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Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 1 of 14

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David S. Elkins (State Bar # 148077)


Joseph P. Grasser (State Bar # 255156)
S
QUIRE PPATTON
ATTON BBOGGS
OGGS (US)
SQUIRE
(US)LLP
LLP
620 Hansen Way
Palo Alto, California
California 94304
Telephone:
+1 650 856 6500
Facsimile:
+1 650 843 8777
Attorneys for Plaintiffs
ZIPPO M
ANUFACTURING CCO.
O. and
IPPMARK, INC.
INC.
ZIPPO
MANUFACTURING
and Z
ZIPPMARK,

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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

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620 Hansen Way

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Palo Alto, California 94304

SQUIRE PATTON BOGGS (US) LLP

Palo Alto, California 94304

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ZIPPO MANUFACTURING CO., a


Pennsylvania corporation, and
ZIPPMARK, INC., a Delaware corporation,

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Plaintiffs,
v.

Case No.
COMPLAINT FOR PATENT
INFRINGEMENT AND
TRADEMARK INFRINGEMENT
JURY TRIAL DEMANDED

LIGHTINTHEBOX HOLDING CO., LTD.,


a Chinese company,

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Defendant.
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For their Complaint against defendant LightInTheBox


LightlnTheBox Holding Co., Ltd. (LITB
("LITB" or

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"Defendant"),
("ZMC") and ZippMark, Inc. (ZippMark)
("ZippMark")
Defendant), plaintiffs Zippo Manufacturing Co. (ZMC)

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Zippo) allege as follows:


(collectively Plaintiffs
"Plaintiffs" or "Zippo")
IINTRODUCTION
NTRODUCTION

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1.

Based in Bradford, Pennsylvania since its founding over

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eighty years ago, ZMC is the innovator and manufacturer of the iconic

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Zippo flip-top, windproof, liquid


liquid fuel
fuel lighter.
lighter. From its status as a staple

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equipment for World War II GIs , to its appearance in over 1,500


piece of "equipment"

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motion pictures, stage plays and television shows over the years, the made-

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in-the-U.S.A. Zippo windproof lighter is an American icon.

I
COMPLAINT FOR PATENT INFRINGEMENT
AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 2 of 14

would rather profit unfairly off the investment and sweat equity of others rather than innovate

themselves. The
The famous
famous Zippo
Zippo mark,
mark, and the Zippo windproof lighters
lighter's iconic trade dress

LITBs infringement
infringement of the Zippo windproof lighters
and lighter mechanism
mechanism are
are no
no different.
different. LITB's
lighter's

trade dress and its wholesale


wholesale disregard
disregard of
of ZippMark's
ZippMarkswritten
writtenrequest
requesttotostop
stop
compel Plaintiff to

ask the Court to make LITB stop its infringement and to account for the damages that its

infringement has caused and is causing.

620 Hansen Way

Palo Alto, California 94304

Iconic personal items are often the subject of rampant counterfeiting by those who

SQUIRE PATTON BOGGS (US) LLP

2.
2.

3.
3.

ZMC is the owner by assignment of U.S. Patent no. 6,247,920, entitled Liquid
"Liquid

Fuel Lighter
920 patent's
patents abstract
abstract describes
describes the
Lighter with
with Fit-Up
Fit-Up Rib
Rib"(the
("the920
'920 patent).
patent"). The '920

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claimed invention as [a]


"[a] refillable pyrophoric lighter having an outer casing with a hinged cover

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and having an inside unit that is received inside the casing by a frictional fit that is enhanced by at

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least one transverse rib integrally formed


formed on
on the
the outside
outside of
of the
the housing
housing of
of the
theinside
insideunit.
unit." A true

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and correct copy of the 920


'920 patent is attached as Exhibit A.

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4.

Zippos wholly
wholly owned
owned subsidiary, plaintiff ZippMark, Inc. (ZippMark),
Zippo's
("ZippMark"), owns

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and licenses Zippos


Among the
the rights that ZippMark
Zippo's trademark rights in the United States. Among

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owns are

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o U.S. Trademark Registration no. 0317219 for the word mark ZIPPO, issued

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September 18, 1934, and U.S. Trademark Registration no. 1188884 for ZIPPO word +

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design, issued February 2, 1982 (collectively the ZIPPO


"ZIPPO Trademarks),
Trademarks"), and

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o U.S. Trademark Registration nos. 2,606,241 and 3,819,075, covering the windproof

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lighters
distinctivethree-dimensional
three-dimensionalshape
shape its
its trade
trade dress
dress
and
lighters' distinctive
and that
that issued
issued on

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August 13, 2002 and July 13, 2010, respectively (collectively the Shape
"Shape Trademarks)
Trademarks") as

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depicted in the illustrations for those registrations and reproduced below.

