1 through 40 of this complaint, as if fully set forth herein.

its new SKY MATCH products.

Enter judgment in favor of Plaintiff and against Defendant;

as a result of its planned use of the SKY MATCH mark in commerce;

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 9 of 30 PageID: 9

enforceable claim of the '737 patent;

with prospective economic advantage;

Order that Defendant pay compensatory damages to Plaintiff in an amount to

Court deems just, equitable, and proper.

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 10 of 30 PageID: 10

LOCAL CIVIL RULE 11.2 CERTIFICATION

Dated: June 24, 2016

FOX ROTHSCHILD LLP

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 11 of 30 PageID: 11

Case 3:16-cv-03729-FLW-LHG Document 1 Filed 06/24/16 Page 12 of 30 PageID: 12

18101 Von Karman Avenue

July 28, 2015

President & CEO

President & CEO

Infringement of Trademark and Trade Dress Rights of GLAM AND GUTS

Sky Beauty v. Glam & Glits Nail Design - Complaint

Sky Beauty v. Glam & Glits Nail Design - Complaint