Oakley v. Zapals - Complaint

Case: 1:18-cv-07530 Document #: 1 Filed: 11/14/18 Page 1 of 39 PageID #:1
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
OAKLEY, INC.,
Case No. 18-cv-07530
Plaintiff,
JURY TRIAL DEMANDED
v.
ZAPALS CORP. LTD.,

Defendant.
COMPLAINT
Plaintiff Oakley, Inc. (“Oakley” or “Plaintiff”) hereby brings the present action against
Defendant Zapals Corp. Ltd. (“Zapals” or “Defendant”) and alleges as follows:
I. INTRODUCTION
1. This action has been filed by Plaintiff to address Defendant’s selling and offering
for sale of sunglasses featuring Plaintiff’s patented designs, and infringements and counterfeits of
Plaintiff’s Oakley trademarks (the “Infringing Products”) through Defendant’s websites at
Zapals.com and Zapalstyle.com. Plaintiff seeks to address Defendant’s counterfeiting and
infringing of its registered trademarks, and its patented designs, as well as to protect unknowing
consumers from purchasing low-quality Infringing Products over the Internet from China. Plaintiff
has been and continues to be irreparably damaged through consumer confusion, dilution, and
tarnishment of its valuable trademarks and infringement of its patented designs as a result of
Defendant’s actions and seeks injunctive and monetary relief.
II. JURISDICTION AND VENUE
2. This Court has original subject matter jurisdiction over the claims in this action
pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051, et seq., the Patent Act, 35 U.S.C.
§ 1, et seq., 28 U.S.C. § 1338(a) and (b), and 28 U.S.C. § 1331. This Court has jurisdiction over
the claims in this action that arise under the laws of the State of Illinois pursuant to 28 U.S.C. §
1367(a), because the state law claims are so related to the federal claims that they form part of the
same case or controversy and derive from a common nucleus of operative facts.
3. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may
properly exercise personal jurisdiction since Defendant directly targets business activities toward
consumers in the United States, including Illinois, through at least its websites Zapals.com and
Zapalstyle.com. Specifically, Defendant is reaching out to do business with and targeting Illinois
residents by operating multiple websites through which Illinois residents can purchase products
using counterfeit versions of Plaintiff’s trademarks and infringements of Plaintiff’s patented
designs. Defendant’s websites offer global shipping, including to the United States and Illinois,
and, on information and belief, have sold products using counterfeit versions of Plaintiff’s
trademarks and infringements of Plaintiff’s patented designs to the United States. Defendant is
committing tortious acts in Illinois, is engaging in interstate commerce, and has wrongfully caused
Plaintiff substantial injury in the United States and the State of Illinois.
III. THE PARTIES
Plaintiff Oakley
4. Oakley is a corporation organized and existing under the laws of the State of
Washington, having its principal place of business at One Icon, Foothill Ranch, California 92610.
5. Oakley is an internationally recognized manufacturer, distributor and retailer of
eyewear, apparel, footwear, outerwear, jackets, accessories and other merchandise, all of which
prominently display its famous, internationally-recognized and federally-registered trademarks,
including OAKLEY and various Icon logos (collectively, the “Oakley Products”). Oakley
2
Products have become enormously popular and even iconic, driven by Oakley’s arduous quality
standards and innovative design. Among the purchasing public, genuine Oakley Products are
instantly recognizable as such. In the United States and around the world, the Oakley brand has
come to symbolize high quality, and Oakley Products are among the most recognizable eyewear,
headwear, footwear, outerwear, jackets and apparel in the world.
6. Oakley Products are distributed and sold to consumers through retailers throughout
the United States, including through authorized retailers in Illinois, the official Oakley.com
website which was launched in 1995, and Oakley O Stores, including one located at 835 N.
Michigan Avenue in Chicago, Illinois.
7. Oakley incorporates a variety of distinctive marks in the design of its various
Oakley Products. As a result of its long-standing use, Oakley owns common law trademark rights
in its trademarks. Oakley has also registered its trademarks with the United States Patent and
Trademark Office. Oakley Products typically include at least one of Oakley’s registered
trademarks. Oakley uses its trademarks in connection with the marketing of its Oakley Products,
including, but not limited to, the following marks which are collectively referred to as the “Oakley
Trademarks.”
Registration Trademark Good and Services

Number
1,521,599 OAKLEY For: Sunglasses and accessories for
sunglasses, namely, replacement lenses,
ear stems and nose pieces, in class 9.
1,541,380 PLUTONITE For: Lenses for sunglasses, in class 9.

1,980,039 For: Protective and/or anti-glare eyewear,
namely sunglasses, goggles, spectacles
and parts and accessories, namely
replacement lenses, earstems, frames,
nose pieces and foam strips; cases
specially adapted for protective and/or
3
anti-glare eyewear and their parts and

accessories, in class 9.
1,984,501 For: Protective and/or anti-glare eyewear,

namely sunglasses, goggles, spectacles
and their parts and accessories, namely
replacement lenses, earstems, frames,
nose pieces and foam strips; cases
specially adapted for protective and/or
anti-glare eyewear and their parts and
accessories, in class 9.
3,379,110 RADAR For: Protective eyewear, namely,

spectacles, prescription eyewear, anti-
glare glasses and sunglasses and their
parts and accessories, namely,
replacement lenses, frames, earstems,
and nose pieces; cases specially adapted
for spectacles and sunglasses and their
parts and accessories, in class 9.
4,827,569 JAWBREAKER For: Eyewear, namely, sunglasses,
goggles, spectacles and their parts and
accessories, namely, replacement lenses,
ear stems, frames, nose pieces and foam
strips; cases specifically adapted for
eyewear and their parts and accessories,
in class 9.
8. The above registrations for the Oakley Trademarks are valid, subsisting, in full
force and effect, and most are incontestable pursuant to 15 U.S.C. § 1065.1 The Oakley
Trademarks have been used exclusively and continuously by Oakley for many years, and have
never been abandoned. Attached hereto as Exhibit 1 are true and correct copies of the United
States Registration Certificates for the Oakley Trademarks included in the above table.
Incontestable status under 15 U.S.C. § 1065 provides that the registrations for the Oakley
Trademarks are conclusive evidence of the validity of the Oakley Trademarks and of the
1
Only Reg. No. 4,827,569 for “JAWBREAKER” is not incontestable under 15 U.S.C. § 1065.
4
registration of the Oakley Trademarks, of Oakley’s ownership of the Oakley Trademarks, and of
Oakley’s exclusive right to use the Oakley Trademarks in commerce. 15 U.S.C. §§ 1115(b), 1065.
9. The Oakley Trademarks are exclusive to Oakley, and are displayed extensively on
Oakley Products and in Oakley’s marketing and promotional materials. Oakley Products have
long been among the most popular eyewear in the world and have been extensively promoted and
advertised at great expense. In fact, Oakley has expended millions of dollars annually in
advertising, promoting and marketing featuring its trademarks, including the Oakley Trademarks.
Oakley Products have also been the subject of extensive unsolicited publicity resulting from their
high-quality, innovative designs and are renowned as desired luxury items. Because of these and
other factors, the Oakley name and the Oakley Trademarks have become famous throughout the
United States.
10. The Oakley Trademarks are distinctive when applied to the Oakley Products,
signifying to the purchaser that the products come from Oakley and are manufactured to Oakley’s
quality standards. Whether Oakley manufactures the products itself or licenses others to do so,
Oakley has ensured that products bearing its trademarks are manufactured to the highest quality
standards. The Oakley Trademarks have achieved tremendous fame and recognition, which has
only added to the inherent distinctiveness of the marks. As such, the goodwill associated with the
Oakley Trademarks is of incalculable and inestimable value to Oakley.
11. Since at least as early as 1995, Oakley has operated a website where it promotes
and sells genuine Oakley Products at Oakley.com. Sales of Oakley Products via the Oakley.com
website represent a significant portion of Oakley’s business. The Oakley.com website features
proprietary content, images and designs exclusive to Oakley.
5
12. Oakley’s innovative marketing and product designs have enabled Oakley to achieve
widespread recognition and fame and have made the Oakley Trademarks some of the most well-
known marks in the eyewear and apparel industry. The widespread fame, outstanding reputation,
and significant goodwill associated with the Oakley brand have made the Oakley Trademarks
valuable assets of Oakley.
13. Oakley has expended substantial time, money, and other resources in developing,
advertising and otherwise promoting the Oakley Trademarks. As a result, products bearing the
Oakley Trademarks are widely recognized and exclusively associated by consumers, the public,
and the trade as being high-quality products sourced from Oakley. Oakley is a multi-million dollar
operation, and Oakley Products have become among the most popular of their kind in the world.
14. In addition to Oakley’s valuable trademarks, Oakley Products are further known
for their distinctive patented designs. Like the Oakley Trademarks, these designs are broadly
recognized by consumers. Sunglasses fashioned after these designs are associated with the quality
and innovation that the public has come to expect from Oakley Products. Oakley uses these
designs in connection with the marketing of its Oakley Products, including, but not limited to, the
following patented designs, herein referred to as the “Oakley Designs.”
Patent Number Claim Issue Date