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-2-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 3 of 14

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U.S. Trademark Reg. no. 2,606,241

U.S. Trademark Reg. no. 3,819,075

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True and correct copies of ZippMarks


ZippMark's electronic printouts of the registrations for the ZIPPO
Trademarks and the Shape Registrations are attached as Exhibit B.
5.
5.

620 Hansen Way

Palo Alto, California 94304

SQUIRE PATTON BOGGS (US) LLP

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Product shapes and other types of trade dress cannot be registered with the U.S.

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Patent and Trademark Office (PTO)


("PTO") absent the existence of secondary
"secondary meaning.
meaning."11

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Registration of the Shape Trademarks is accordingly prima facie evidence that each has achieved

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meaning
no
secondary meaning
nosurprise,
surprise,given
giventhe
theiconic
iconicstatus
status of
of the
the Zippo
Zippo windproof
windproof lighter and

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continuous use of the trademarked shape for decades.


6.
6.

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Through its websites www.lightinthebox.com and www


www.miniinthebox.com,
miniinthebox.com, LITB

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sells two types of lighters


lighters that
that infringe
infringe Zippos
Zippo's patent
patent and
and trademark
trademark rights.
rights. Type A
"A" are, as

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shown below, out-and-out counterfeits of Zippos


Zippo's iconic windproof lighter, which look just like

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real Zippo windproof lighters and use the ZIPPO Trademarks to confuse purchasers into

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As also
also shown below, Type "B"
B infringe the Zippo windproof
believing that they are authentic.
authentic. As

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lighters
protected shape. Both
Bothtypes
typesof
oflighters
lighters impermissibly
impermissibly use
use transverse
transverse fit-up rubs as
lighters' protected

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claimed in the 920


'920 patent.

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1
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See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216 (2000).
-3-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 4 of 14

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2(

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3O

to

A
:314f,51F ORD Ph MALE IN i7 S A

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Type A: counterfeit
counterfeit Zippo
Zippo windproof
windproof lighter from LITB

Type B: LITB shape-infringing lighter


lighter2

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7.

SQUIRE PATTON BOGGS (US) LLP

LITBs
infringement of the '920
920 patent
patent robs
robs ZMC
ZMC of
of its
its entitlement to exclude
LITB's infringement

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others from making, using, selling, or offering to sell in the U.S., or importing into the U.S.,

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LITBs infringement
infringement of Zippo's
Zippos trademarks
trademarks lessens the
goods with the innovative
innovative fit-up
fit-up rib.
rib. LITB's

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distinctiveness of, and trades on the goodwill in, ZippMarks


ZippMark's ZIPPO Trademarks and Shape

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Trademarks.

620 Hansen Way

Palo Alto, California 94304

U)

034
M

z 3
0=

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8.

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infringing activity, Plaintiffs tried, on an amicable basis, to


On learning of LITBs
LITB's infringing

a
0. 0

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Through counsel,
counsel, Plaintiffs
Plaintiffs sent
sent LITB
LITB a detailed ceaseresolve LITBs
LITB's unlawful infringement. Through

U)a

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LITB ignored
ignored the
the letter
letter and
and its warning, compelling Plaintiffs
and-desist letter on June 24, 2016. LITB

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to bring this action to protect their rights.


THE PARTIES
PARTIES
THE

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9.
9.

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place of business located at 33 Barbour Street, Bradford, Pennsylvania 16701.


10.
10.

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ZMC is a corporation organized under the laws of Pennsylvania, with a principal

ZippMark is a corporation organized under the laws of Delaware, with a principal

place of business located at 1105 North Market Street, Suite 1300, Wilmington, Delaware 19801.
11.
11.

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Plaintiffs are informed and believe, and therefore allege, that LITB is a Cayman

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Islands exempt company, with a principal place of business located at Tower 2, Area D, Diantong

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Square, No. 7 Jiuxianqiao North Road, Chaoyang


Chaoyang District,
District, Beijing
Beijing 100015,
100015, Peoples
People's Republic of

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2

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Additional examples of infringing lighters sold by LITB can be seen at


http://www.miniinthebox.com/personalized-engraved-silver-oil-lighter_p2284537.html?prm=2.5.1.1
(last
http://www
miniinthebox.com/personalized-engraved-silver-oil-lighter_p2284537.html?prm=2.5.1.1 (last
accessed on Dec. 12, 2016); see also http://www.lightinthebox.com/personalized-engraved-silver-oillighter_p2284537.html?prm=1.5.1.1 (last
(last accessed on Dec. 12, 2016).

-4-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 5 of 14

China. LITB
LITB isis aa publicly
publicly traded
traded company;
company; its
its stock
stock trades in the form of American depository

receipts (ADRs)
LITB has
has appointed Law Debenture
("ADRs") on the New York Stock Exchange.
Exchange. LITB

Corporate Services Inc., 400 Madison Avenue, 4th Floor, New York,
York, NY
NY 10017,
10017, as
as LITBs
LITB's agent

for service of process in the U.S.

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seq., and for trademark dilution under 15 U.S.C. 1125(c).

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620 Hansen Way

This is an action for patent infringement under 35 U.S.C. 271(a), et seq., and for

trademark infringement arising under the Lanham Trademark Act of 1946, 15 U.S.C. 1051, et

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Palo Alto, California 94304

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SQUIRE PATTON BOGGS (US) LLP

JURISDICTION A
ND V
ENUE
JURISDICTION
AND
VENUE

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13.

This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.

1121 and 28 U.S.C. 1331 and 1338.


14.
14.

Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(2) because LITB

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has committed acts of patent and trademark


trademark infringement
infringement in
in this
this District.
District. Intra-district venue is

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proper in any division of the Court pursuant to N.D. Cal. Genl


Gen'l Order 44.D.3.

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B
ACKGROUND
BACKGROUND

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The Zippo Windproof Lighter is an American Icon

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15.

Zippo makes the iconic Zippo windproof

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lighter. The
The lighter
lighter owes
owes its
its enduring
enduring success to many

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factors. The
The flint
flint wheel guarantees a generous
generous spark.
spark. The

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unique, vented chimney


"chimney" design ensures that the spark

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will create a flame, even


even in
in the
the wind.
wind. The iconic design,

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easily refilled reservoir, ubiquitous use by American GIs

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during World War II, and even the unique sound made by

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the flip-top latch all contribute to the


the lighters
lighter's continuing

trIJ

'..41411.1F1

411111.1-

kalsie

scratched his shortest. Aar story 4o this

IJ~r lighinr in 1945, it slid storks today.


r..a r

AM

14:T=.17.

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popularity.

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16.

Founded by George Blaisdell in Bradford,

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Pennsylvania in 1933, Zippo is owned by one of Mr.

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Blaisdells direct
direct descendants,
descendants, continues
continues to be headquartered in Bradford and continues to make
Blaisdell's

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all of its flip-top, windproof lighters in the United States.


-5-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 6 of 14

has achieved such notoriety in large measure because of the quality, practicality and popularity of

its classic flip-top, windproof lighter,


lighter, which
which has
has made
made itit aa part
part of
of Americana.
Americana. Another reason for

the brands
notoriety, however, is ZippMark's
ZippMarks ceaseless
ceaseless efforts
efforts to police and enforce its
brand's notoriety,

trademark and trade dress rights.


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620 Hansen Way

As a key part of Zippos


ZippMarks longtime
longtime focus
focus on brand protection, over
Zippo's and ZippMark's

two decades ago ZippMark sought to register its trademark in the three-dimensional shape of the

windproof lighter. As
As aa result,
result, ZippMark
ZippMark obtained
obtained registrations
registrations from the PTO in Class 34 for

cigarette lighters, and in Class 9 for downloadable software electronic devices featuring audio and

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visual files and graphic designs to simulate


Zippo owns trademark registrations for the
simulate aa lighter.
lighter. Zippo

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unique shape of its iconic lighters in many other countries.

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Palo Alto, California 94304

The Zippo brand is one of the


the top-ten
top-ten well-known
well-known brands
brands in
in the
the U.S.
U.S. The brand

SQUIRE PATTON BOGGS (US) LLP

17.
17.

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Zippo Owns Extensive Rights in the Shape Trademarks


19.
19.