D568,918 May 13, 2008
D581,443 November 25,

2008
6
D581,444 November 25,

2008
D640,727 June 28, 2011
D646,708 October 11, 2011
D719,209 December 9, 2014
D725,695 March 31, 2015
D725,696 March 31, 2015
D728,002 April 28, 2015
D746,355 December 29,

2015
7
D746,368 December 29,

2015
15. Oakley is the lawful assignee of all right, title and interest in and to the United
States Design Patent No. D568,918 (“the ‘918 Patent”). The ‘918 Patent was lawfully issued on
May 13, 2008 with named inventor Peter Yee.
November 25, 2008 with named inventors James H. Jannard, Lek Thixton, Colin Baden, and Peter
Yee.
November 25, 2008 with named inventors James H. Jannard, Lek Thixton, Colin Baden, and Peter
Yee.
June 28, 2011 with named inventors of Hans Karsten Moritz and Colin Baden.
October 11, 2011 with named inventors of Hans Karsten Moritz and Colin Baden.
December 9, 2014 with a named inventor of Nicolas Adolfo Garfias.
8
March 31, 2015 with a named inventor of Nicolas Adolfo Garfias.
March 31, 2015 with a named inventor of Nicholas Adolfo Garfias.
April 28, 2015 with a named inventor of Kyusik Uhm.
December 29, 2015 with a named inventor of Kyusik Uhm.
December 29, 2015 with a named inventor of Kyusik Uhm.
26. Attached hereto as Exhibit 2 are true and correct copies of the ‘918 Patent, the ‘443
Patent, the ‘444 Patent, the ‘727 Patent, the ‘708 Patent, the ‘209 Patent, the ‘695 Patent, the ‘696
Patent, the ‘002 Patent, the ‘355 Patent, and the ‘368 Patent.
27. Plaintiff has not granted a license or any other form of permission to Defendant
with respect to: the Oakley Trademarks, the design protected by the ‘918 Patent, the design
protected by the ‘443 Patent, the design protected by the ‘444 Patent, the design protected by the
‘727 Patent, the design protected by the ‘708 Patent, the design protected by the ‘209 Patent, the
design protected by the ‘695 Patent, the design protected by the ‘696 Patent, the design protected
9
by the ‘002 Patent, the design protected by the ‘355 Patent, or the design protected by the ‘368
Patent.
Defendant Zapals
28. Upon information and belief, Defendant Zapals Corp. Ltd. is a corporation
organized and existing under the laws of Hong Kong, and headquartered at Suites 1501 03 15F,
Far East Consortium Building, 121 Des Voeux Road, Central Hong Kong.
29. Defendant conducts business throughout the United States, including within the
State of Illinois and this Judicial District, through at least the operation of the fully interactive,
commercial websites at Zapals.com and Zapalstyle.com. Defendant targets the United States,
including Illinois residents, and has offered to sell, and has sold, Infringing Products to consumers
within the State of Illinois through the Zapals.com and Zapalstyle.com websites.
IV. DEFENDANT’S UNLAWFUL CONDUCT
30. Defendant is engaged in designing, manufacturing, advertising, promoting,
distributing, selling, and/or offering for sale products on its websites at Zapals.com and
Zapalstyle.com bearing at least one logo, source-identifying indicia and design elements, that are
studied imitations, infringements, and/or counterfeits of the Oakley Trademarks (previously
defined as the “Infringing Products”).
31. Defendant is involved in the importation, offering for sale, and/or sale of sunglasses
that infringe the Oakley Designs (previously defined as the “Infringing Products”).
32. Plaintiff’s investigator visited Defendant’s websites at Zapals.com and
Zapalstyle.com and purchased Infringing Products.
33. The purchased Infringing Products were shipped to the State of Illinois.
10
34. The purchased Infringing Products were inspected and it was determined that the
purchased Infringing Products infringed the Oakley Trademarks and/or the Oakley Designs.
35. A comparison of the Oakley Trademarks to Defendant’s Infringing Products
exemplifies Defendant’s infringement of U.S. Trademark Registration No. 1,521,599 for an
“OAKLEY” word mark owned by Oakley, U.S. Trademark Registration No. 1,541,380 for a
“PLUTONITE” word mark owned by Oakley, U.S. Trademark Registration No. 1,980,039 for a
stylized “OAKLEY” design mark owned by Oakley, U.S. Trademark Registration No. 1,984,501
for a stylized “O” design mark owned by Oakley, U.S. Trademark Registration No. 3,379,110 for
a “RADAR” word mark owned by Oakley, and U.S. Trademark Registration No. 4,827,569 for a
“JAWBREAKER” word mark owned by Oakley.
11
Oakley Trademarks Defendant’s Infringing Products
OAKLEY
(Reg. No. 1,521,599)
(Reg. No. 1,984,501)
PLUTONITE
(Reg. No. 1,541,380)
OAKLEY
(Reg. No. 1,521,599)
(Reg. No. 1,980,039)
12
(Reg. No. 1,984,501)
OAKLEY
(Reg. No. 1,521,599)
(Reg. No. 1,980,039)
(Reg. No. 1,984,501)
13
RADAR
(Reg. No. 3,379,110)
JAWBREAKER
(Reg. No. 4,827,569)
(Reg. No. 1,984,501)
JAWBREAKER
(Reg. No. 4,827,569)
14
36. Upon information and belief, Defendant is well aware of the extraordinary fame
and strength of the Oakley Trademarks and the goodwill associated therewith.
37. Defendant, without any authorization, license, or other permission from Plaintiff,
has used the Oakley Trademarks in connection with the advertisement, distribution, offering for
sale, and sale of the Infringing Products into the United States and Illinois over the Internet.
38. Defendant’s use of infringements and/or counterfeits of the Oakley Trademarks in
the advertisement, distribution, offering for sale, and sale of the Infringing Products was willful.
39. Defendant’s willful use of infringements and/or counterfeits of the Oakley
Trademarks in connection with the advertisement, distribution, offering for sale, and sale of the
Infringing Products, including the sale of Infringing Products into Illinois, is likely to cause and
has caused confusion, mistake, and deception by and among consumers and is irreparably harming
Oakley.
40. A comparison of Oakley’s claim in the ‘918 Patent with an Infringing Product
offered for sale and sold on Zapalstyle.com exemplifies Defendant’s infringement of United States
Design Patent No. D568,918 owned by Oakley.
As shown offered for sale on Zapalstyle.com
15
Received product purchased from