ZippMarks exclusive
exclusive licensee,
licensee, Zippo, has distributed, advertised and sold in U.S.
ZippMark's

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commerce its windproof lighters and related goods under ZippMarks


ZippMark's registered Shape

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Trademarks. ZippMark
ZippMark also
also has
has common
common law rights to these marks.

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20.

Zippo is the exclusive licensee of the Shape Trademarks


Trademarks (and
(and all
all of
of ZippMarks
ZippMark's

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other trademarks). At
At all
all times
times relevant
relevant to
to this
this action,
action, Zippo
Zippo has continuously sold significant

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numbers of Zippo lighters and related products bearing the Shape Trademarks throughout the

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United States. ZippMark


ZippMark and
and its
its related
related companies
companies have
have also extensively advertised and

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promoted the marks and products in the


the United
United States
States and
and throughout
throughout the
the world.
world. Products

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reflecting the Shape Trademarks have been the subject of numerous press and media reports and

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have appeared in over 1,500 motion pictures and television shows, such as the one below.

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Bruce Willis in Die Hard

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COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 7 of 14

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and promotion, and press coverage, the Shape Trademarks embody goodwill that is

extraordinarily valuable to ZippMark.

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Zippos Fit-Up Rib Invention


Zippo's
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chimney allowing providing a windproof flame, flint wheel providing a generous spark,

protective flip-top lid


lid with
with familiar
familiar "click"
clickwhen
whenopening
openingororclosing
closingitit
have endured from the

1930s to present. Yet


Yet Zippo
Zippo continues
continues to research innovations to make
make its
its lighters
lighters better.
better. One

such innovation is the fit-up


Claim 1 discloses a hinged,
fit-up rib
rib invention
invention claimed
claimed in
in the
the920
'920 patent.
patent. Claim
flip-top lighter casing and inside
"inside unit
unit" that has
at least one transverse rib disposed across a majority of the width
of the
the side
side walls
walls and
and integrally
integrally formed
formed therein, the
of at least one of
inside unit sized such that the transverse rib fits snugly inside the
casing so that the inside unit is held in position
position by a frictional
frictional fit
casing
be removed
removed from the casing
casing by
by hand,
hand, the
the transverse
transverse rib
yet can be
positioned such that it is near the bottom wall when the inside unit
is inserted into the casing.

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620 Hansen Way

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Palo Alto, California 94304

As detailed above, the Zippo


Zippo windproof
windproof lighter's
lightersoriginal
originalattributes
attributes
the vented

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SQUIRE PATTON BOGGS (US) LLP

By virtue of continued and extensive domestic and international sales, advertising

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The 920
patents Figure
Figure 11 at
at right
right shows
shows the inside unit
'920 patent's

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within the casing, with the transverse fit-up


"fit-up" rib on one side

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of the inside unit depicted with dashed lines as feature 70.

54 52

31

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56 37

60
c

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LITB Sells Infringing Lighters

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19

23.

- 20

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1,._

Through its www.lightinthebox.com and


tO

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I2I

-Y2

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www.miniinthebox.com
www
miniinthebox.com websites, LITB sells and has been

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selling Type A and Type


Type B
B lighters
lighters in
in the
the U.S.
U.S. The Type A

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ZippMark's ZIPPO
lighters are counterfeit and infringe ZippMarks

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Shape Trademarks.
Trademarks. The Type B lighters infringement ZippMarks
ZippMark's Shape
Trademarks and Shape

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Trademarks. Type
Type A
A and B lighters infringe at least
least claims
claims 1,
1, 2,
2, 33 and
and77of
ofthe
the920
'920 patent.
patent. For

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Type A and Type B lighters are referred to below as the Accused


the sake of brevity, LITBs
LITB's Type
"Accused

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Lighters.
Lighters."

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24.

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70
SIG

LITB's unauthorized
LITBs
unauthorized use of the ZIPPO Trademarks and Shape Trademarks is

likely to cause confusion about authorization, association, affiliation or sponsorship of the


-7-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 8 of 14

Accused Lighters
Lighters by
by Zippo.
Zippo.LITB
LITBisisaccordingly
accordinglytrading
tradingononand
andatatthe
thesame
sametime
timediluting
diluting

ZippMarks goodwill
goodwill in its Shape Trademarks.
ZippMark's

FIRST CLAIM FOR RELIEF

(Infringement of the 920


'920 Patent - 35 U.S.C. 271(a))

25.

ZippMark realleges and incorporates by reference paragraphs 1 through 24 above.