Zapalstyle.com
Oakley’s ‘918 Design Claim Defendant’s Infringing Product
offered for sale and sold on Zapals.com exemplifies Defendant’s infringement of United States
As shown offered for sale on Zapals.com
16

Zapals.com

Zapals.com
17

Zapals.com
18

Zapals.com
19

Zapals.com
20

Zapalstyle.com
21

Zapals.com
22

Zapalstyle.com
23

Zapalstyle.com
24

Zapals.com
25
51. Upon information and belief, Defendant is well aware of the extraordinary fame of
the Oakley Designs and the high-quality products associated therewith.
52. Defendant, without any authorization, license, or other permission from Oakley,
has used the Oakley Designs in connection with the making, using, offering to sell, selling, or
importing of Infringing Products into the United States and Illinois.
53. Defendant’s use of infringements of the Oakley Designs in the making, using,
offering to sell, selling, or importing of the Infringing Products was willful.
54. Defendant’s willful use of infringements of the Oakley Designs in connection with
the making, using, offering to sell, selling, or importing of Infringing Products, including the sale
of Infringing Products into Illinois, is irreparably harming Oakley.
COUNT I
TRADEMARK INFRINGEMENT AND COUNTERFEITING (15 U.S.C. § 1114)
55. Plaintiff hereby re-alleges and incorporates by reference the allegations set forth in
the preceding paragraphs.
56. This is a trademark infringement action against Defendant based on its
unauthorized use in commerce of counterfeit imitations of the federally registered Oakley
Trademarks in connection with the sale, offering for sale, distribution, and/or advertising of
infringing goods. Plaintiff’s Oakley Trademarks are highly distinctive marks. Consumers have
come to expect the highest quality from Plaintiff’s Oakley Products sold or marketed under the
Oakley Trademarks.
57. Defendant has sold, offered to sell, marketed, distributed and advertised, and is still
selling, offering to sell, marketing, distributing, and advertising products bearing counterfeits of
Plaintiff’s Oakley Trademarks without Plaintiff’s permission.
26
58. Plaintiff is the exclusive owner of the Oakley Trademarks. Plaintiff’s United States
Registrations for the Oakley Trademarks (Exhibit 1) are in full force and effect. Upon information
and belief, Defendant has knowledge of Plaintiff’s rights in the Oakley Trademarks and is willfully
infringing and intentionally using counterfeits of Plaintiff’s Oakley Trademarks. Defendant’s
willful, intentional and unauthorized use of Plaintiff’s Oakley Trademarks is likely to cause and is
causing confusion, mistake, and deception as to the origin and quality of the Infringing Products
among the general public.
59. Defendant’s activities constitute willful trademark infringement and counterfeiting
under Section 32 of the Lanham Act, 15 U.S.C. § 1114.
60. Plaintiff has no adequate remedy at law, and if Defendant’s actions are not enjoined,
Plaintiff will continue to suffer irreparable harm to its reputation and the goodwill of the
OAKLEY® brand.
61. The injuries and damages sustained by Plaintiff have been directly and proximately
caused by Defendant’s wrongful reproduction, use, advertisement, promotion, offering to sell, and
sale of Infringing Products.
COUNT II
FALSE DESIGNATION OF ORIGIN (15 U.S.C. § 1125(a))
63. Defendant’s promotion, marketing, offering for sale, and sale of Infringing
Products has created and is creating a likelihood of confusion, mistake, and deception among the
general public as to the affiliation, connection, or association with Plaintiff or the origin,
sponsorship, or approval of Defendant’s Infringing Products by Plaintiff.
27
64. By using Plaintiff’s Oakley Trademarks on the Infringing Products, Defendant
created a false designation of origin and a misleading representation of fact as to the origin and
sponsorship of the Infringing Products.
65. Defendant’s false designation of origin and misrepresentation of fact as to the origin
and/or sponsorship of the Infringing Products to the general public involves the use of counterfeit
marks and is a willful violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125.
66. Plaintiff has no adequate remedy at law and, if Defendant’s actions are not enjoined,
Plaintiff will continue to suffer irreparable harm to its reputation and the goodwill of the
OAKLEY® brand.
COUNT III
VIOLATION OF ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT
(815 ILCS § 510, et seq.)
68. Defendant has engaged in acts violating Illinois law including, but not limited to,
passing off its Infringing Products as those of Plaintiff, causing a likelihood of confusion and/or
misunderstanding as to the source of its goods, causing a likelihood of confusion and/or
misunderstanding as to an affiliation, connection, or association with genuine Oakley Products,
representing that its Infringing Products have Plaintiff’s approval when they do not, and engaging
in other conduct which creates a likelihood of confusion or misunderstanding among the public.
69. The foregoing Defendant’s acts constitute a willful violation of the Illinois Uniform
Deceptive Trade Practices Act, 815 ILCS § 510, et seq.
70. Plaintiff has no adequate remedy at law, and Defendant’s conduct has caused
Plaintiff to suffer damage to its reputation and goodwill associated therewith. Unless enjoined by
28
the Court, Plaintiff will suffer future irreparable harm as a direct result of Defendant’s unlawful
activities.
COUNT IV
INFRINGEMENT OF UNITED STATES DESIGN PATENT NO. D568,918