26.

As alleged above, the Accused Lighters infringe at least claims 1-3 and 7 of the

920
Specifically, claim 1 discloses in
'920 patent, either literally or under the doctrine of equivalents.
equivalents. Specifically,

pertinent part

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SQUIRE PATTON BOGGS (US) LLP

11
12

at least one transverse rib disposed across a majority of the width of at


least one of the side walls and integrally formed therein, the inside unit
transverse rib fits snugly inside the casing so that
sized such that the transverse
the inside unit is held in position by a frictional fit yet can be removed
from
transverse rib positioned
positioned such
from the casing by hand, the transverse
such that
that it is
near the bottom wall when the inside unit is inserted into the casing.

U)

Claim 2 depends on [t]he


"[t]he lighter of claim 1, wherein the transverse rib is disposed substantially

m ss
zg3
0 =

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Claim 33 likewise
likewise depends on "[t]he
[t]he lighter of claim 1,
parallel to the bottom wall of the casing.
casing." Claim

R
2
< 0
0.

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wherein a cross-section along a longitudinal axis of the

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transverse rib is defined by a curve having a single radius.


radius."

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Claim 7 also depends on [t]he


"[t]he lighter of claim 1, wherein the

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first side wall and the second side wall have a transverse side

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wall disposed thereon.


thereon."

Palo Alto, California 94304

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U)a

620 Hansen Way

en
O 0

0 3 E

20

27.

The Accused Lighters in fact copy the Zippo

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transverse ribs on each side of their inside


windproof lighters
lighter's transverse

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Each Accused
Accused Lighters'
Lighters transverse
transverse ribs
ribs span a majority
units. Each

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of the two side walls, near the bottom wall of the casing when

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The transverse
transverse ribs extend outwardly
the inside unit is inserted.
inserted. The

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just enough so that the inside unit fits snugly in the casing yet may be removed by hand with a

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The Accused
Accused Lighters
Lighters thus
thus meet all limitations of claims 1-3 and 7 of the 920
gentle tug. The
'920 patent,

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as shown in the above-left photo of the inside unit from a typical Accused Lighter.

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-8-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 9 of 14

28.

offering to sell the Accused Lighters in the U.S., and by importing the Accused Lighters into the

U.S.

29.

manner alleged above, and because LITB has had actual knowledge of the
the 920
'920 patent since at

least July 1, 2016, LITBs


infringement has been willful since at least then, if not before.
LITB's infringement
30.
30.

exclude others from selling or offering to sell covered lighters in the U.S. and/or importing them

into the U.S. ZMC


ZMC isis thus
thus entitled
entitled to
to recover
recover damages
damages from LITB to compensation for its
infringement.

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620 Hansen Way

LITBs
infringement of the '920
920 patent
patent has
has damaged
damaged ZMC by violating its right to
LITB's infringement

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Palo Alto, California 94304

Because the Accused Lighters meet each limitation of claims 1-3 and 7 in the

SQUIRE PATTON BOGGS (US) LLP

LITB has therefore infringed and continues to infringe these claims by selling and

31.
31.

LITBs
Accused Lighters harm ZMC in other ways,
For example, ZMC
LITB's Accused
ways, too.
too. For

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provides a lifetime warranty for its genuine


genuine windproof
windproof lighters.
lighters. When LITB sells counterfeit

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Zippo windproof lighters, however, consumers likely do not know that they are purchasing

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fakes. IfIf and


and when
when such
such fakes
fakes are
are presented
presented for
for repair
repair under
under warranty, customers discover that

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the warranty does not apply (because it only covers the genuine Zippos) and, in their

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disappointment, may blame ZMC or otherwise develop negative feelings about the genuine

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lighter.

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32.
32.

As detailed above, LITBs


LITB's continuing, intentional infringement of the
the 920
'920 patent

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irreparably harms ZMC. ZMC


ZMC will
will continue
continue to
to suffer
suffer irreparable harm absent entry of a

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permanent injunction enjoining LITB and all those acting on behalf of or in active concert or

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participation with any of them, from infringing


infringing the
the 920
'920 patent.

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SECOND CLAIM FOR RELIEF

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(Trademark Infringement - 15 U.S.C. 1114(1)(a))

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33.
33.

ZippMark realleges and incorporates by reference paragraphs 1 through 24 above.

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34.
34.