(35 U.S.C. § 271)
72. Defendant makes, uses, offers for sale, sells, and/or imports into the United States
for subsequent sale or use products that infringe directly and/or indirectly the ornamental design
claimed in the ‘918 Patent.
73. Defendant has infringed the ‘918 Patent through the aforesaid acts, and will
continue to do so unless enjoined by this Court. Defendant’s wrongful conduct has caused Oakley
to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others from
making, using, selling, offering for sale and importing the patented inventions. Oakley is entitled
to injunctive relief pursuant to 35 U.S.C. § 283.
74. Oakley is entitled to recover damages adequate to compensate for the infringement,
including Defendant’s profits pursuant to 35 U.S.C. § 289. Oakley is entitled to recover any other
damages as appropriate pursuant to 35 U.S.C. § 284.
COUNT V
(35 U.S.C. § 271)
29
COUNT VI
(35 U.S.C. § 271)
30
COUNT VII
(35 U.S.C. § 271)
COUNT VIII
(35 U.S.C. § 271)
31
COUNT IX
(35 U.S.C. § 271)
32
COUNT X
(35 U.S.C. § 271)
COUNT XI
(35 U.S.C. § 271)
33
COUNT XII
(35 U.S.C. § 271)
34
COUNT XIII
(35 U.S.C. § 271)
COUNT XIV
(35 U.S.C. § 271)
35
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
1) That Defendant, its officers, agents, servants, employees, attorneys, confederates, and all
persons acting for, with, by, through, under or in active concert with it be temporarily,
preliminarily and permanently enjoined and restrained from:
a. using Plaintiff’s Oakley Trademarks or any reproductions, counterfeit copies or
colorable imitations thereof in any manner in connection with the distribution,
marketing, advertising, offering for sale, or sale of any product that is not a genuine
Oakley Product or is not authorized by Plaintiff to be sold in connection with Plaintiff’s
Oakley Trademarks;
b. passing off, inducing, or enabling others to sell or pass off any product as a genuine
Oakley Product or any other product produced by Plaintiff, that is not Plaintiff’s or not
36
produced under the authorization, control or supervision of Plaintiff and approved by
Plaintiff for sale under Plaintiff’s Oakley Trademarks;
c. committing any acts calculated to cause consumers to believe that Defendant’s products
are those sold under the authorization, control or supervision of Plaintiff, or are
sponsored by, approved by, or otherwise connected with Plaintiff;
d. further infringing Plaintiff’s Oakley Trademarks and damaging Plaintiff’s goodwill;
e. making, using, offering to sell, selling, or importing any products not authorized by
Oakley and that include any reproduction, copy or colorable imitation of the designs
claimed in any of Oakley’s ‘918, ‘443, ‘444, ‘727, ‘708, ‘209, ‘695, ‘696, ‘002, ‘355
and ‘368 Patents;
f. manufacturing, shipping, delivering, holding for sale, transferring or otherwise moving,
storing, distributing, returning, or otherwise disposing of, in any manner, products or
inventory not manufactured by or for Plaintiff, nor authorized by Plaintiff to be sold or
offered for sale, and which bear any of Plaintiff’s trademarks, including the Oakley
Trademarks, or any reproductions, counterfeit copies or colorable imitations thereof;
g. aiding, abetting, contributing to or otherwise assisting anyone in infringing upon
Plaintiff’s Trademarks, or any of Oakley’s ‘918, ‘443, ‘444, ‘727, ‘708, ‘209, ‘695,
‘696, ‘002, ‘355 and ‘368 Patents; and
h. effecting assignments or transfers, forming new entities or associations or utilizing any
other device for the purpose of circumventing or otherwise avoiding the prohibitions
set forth in Subparagraphs (a) through (g).
2) That Defendant, within fourteen (14) days after service of judgment with notice of entry thereof
upon it, be required to file with the Court and serve upon Plaintiff a written report under oath
37
setting forth in detail the manner in which Defendant has complied with paragraph 1, a through
h, supra;
3) That Defendant account for and pay to Plaintiff all profits realized by Defendant by reason of
Defendant’s unlawful acts herein alleged, and that the amount of damages for infringement of
Plaintiff’s Oakley Trademarks be increased by a sum not exceeding three times the amount
thereof as provided by 15 U.S.C. § 1117;
4) That Plaintiff be awarded statutory damages for willful trademark counterfeiting pursuant to
15 U.S.C. § 1117(c) of $2,000,000 (two million dollars) for each and every use of Plaintiff’s
Oakley Trademarks;
5) Awarding Oakley such damages as it shall prove at trial against Defendant that are adequate
to compensate Oakley for infringement of Oakley’s ‘918, ‘443, ‘444, ‘727, ‘708, ‘209, ‘695,
‘696, ‘002, ‘355 and ‘368 Patents, and all of the profits realized by Defendant, or others acting
in concert or participation with Defendant, from Defendant’s unauthorized use and
infringement of Oakley’s ‘918, ‘443, ‘444, ‘727, ‘708, ‘209, ‘695, ‘696, ‘002, ‘355 and ‘368
Patents;
6) That Oakley be awarded from Defendant, as a result of Defendant’s use of the Oakley Designs,
three times Oakley’s damages therefrom and three times Defendant’s profits therefrom, after
an accounting, pursuant to 35 U.S.C. § 284;
7) That Plaintiff be awarded its reasonable attorneys’ fees and costs; and
8) Award any and all other relief that this Court deems just and proper.
JURY DEMAND
Pursuant to Fed. R. Civ. P. 38, Plaintiff hereby demands a trial by jury as to all issues so
triable.
38
Dated this 14th day of November 2018. Respectfully submitted,
/s/ Justin R. Gaudio

Amy C. Ziegler
Justin R. Gaudio
Allyson M. Martin
Greer, Burns & Crain, Ltd.
300 South Wacker Drive, Suite 2500
Chicago, Illinois 60606
312.360.0080
312.360.9315 (facsimile)
aziegler@gbc.law
jgaudio@gbc.law
amartin@gbc.law
Counsel for Plaintiff Oakley, Inc.
39
Case: 1:18-cv-07530 Document #: 1-1 Filed: 11/14/18 Page 1 of 7 PageID #:40
Exhibit 1
Exhibit 2
USOOD568918S
(12) United States Design Patent (10) Patent No.: US D568,918 S

Yee (45) Date of Patent: . May 13, 2008
(54) UNITARY EYEGLASS LENS D330,716 S 11/1992 Jannard
D330,903 S 11/1992 Jannard
(75) Inventor: Peter Yee, Irvine, CA (US) D331,763 S 12/1992 Jannard
D333,145 S 2f1993 Jannard
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D335,887 S 5/1993 Jannard
5,208.614 A 5/1993 Jannard
ck D336,908 S 6/1993 Jannard
(**) Term: 14 Years D344,742 S 3/1994 Jannard
D354,501 S 1/1995 Jannard
(21) Appl. No.: 29/288,605 D354,968 S 1/1995 Jannard
5,387,949 A 2f1995 Tackles
(22) Filed: Jun. 15, 2007 5,416,536 A * 5/1995 Tee, Jr. ........................ 351/50
D359,971 S 7/1995 Jannard
(51) LOC (8) Cl. ................................................. 16-06 5,760,868 A 6/1998 Jannard et al.
(52) U.S. Cl. ..................................................... D16/101 D399,519 S 10, 1998 Yee
(58) Field of Classification Search ............... D16/101, 5,841,505 A * 11/1998 Bolle' ........................ 351/44
D16/102, 103, 104, 105, 106, 107, 108, 109,
D16/110, 111, 112, 113, 114, 115, 116, 117, (Continued)
D16/123, 124, 125, 126, 127, 128, 314; 351/44,
351/45, 46,47, 50, 51, 52, 57,58, 65, 68, OTHER PUBLICATIONS
351/83, 85, 86, 87, 88,90, 102, 103, 106, U.S. Appl. No. 29/288,604, filed Jun. 15, 2007, Yee.
351/107, 108, 109, 121, 110, 111, 114, 119,
351/123, 124, 140, 41, 158, 153, 141, 142, (Continued)
351/149: D29/17; 2/9, 13, 15, 426,427, Primary Examiner T. Chase Nelson
2/431, 433, 435, 440, 448, 449, 450, 451 Assistant Examiner Barbara B Lohr
See application file for complete search history. (74) Attorney, Agent, or Firm—Gregory K. Nelson
(56) References Cited
(57) CLAM
U.S. PATENT DOCUMENTS
I claim the ornamental design for a unitary eyeglass lens, as
D232,983 S 10, 1974 Rabuse shown and described.
4,515,448 A 5, 1985 Tackles
D280,994 S 10, 1985 Abate
D289.301 S 4, 1987 Jannard DESCRIPTION
4,674,851 A 6, 1987 Jannard
D293450 S 12/1987 Jannard FIG. 1 is a front perspective view of the unitary eyeglass lens
4,730,915 A 3, 1988 Jannard of the present invention;
4,824,233 A 4, 1989 Jannard FIG. 2 is a rear elevational view thereof
4,859,048 A 8, 1989 Jannard
4,867,550 A 9, 1989 Jannard FIG. 3 is a top plan view thereof;
D323,333 S 1/1992 Jannard et al. FIG. 4 is a front elevational view thereof;
D324,528 S 3, 1992 Jannard FIG. 5 is a left-side elevational view thereof, the right-side
D325,040 S 3, 1992 Jannard elevational view being a mirror image thereof, and,
D328,468 S 8, 1992 Jannard
D329,442 S 9, 1992 Jannard FIG. 6 is a bottom plan view thereof.
D329,445 S 9, 1992 Jannard
D330,035 S 10, 1992 Jannard 1 Claim, 2 Drawing Sheets
USOOD581443S
(12) Jannard
Unitedet States Design Patent (10) Patent No.: US D581443 S
al. (45) Date of Patent: . Nov. 25, 2008
(54) EYEGLASSES COMPONENTS 5,610,668 A 3/1997 Mage
D384,364 S 9, 1997 Yee
(75) Inventors: James H. Jannard, Spieden Island, WA 5,760,868 A 6/1998 Jannard et al.
(US); Lek Thixton, Orcas, WA (US); D399,519 S 10, 1998 Yee
D399,866 S 10, 1998 Yee
Colin Baden, Irvine, CA (US); Peter D401,607 S 11/1998 Miniutti
Yee, Irvine, CA (US) D410,484 S 6/1999 Jannard et al.
6,233,342 B1 5, 2001 Fernandez
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D452,522 S 12/2001 Chiou ....................... D16,330
D458,624 S 6/2002 Soper
(**) Term: 14 Years D473,892 S 4/2003 Thixton et al.
D529,066 S * 9/2006 Matera ...................... D16/315
(21) Appl. No.: 29/301.902 OTHER PUBLICATIONS
(22) Filed: Mar. 21, 2008 U.S. Appl. No. 29/266,547, filed Sep. 22, 2006.
U.S. Appl. No. 29/288,604, filed Jun. 15, 2007.
Related U.S. Application Data U.S. Appl. No. 29/288,605, filed Jun. 15, 2007.
(62) Division of application No. 29/266,547, filed on Sep. U.S. Appl. No. 29/288,606, filed Jun. 15, 2007.
22, 2006, now Pat. No. Des. 569,412. * cited by examiner
(51) LOC (8) Cl. .................................................. 16-06 Primary Examiner Raphael Barkai
(52) U.S. Cl. ..................................................... D16/314 (74) Attorney, Agent, or Firm Gregory K. Nelson
(58) Field of Classification Search ................ D16/101, (57) CLAM
D16/300–342; D29/109-110; D24/110.2:
351/41, 44, 51-52, 62, 158, 92, 103-123, The ornamental design for eyeglass components, as shown
351/140, 153; 2/426-432,447. 449, 441, and described.
2/434 437
See application file for complete search history. DESCRIPTION
(56) References Cited FIG. 1 is a front perspective view of the eyeglass components
U.S. PATENT DOCUMENTS of the present invention;
FIG. 2 is a front elevational view thereof
D150,924 S 9/1948 Blight
D176,316 S 12/1955 Fleming FIG. 3 is a rear elevational view thereof;
D178,178 S 7/1956 Fleming FIG. 4 is a left-side elevational view thereof, the right-side
D293.450 S 12/1987 Jannard elevational view being a mirror image thereof;
D323,333 S 1/1992 Jannard et al.
D324,394 S 3, 1992 Jannard FIG. 5 is a top elevational view thereof; and,
D330,035 S 10, 1992 Jannard
D331,587 S 12, 1992 Jannard et al. Phantom lining, where utilized, is for illustrative purposes
5,249,001 A 9, 1993 Jannard only and is not intended to limit the claimed design to the
D344,742 S 3, 1994 Jannard features shown in phantom.
D346,814 S 5, 1994 Iida ........................... D16,314
D354,501 S 1/1995 Jannard 1 Claim, 3 Drawing Sheets
USOOD581444S
(12) Jannard
Unitedet States Design Patent (10) Patent No.: US D581444 S
al. (45) Date of Patent: . Nov. 25, 2008
(54) EYEGLASS COMPONENTS 5,760,868 A 6/1998 Jannard et al.
D399,519 S 10, 1998 Yee
(75) Inventors: James H. Jannard, Spieden Island, WA D399,866 S 10, 1998 Yee
(US); Lek Thixton, Orcas, WA (US); D401,607 S 11/1998 Miniutti
Colin Baden, Irvine, CA (US); Peter 6,233,342 B1 5, 2001 Fernandez
Yee, Irvine, CA (US) D458,624 S 6/2002 Soper
D473,892 S 4/2003 Thixton et al.
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D497,380 S * 10/2004 Thixton et al. ............. D16/326
D508,515 S * 8/2005 Yee et al. ................... D16/335
(**) Term: 14 Years D513,761 S * 1/2006 Yee et al. ................... D16/335
D529,066 S * 9/2006 Matera ...................... D16/315
(21) Appl. No.: 29/301.914
OTHER PUBLICATIONS
(22) Filed: Mar. 21, 2008
U.S. Appl. No. 29/266,547, filed Sep. 22, 2006.
Related U.S. Application Data U.S. Appl. No. 29/288,604, filed Jun. 15, 2007.
U.S. Appl. No. 29/288,605, filed Jun. 15, 2007.
(62) Division of application No. 29/266,547, filed on Sep. U.S. Appl. No. 29/288,606, filed Jun. 15, 2007.
22, 2006, now Pat. No. Des. 569,412. * cited by examiner
(51) LOC (8) Cl. .................................................. 16-06 Primary Examiner Raphael Barkai
(52) U.S. Cl. ..................... D16/314: D16/321: D16/335 (74) Attorney, Agent, or Firm Gregory K. Nelson
(58) Field of Classification Search ................ D16/101,
D16/300–342; D29/109-110; D24/110.2: (57) CLAM
351/41, 44, 51-52, 62, 158, 92, 103-123,
351/140, 153; 2/426-432,447. 449, 441, The ornamental design for eyeglass components, as shown
2/434 437 and described.
See application file for complete search history.
DESCRIPTION
FIG. 1 is a front perspective view of the eyeglass components
U.S. PATENT DOCUMENTS of the present invention;
D150,924 S 9/1948 Blight FIG. 2 is a front elevational view thereof
D176,316 S 12/1955 Fleming FIG.3 is a lateral left-side elevational view thereof, the lateral
D178,178 S 7/1956 Fleming right-side elevational view being a mirror image thereof;
D293.450 S 12/1987 Jannard
D323,333 S 1/1992 Jannard et al. FIG. 4 is a rear elevational view thereof;
D324,394 S 3, 1992 Jannard
D329,442 S 9, 1992 Jannard FIG. 5 is a top elevational view thereof; and,
D331,587 S 12, 1992 Jannard et al. Phantom lining, where utilized, is for illustrative purposes
5,249,001 A 9, 1993 Jannard
D344,742 S 3, 1994 Jannard only and is not intended to limit the claimed design to the
D354,501 S 1/1995 Jannard features shown in phantom.
5,610,668 A 3/1997 Mage
D384,364 S 9, 1997 Yee 1 Claim, 4 Drawing Sheets
USOOD64.0727S