By making and selling the Accused Lighters, LITB is impermissibly using

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ZippMarks ZIPPO
ZIPPO Trademarks and Shape Trademarks in U.S.
ZippMark's
U.S. commerce.
commerce. As alleged above,

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such use is likely to (a) cause confusion or mistake among both actual and potential purchasers,

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and/or (b) deceive both actual and potential purchasers.


-9-

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 10 of 14

1
2

35.
35.

goodwill in its Trademarks.


on ZippMarks
ZippMark's goodwill

3
4

36.
36.

37.
37.

620 Hansen Way

Pursuant to 15 U.S.C. 1117(a), ZippMark is entitled to recover its actual

damages and/or
and/or LITB's
LITBsprofits
profitsfrom
fromsales
salesofofitsitslighters
lighters which
whichare
areunjust
unjustand
andillicit
illicitgains
gains
as

well as the costs of this action. In


In the
the alternative,
alternative, ZippMark
ZippMark is entitled to recover, at its election

any time before judgment is entered, statutory damages for LITBs


LITB's use of counterfeit marks as

provided by 15 U.S.C. 1117(c).

10

Palo Alto, California 94304

LITB is thus liable under 15 U.S.C. 1114(1)(a) for its past and continuing

infringement of the ZIPPO Trademarks and Shape Trademarks.

SQUIRE PATTON BOGGS (US) LLP

LITBs
use of
of the
the ZIPPO
ZIPPO Trademarks
Trademarks and Shape Trademarks is calculated to trade
LITB's use

38.
38.

As alleged above, LITBs


use of the ZIPPO Trademarks and Shape Trademarks
LITB's use

11

was and is intentional and in bad faith. Its


Its intent
intent to
to infringe
infringe is demonstrated by, among other

12

things,

13

o the famous nature


nature of
of both
both the
the ZIPPO
ZIPPOTrademarks
Trademarksand
andShape
ShapeTrademarks
Trademarks

14

using both the ZIPPO word trademark and ZIPPO word + design trademark,

15

and choosing the exact shape and proportions of the Zippo windproof lighter

16

out of all of the different lighters in the world cannot be coincidence;

17

o LITBs
complete disregard for ZippMark's
ZippMarks cease-and-desist
cease-and-desist letter, and
LITB's complete

18

o its continuing unauthorized sale and offers to sell the Shape Trademarks in

19
20

commerce in connection with LITBs


LITB's sales of lighters.
39.

LITBs
intent to
to infringe
infringe
or
LITB's intent
or its
its reckless
reckless disregard
disregard whether
whether its products infringe

21

the rights of trademark


trademark owners
owners
isisalso
alsodemonstrated
demonstrated by
by its
its involvement
involvement in
in a number of other

22

lawsuits alleging trademark infringement,


infringement, counterfeiting,
counterfeiting, and
and copyright
copyright infringement.
infringement. For

23

example, in October 2016 the Eastern District of Illinois entered a preliminary injunction last

24

month in favor of Luxottica and Oakley, Inc. and against LITB with respect to counterfeit

25

Oakley and RayBan sunglasses sold on LITBs


LITB's websites. Luxottica Group S.p.A. v. Light in

26

the Box Ltd., Case No. 16-cv-05314 (N.D. Ill.), D.I.


D.I. 119
119 (Oct.
(Oct. 19,
19, 2016).
2016). The lawsuit was the

27

second one brought


brought by
by Oakley
Oakley against
against LITB
LITBin
inthat
thatcourt
court
the
the first
first had
had ended
ended in a settlement

28

agreement that LITB allegedly breached.


Among other
other things, the district court found that the
breached. Among
"the
- 10 -

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 11 of 14

history of this lawsuit raises serious questions about [LITBs]


[LITB's] ability to police its own website to

ensure that it is not selling counterfeit goods.


goods." Id. at 13-14.

3
4
5
6

620 Hansen Way

Palo Alto, California 94304

SQUIRE PATTON BOGGS (US) LLP

40.

LITBs
intentional infringement and bad faith justify an award of enhanced
LITB's intentional

damages under 15 U.S.C. 1117(b) in an amount up to three times actual damages.


41.

Because this is an exceptional case under 15 U.S.C. 1117(a)(3), ZippMark

should be awarded its reasonable attorneys


attorneys' fees.
42.

In addition, because ZippMarks


ZippMark's remedies under 15 U.S.C. 1117(a) are not

sufficient to fully protect its continuing interest in preserving the ZIPPO Trademarks and Shape

Trademarks against future infringements by LITB and those with whom or which it is in active

10

concert, ZippMark is entitled to an injunction against the future use of the Shape Trademarks, or

11

any colorable imitation or confusingly similar variation of the Shape Trademarks, by LITB and

12

those with which it is in active concert.


ZippMark is
is also
also entitled to an injunction prohibiting any
concert. ZippMark

13

other infringing use by LITB.

14

THIRD CLAIM FOR RELIEF

15

(False or Misleading Descriptions or Representations of Fact - 15 U.S.C. 1125(a))

16

43.

ZippMark realleges and incorporates by reference paragraphs 1 through 24 and 34

17

through 42 above.

18

44.

By making and selling the Accused Lighters, LITB is impermissibly using

19

ZippMarks ZIPPO
ZIPPO Trademarks and Shape Trademarks in U.S.
ZippMark's
U.S. commerce.
commerce. As alleged above,

20

such use is likely to (a) cause confusion or mistake among both actual and potential purchasers,

21

and/or (b) deceive both actual and potential purchasers, as to the origin, sponsorship, or approval

22

of the lighters sold by LITB and/or LITBs


LITB's commercial activities.

23
24
25

45.

LITB is thus liable under 15 U.S.C. 1125(a)(1) for its past and continuing false

or misleading descriptions or representations of fact.


46.

Pursuant to 15 U.S.C. 1117(a), ZippMark is entitled to recover its actual

26

damages and/or LITB's


LITBsprofits
profitsfrom
fromsales
salesof
ofthe
theAccused
AccusedLighters
Lighters
which are unjust and illicit

27

gains
asaswell
wellasasthe
thecosts
costsofofthis
thisaction.
action. In
In the
the alternative,
alternative, ZippMark is entitled to recover, at its

28
- 11 -

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 12 of 14

election any time before judgment is entered, statutory damages


damages for
for LITBs
LITB's use of counterfeit

marks as provided by 15 U.S.C. 1117(c).

was and is intentional and


LITBs intentional
intentional use
use and
and bad faith justify an award of
and in
in bad
bad faith.
faith. LITB's

enhanced damages under 15 U.S.C. 1117(b) in an amount up to three times actual damages.

620 Hansen Way

Palo Alto, California 94304

As alleged above, LITBs


use of the ZIPPO Trademarks and Shape Trademarks
LITB's use

SQUIRE PATTON BOGGS (US) LLP

47.

48.

Because this is an exceptional case under 15 U.S.C. 1117(a)(3), ZippMark

should be awarded its reasonable attorneys


attorneys' fees.
49.

In addition, because ZippMarks


ZippMark's remedies under 15 U.S.C. 1117(a) are not

sufficient to fully protect its continuing interest in preserving the ZIPPO Trademarks and Shape

10

Trademarks against future infringements by LITB and those with whom or which it is in active

11

concert, ZippMark is entitled to an injunction against the future use of the ZIPPO Trademarks and

12

Shape Trademarks, or any colorable imitation or confusingly similar variation of the ZIPPO

13

Trademarks and Shape Trademarks, by LITB and those with which it is in active concert.

14

ZippMark is also entitled to an injunction prohibiting any other infringing use by LITB.

15

FOURTH CLAIM FOR RELIEF

16

(Dilution of a Famous Mark - 15 U.S.C. 1125(c))

17

50.
50.

ZippMark realleges and incorporates by reference paragraphs 1 through 22 and 34

18

through 42 above.

19

51.
51.

ZippMarks ZIPPO
ZIPPO Trademarks
Trademarks and iconic Shape Trademarks are famous.
ZippMark's

20

52.
52.

LITB began using copies or colorable imitations of the ZIPPO Trademarks and

21

Shape Trademarks in commerce and in connection with lighters sold by LITB long after

22

ZippMarks ZIPPO
ZIPPO Trademarks
Trademarks and Shape Trademarks had become famous through the uses
ZippMark's

23

described above.

24

53.
53.

LITBs
use in
in commerce
commerce of the ZIPPO Trademarks and Shape Trademarks in
LITB's use

25

connection with lighters sold by LITB has caused dilution and continues to dilute and/or blur the

26

distinctive qualities of the famous ZIPPO Trademarks and Shape Trademarks.

27
28

54.
54.