Moritz et al. (45) Date of Patent: ... *Jun. 28, 2011
(54) EYEGLASS AND EYEGLASS COMPONENT D604,757 S * 1 1/2009 Yee .............................. D16/326
D615,580 S 5, 2010 Baden et al.
2010.0085533 A1 4/2010 Calilung et al.
(75) Inventors: Hans Karsten Moritz, Foothill Ranch,
CA (US); Colin Baden, Irvine, CA (US) OTHER PUBLICATIONS
U.S. Appl. No. 12/497,632, filed Jul. 3, 2009.
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) U.S. Appl. No. 29/316,570, filed Oct. 8, 2009.
* cited b
(*) Notice: This patent is subject to a terminal dis- c1ted by examiner
claimer. Primary Examiner — Raphael Barkai
(74) Attorney, Agent, or Firm — Knobbe Martens Olson &
(**) Term: 14 Years Bear LLP
(57) CLAM
(21) Appl. No. 29/312,560 The ornamental design for an eyeglass and eyeglass compo
(22) Filed
1C Oct.
c. 30,
5U, 2008 nent, as shown and described.
DESCRIPTION
(51) LOC (9) Cl. .................................................. 16-06
(52) U.S. Cl. ...................................... D16/326; D16/335 FIG.1 is a front perspective view of the eyeglass and the
(58) Field of Classification Search ................. D16/10, eyeglass
FIG. 2 is component of the present
a front elevational invention:
view thereof
D16/300–342; D29/109-110; D24/110.2: FIG. 3 is a rear elevational view thereof;
351/41, 44, 51-52, 62, 158, 92, 103-123, FIG. 4 is a left-side elevational view thereof, the right-side
351/140, 153, 45–46; 2/426-432, 447. 449, elevational view being a mirror image thereof;
2/441, 434–437, 13, 15; D21/483, 659-661 FIG. 5 is a top plan view thereof;
See application file for complete search history. FIG. 6 is a bottom plan view thereof;
FIG. 7 is a front perspective view of an alternative embodi
(56) References Cited ment of the eyeglass and eyeglass component of the present
invention;
U.S. PATENT DOCUMENTS FIG. 8 is a front elevational view of the eyeglass and eyeglass
D384,686 S 10, 1997 Jannard et al.
component of FIG. 7:
D456,441 S 4/2002 Jannard et al. FIG. 9 is assional view of the eyeglass and eyeglass
D464,669 S 10/2002 Thixton et al. component OFIU. 1:
D473,583 S 4/2003 Thixton et al. FIG. 10 is a left-side elevational view of the eyeglass and
D477,623 S 7/2003 Thixton et al. eyeglass component of FIG.7, the right-side elevational view
D478,929 S 8, 2003 Baden et al. being a mirror image thereof;
D496,680 S 9, 2004 Yee FIG. 11 is a top plan view of the eyeglass and eyeglass
D513,275 S 12/2005 Yee component of FIG. 7; and
D539,833
D564,572 SS 4/2007 Chuang
3/2008 Yee et al. FIG 12 is a bottom plan
plan V1eW
view of the eveglass
OI line and eyeglass
eyeglass and eveal
D565,089 S * 3/2008 Moritz ......................... D16/326 component of FIG. 7.
D575,324 S * 8/2008 Moritz ......................... D16/326
D584,335 S 1/2009 Baden et al. 1 Claim, 8 Drawing Sheets
USOOD646708S
(12) Moritz
United States Design Patent (10) Patent No.:
et al.
US D646,708 S
(45) Date of Patent: ... *Oct. 11, 2011
(54) EYEGLASS AND EYEGLASS COMPONENT D604,757 S 11/2009 Yee
D615,580 S * 5/2010 Baden et al. ................. D16/326
(75) Inventors: Hans Karsten Moritz, Foothill Ranch, 2010/0085533 A1* 4/2010 Calilung et al. ................ 351.90
CA (US); Colin Baden, Irvine, CA (US) * cited by examiner
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) Primary Examiner — Raphael Barkai
(*) Notice: This patent is subject to a terminal dis Bear, LLP
claimer.
(57) CLAM
(**) Term: 14 Years The ornamental design for an eyeglass and eyeglass compo
nent, as shown and described.
(21) Appl. No. 29/378,709
DESCRIPTION
(22) Filed: Nov. 8, 2010
FIG. 1 is a front perspective view of an embodiment of the
Related U.S. Application Data eyeglass and eyeglass component of the present invention;
(62) Division of application No. 29/312,560, filed on Oct. FIG. 2 is a front elevational view of the eyeglass and eyeglass
30, 2008, now Pat. No. Des. 640,727. component of FIG. 1;
FIG. 3 is a rear elevational view of the eyeglass and eyeglass
(51) LOC (9) Cl. .................................................. 16-06 component of FIG. 1;
(52) U.S. Cl. ...................................................... D16/326 FIG. 4 is a left-side elevational view of the eyeglass and
(58) Field of Classification Search ................. D16/101, eyeglass component of FIG. 13, the right-side elevational
D16/300–342; D29/109-110; D24/110.2: view being a mirror image thereof;
351/41, 44, 51-52, 62, 158, 92, 103-123, FIG. 5 is a top plan view of the eyeglass and eyeglass com
351/140, 153, 45–46; 2/426-432, 447. 449, ponent of FIG. 1;
2/441, 434–437, 13, 15; D21/483, 659-661, FIG. 6 is a bottom plan view of the eyeglass and eyeglass
D21/598 component of FIG. 1;
See application file for complete search history. FIG. 7 is a front perspective view of an alternative embodi
ment of the eyeglass and eyeglass component of the present
(56) References Cited invention;
FIG. 8 is a front elevational view of the eyeglass and eyeglass
component of FIG. 7:
D384,686 S 10, 1997 Jannard et al. FIG. 9 is a rear elevational view of the eyeglass and eyeglass
D456,441 S 4/2002 Jannard et al. component of FIG. 7:
D464,669 S 10, 2002 Thixton et al.
D473,583 S 4/2003 Thixton et al. FIG. 10 is a left-side elevational view of the eyeglass and
D477,623 S 7/2003 Thixton et al. eyeglass component of FIG.7, the right-side elevational view
D478,929 S 8, 2003 Baden et al. being a mirror image thereof;
D496,680 S 9, 2004 Yee FIG. 11 is a top plan view of the eyeglass and eyeglass
D513,275 S 12, 2005 Yee component of FIG. 7; and,
D539,833 S 4/2007 Chuang FIG. 12 is a bottom plan view of the eyeglass and eyeglass
D564,572 S 3/2008 Yee et al.
D565,089 S 3, 2008 Moritz component of FIG. 7.
D575,324 S 8, 2008 Moritz
D584,335 S 1/2009 Baden et al. 1 Claim, 6 Drawing Sheets
USOOD719209S

Garfias (45) Date of Patent: . Dec. 9, 2014
(54) EYEGLASS D398,326 S 9, 1998 Jannard et al.
5,867,841 A 2/1999 Chiang
D407,428 S 3, 1999 Jannard et al.
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D408,049 S 4/1999 Jannard et al.
D415, 188 S 10, 1999 Thixton et al.
(72) Inventor: Nicolas Adolfo Garfias, Long Beach, D418,153 S 12/1999 Haney
CA (US) D420,035 S 2/2000 Hartman
D435,857 S 1/2001 Yang
6,233,342 B1 5, 2001 Fernandez
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D457,550 S ck 5/2002 Wilson ........................ D16/312
D478,927 S 8/2003 Teng

(**) Term: 14 Years D484, 173 S 12/2003 Jannard et al.
D485,569 S 1/2004 Hsu
(21) Appl. No. 29/494.756 D489,394 S 5/2004 Teng
D519,148 S 4, 2006 Wu
(22) Filed: Jun. 24, 2014 D523,461 S 6/2006 Jannard et al.
(51) LOC (10) Cl. ................................................ 14-03 D524,354 S 7/2006 Yang
(52) U.S.
AV e. Cl
we 7,147,324 B2
7,150,526 B2 3.39. As et al
12/2006 J
USPC ......................................... D16/313; D16/321 Sy: "g tradetal.
a
(58) Field of Classification Search Continued
CPC .............................. G02C 2200/08; G02C 1/06 (Continued)
USPC ........ D14/125-134, 239,371, 136,374 377, Primary Examiner — Raphael Barkai
D14/440, 450, 448,336, 342, 159, 372; (74) Attorney, Agent, or Firm — Knobbe Martens Olson &
312/7.2: D16/101,300 342: 351/41, Bear, LLP
351/44, 158: D10/15, 26; 446/484, 175,
446/356; D6/477,479, 300 (57) CLAIM
See application file for complete search history. The ornamental design for an eyeglass, as shown and
described.
(56) References Cited DESCRIPTION
FIG. 1 is a front perspective view of an eyeglass showing an
D184,274 S 1, 1959 Darr embodiment of the new design;
D190,884 S 7, 1961 Rose FIG. 2 is a front elevational view thereof
3,665,122 A 5, 1972 Weiss
D285,020 S * 8, 1986 Schmidthaler ............... D16/313 FIG. 3 is a rear elevational view thereof;
4,856,086 A 8/1989 McCullough FIG. 4 is a left side elevational view thereof, the right side
4,882,769 A 11, 1989 Gallimore elevational view being a mirror image thereof;
D323,515 S * 1/1992 Arbez .......................... D16/313 FIG. 5 is a top plan view thereof; and,
5,159,639 A 10, 1992 Shannon et al. FIG. 6 is a bottom plan view thereof.
D374,883 S * 10/1996 Luzlbauer .................... D16,321 The broken lines in the Figures show portions of the eyeglass
D380,766 S 7, 1997 Simioni
D387,084 S 12, 1997 Bole which form no part of the claimed design.
D390,863 S 2f1998 Bennell
D398,021 S 9, 1998 Bole 1 Claim, 5 Drawing Sheets
USOOD725695S
(12) Garfias
United States Design Patent (10) Patent No.:
45) Date of Patent:
USD725,695S
. Mar. 31,9 2015
(54) EYEGLASS COMPONENT 5,867,841 A 2/1999 Chiang

D407,428 S 3, 1999 Jannard et al.
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D415, 188 S 10, 1999 Thixton et al.
(72) Inventor: Nicolas Adolfo Garfias, Long Beach, ESS s 13.3% Ran
CA (US) D435,857 S 1/2001 Yang
6,233,342 B1 5, 2001 Fernandez
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D457.550 S * 5/2002 Wilson ......................... D16/312
D478,927 S 8/2003 Teng
D484, 173 S 12/2003 Jannard et al.
(**) Term: 14 Years D485,569 S 1/2004 Hsu
D489,394 S 5/2004 Teng
(21) Appl. No. 29/494.754 D514,613 S 2/2006 Jannard et al.
D519,148 S 4, 2006 Wu
(22) Filed: Jun. 24, 2014 D523,461 S 6/2006 Jannard et al.
D524,354 S 7/2006 Yang
(51) LOC (10) C. -- - -- -- - - -- - - - -- -- - -- - - -- -- - -- -- - - -- - -- -- - - -- - - - 14-03 7,147,324 B2 12, 2006 Jannard et al.
(52) U.S. Cl. 7,150,526 B2 12/2006 Jannard et al.

USPC ......................................... D16/313; D16/321 D534,573 S 398, E.
(58) Field of Classification Search D536,026 s 1207 Bruc
USPC ........ D14/440,
P23, 2,371. 36.37 377.
450, 448,336,342. 159, 372:
Primary Examiner Raphael Barkai
s s s s s s s 74). Att
312/7.2: D16/101,300 342: 351/41, E. tige Agent, or Firm — Knobbe Martens Ol
agen, or firm O) VaS ISO &
351/44, 158: D10/15, 26; 446/484, 175, s

446/356, D6477,479, 300 (57) CLAM
See application file for complete search history. The ornamental design for an eyeglass component, as shown
(56) References Cited and described.
U.S. PATENT DOCUMENTS DESCRIPTION
D184,274 S 1, 1959 Darr FIG. 1 is a front perspective view of an eyeglass component

D190,884 S 7, 1961 Rose showing an embodiment of the new design;
3,665,122 A 5, 1972 Weiss FIG. 2 is a front elevational view thereof
D285,020 S * 8, 1986 Schmidthaler ............... D16/313 FIG. 3 is a rear elevational view thereof;
4,856,086 A 8/1989 McCullough
4,882,769 A 11, 1989 Gallimore FIG. 4 is a left side elevational view thereof, the right side
D323,515 S * 1/1992 Arbez .......................... D16/313 elevational view being a minor image thereof;
5,159,639 A 10, 1992 Shannon et al. FIG. 5 is a top plan view thereof; and,
D374,883 S * 10/1996 Luzlbauer .................... D16,321 FIG. 6 is a bottom plan view thereof.
D380,766 S 7, 1997 Simioni
D387,084 S 12, 1997 Bole' The broken lines in the Figures show portions of the eyeglass
D390,863 S 2f1998 Bennell which form no part of the claimed design.
D398,021 S 9, 1998 Bole
D398,326 S 9, 1998 Jannard et al. 1 Claim, 5 Drawing Sheets
USOOD725696S
(12) United States Design Patent (10) Patent No.: USD725,696S