LITBs
unlawful conduct
conduct has damaged ZippMark, which continues to suffer
LITB's unlawful

irreparable harm and monetary damage as a result


result of
of LITBs
LITB's actions.
- 12 -

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 13 of 14

1
2
3

PRAYER FOR RELIEF


WHEREFORE, ZMC and ZippMark respectfully request that the Court enter judgment in
their favor and against LITB as follows:

4
5

1.
1.

Finding that LITB has infringed and is infringing


infringing the
the 920
'920 patent;

2.
2.

Permanently enjoining LITB and its affiliates, employees, agents, officers,

directors, attorneys, successors, and assigns, and all those acting on behalf of or in active concert

or participation with any of them, from infringing


infringing the
the 920
'920 patent;

620 Hansen Way

3.
3.

Requiring that LITB render a full and complete accounting


accounting to
to ZMC
ZMC for
for LITBs
LITB's

10

profits, gains, advantages or the value of business opportunities received from its acts of

11

infringement;

12
Palo Alto, California 94304

SQUIRE PATTON BOGGS (US) LLP

For the First Claim for Relief

13
14
15
16
17

4.

by the court, to compensate ZMC


ZMC for
for LITBs
LITB's infringement of
of the
the 920
'920 patent;
5.
5.

Enhancing by three-fold the damages that LITB must pay ZMC pursuant to 35

U.S.C. 284;
6.
6.

Finding the case exceptional under 35 U.S.C. 285 and requiring that LITB pay to

ZMC all of its reasonable attorneys


attorneys' fees and costs and expenses in this action;

18
19

Requiring that LITB pay ZMCs


ZMC's damages, together with interest and costs as fixed

For the Second, Third and Fourth Claims for Relief


7.

That LITB be directed to account for and pay to ZippMark all damages that is

20

suffered as a result of LITBs


LITB's wrongful conduct described above, including its infringement and

21

dilution of the ZIPPO Trademarks and Shape Trademarks and unfair competition, as well as to

22

account for all gains, profits and advantages derived by such wrongful conduct;

23

8.
8.

That such damages caused by LITB be trebled in accordance with 15 U.S.C.

24

1117 because its unfair acts were done intentionally and therefore warrant enhanced damages

25

and/or punitive damages as the Court may find appropriate;

26

9.
9.

For a permanent injunction pursuant to 15 U.S.C. 1116 and 1125(c) restraining

27

LITB, its affiliates, franchises, and subsidiaries, and those in active concert with them from doing,

28

abiding, causing, aiding or abetting any of the following:


- 13 -

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT

Case 5:16-cv-07131 Document 1 Filed 12/14/16 Page 14 of 14

1
2

b.

Trademarks; and

c.

Otherwise competing unfairly with Zippo in any manner;

That ZippMark be awarded its attorneys


attorneys' fees and costs under the provisions of 15

U.S.C. 1117;
11.
11.

That ZippMark be awarded prejudgment interest on any judgment amount;

12.
12.

That ZippMark be awarded post-judgment


post judgment interest on the foregoing sums at the

11
12
620 Hansen Way

10.
10.

Making any other infringing use of the ZIPPO Trademarks and/or Shape

10

Palo Alto, California 94304

Using the ZIPPO Trademarks and/or Shape Trademarks, or any colorable

imitation or confusingly similar variation of the Shape Trademarks;

SQUIRE PATTON BOGGS (US) LLP

a.

maximum rate permitted by law from the date judgment is entered until paid; and
13.
13.

That ZippMark be awarded such other and further relief as the court deems

equitable, just and appropriate.

13
14
15

JURY TRIAL DEMANDED

Plaintiffs respectfully demand a jury trial on all issues so triable.


Dated: December
December 14,
14, 2016
2016
Dated:

SQUIRE
(US)LLP
LLP
S
QUIRE PPATTON
ATTON BBOGGS
OGGS (US)
By: /s/ David S. Elkins
David. S. Elkins
Joseph P. Grasser

16
17

Attorneys for Plaintiffs


ZIPPO M
ANUFACTURING CCO.
O. and
ZIPPO
MANUFACTURING
and
ZIPPMARK, INC.
INC.
ZIPPMARK,

18
19
20

014-3437-5231/2/EUROPE
014-3437-5231/2/EUROPE

21
22
23
24
25
26
27
28
- 14 -

COMPLAINT FOR PATENT INFRINGEMENT


AND TRADEMARK INFRINGEMENT