Garfias (45) Date of Patent: . Mar. 31, 2015
(54) EYEGLASS COMPONENTS D420,035 S 2/2000 Hartman
D435,857 S 1/2001 Yang
6,233,342 B1 5, 2001 Fernandez
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D478,927 S 8/2003 Teng
(72) Inventor: Nicolas Adolfo Garfias, Long Beach, E. s 39. Aard et al.
CA (US) D489,394 S 5/2004 Teng
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D519,148 S 4, 2006 Wu
D524,354 S 7/2006 Yang
(**) Term: 14 Years 7,147,324 B2 12/2006 Jannard et al.
7,150,526 B2 12/2006 Jannard et al.
(21) Appl. No. 29/494.752 D534,573 S 1/2007 Mage
D536,026 S 1/2007 Bruck
(22) Filed: Jun. 24, 2014 D539,833 S
D544,014 S
358, Ching
6, 2007 Fuchs
(51) LOC (10) Cl. ................................................ 14-03 D545,344 S 6/2007 Yang
(52) U.S. Cl. D545,345 S 6/2007 Moritz et al.
USPC ......................................... D16/335; D16/321 D545,868 S 239, Chuang
(58) Field of Classification Search D546.86 s 72007 Yang
USPC ............. D160,023551. Primary Examiner Raphael Barkai
D10/15, 26; 446/484, 175, 356; (74) Attorney, Agent, or Firm — Knobbe Martens Olson &
D6/477,479,300
See application file for complete search history. s
p.
(56) References Cited (57) CLAM
The ornamental design for eyeglass components, as shown
U.S. PATENT DOCUMENTS and described.
D184,274 S 1, 1959 Darr DESCRIPTION
D190,884 S 7, 1961 Rose
3,665,122 A 5, 1972 Weiss
D285,020 S 8, 1986 Schmidthaler FIG. 1 is a front perspective view of eyeglass components
4,856,086 A 8/1989 McCullough showing an embodiment of the new design;
4,882,769 A 11, 1989 Gallimore FIG. 2 is a front elevational view thereof
5,159,639 A 10, 1992 Shannon et al. FIG. 3 is a rear elevational view thereof;
D380,766 S 7, 1997 Simioni
D387,084 S 12, 1997 Bole FIG. 4 is a left side elevational view thereof, the right side
D390,863 S 2f1998 Bennell elevational view being a mirror image thereof;
D398,021 S 9, 1998 Bole FIG. 5 is a top plan view thereof; and,
D398,326 S 9, 1998 Jannard et al. FIG. 6 is a bottom plan view thereof.
5,867,841 A 2/1999 Chiang The broken lines in the Figures show portions of the eyeglass
D407,428 S 3, 1999 Jannard et al.
D408,049 S 4/1999 Jannard et al. which form no part of the claimed design.
D415, 188 S 10, 1999 Thixton et al.
D418,153 S 12/1999 Haney 1 Claim, 5 Drawing Sheets
USOOD728002S
(12) United States Design Patent (10) Patent No.: USD728,002 S

Uhm (45) Date of Patent: Apr. 28, 2015
(54) EYEGLASS D329,445 S 9, 1992 Jannard
D330,035 S 10, 1992 Jannard
D330,716 S 11, 1992 J d
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D330,903 S 11, 1992 E.d
D334,389 S 3, 1993 Bole
(72) Inventor: Kyusik Uhm, Glendale, CA (US) 5,208.614 A 5/1993 Jannard
5,249,001 A 9, 1993 Jannard
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D344,742 S 3, 1994 Jannard
D384,364 S 9, 1997 Yee
5,760,868 A 6/1998 Jannard et al.
(**) Term: 14 Years D399,519 S 10/1998 Yee
D399,866 S 10, 1998 Yee
(21) Appl. No. 29/501,430 D401,607 S 11/1998 Miniutti
5,903,331 A 5, 1999 Lin
(22) Filed: Sep. 4, 2014 5,987,653 A 1 1/1999 Cyr
(51) LOC (10) Cl. ................................................ 16-06 (Continued)
(52) U.S. Cl. OTHER PUBLICATIONS
USPC ......................................... D16/314: D16/335
(58) Field of Classification Search U.S. Appl. No. 29/471,271, filed Oct. 30, 2013, Shin.
USPC ........ D16/101,300 342,900; D29/109-110;
silio.
1 4-3
Eisai
s Y -s a1-1 s
i. s Primary Examiner — Raphael Barkai
2/426-432, 447–449, 441, 434–437, Bear, LLP
2/13, 15; D21/483, 659-661; D14/372
See application file for complete search history. (57) CLAM
Th e ornamental1 design ffor an eyeglass,
yegl h
as shown and
(56) References Cited described.
U.S. PATENT DOCUMENTS DESCRIPTION
D176,316 S 12/1955 Fleming
D178,178 S 7/1956 Fleming FIG. 1 is a front perspective view of an eyeglass showing an
D196,000 S 8, 1963 McNeill embodiment of the new design;
4,674,851 A 6, 1987 Jannard FIG. 2 is a front elevational view thereof
D293.450 S 12/1987 Jannard
4,730,915 A 3, 1988 Jannard FIG. 3 is a rear elevational view thereof;
4,824,233 A 4, 1989 Jannard FIG. 4 is a left side elevational view thereof, the right side
4,859,048 A 8, 1989 Jannard elevational view being a mirror image thereof;
4,867,550 A 9, 1989 Jannard FIG. 5 is a top plan view thereof; and,
D322,975 S 1, 1992 Bole FIG. 6 is a bottom plan view thereof.
D324,394 S 3, 1992 Jannard The broken lines in the Figures show portions of the eyeglass
D324,528 S 3, 1992 Jannard which form no part of the claimed design.
D325,040 S 3, 1992 Jannard
USOOD746355S
(12) United States Design Patent (10) Patent No.: US D746,355S

Uhm (45) Date of Patent: . Dec. 29, 2015
(54) EYEGLASS COMPONENT D325,040 S 3, 1992 Jannard
D329,442 S 9, 1992 Jannard
D329,445 S 9, 1992 J d
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D330,035 S 10, 1992 E.d
D330,716 S 11/1992 Jannard
(72) Inventor: Kyusik Uhm, Glendale, CA (US) D330,903 S 11/1992 Jannard
D334,389 S 3, 1993 Bole
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) 5,208.614 A 5/1993 Jannard
5,249,001 A 9, 1993 Jannard
D344,742 S 3, 1994 Jannard
(**) Term: 14 Years D384,364 S 9/1997 Yee
5,760,868 A 6/1998 Jannard et al.
(21) Appl. No. 29/501,442 D399,519 S 10/1998 Yee
D399,866 S 10, 1998 Yee
(22) Filed: Sep. 4, 2014 (Continued)
51) LOC (10) Cl. ................................................ 16-06
2. U.S & ) OTHER PUBLICATIONS
USPC ......................................................... D16/314 Wiley X. “Wiley XPT-1.printed from www.wileyx.com on Dec. 2,
(58) Field of Classification Search 2014, unknown publication date.
USPC ........ D16/101,300 342,900; D29/109-110; (Continued)
351/41, 44, 51–52, 62, 158,92,
351/103-123, 140-153, 63, 59,45-48;
2/426-432, 447–449, 441, 434–437, Primary Examiner — Raphael Barkai
2/13, 15; D21/483, 659-661; D14/372 (74) Attorney, Agent, or Firm — Knobbe Martens Olson &
CPC ........ G02C 2200/08; G02C 1/06; G02C5/14: Bear, LLP
G02C 11/02; G02C 11/04: GO1C 5/16:
A61M 20210044. A63B33/002
See application file for S7)
The ornamental design forCLAIM
an eyeglass component, as shown
complete search history. and described
(56) References Cited DESCRIPTION
FIG. 1 is a front perspective view of an eyeglass component
D176,316 S 12/1955 Fleming showing an embodiment of the new design;
D178,178 S 7/1956 Fleming FIG. 2 is a front elevational view thereof
D196,000 S 8, 1963 McNeill FIG. 3 is a rear elevational view thereof;
4,674,851 A 6, 1987 Jannard
D293.450 S 12/1987 Jannard FIG. 4 is a left side elevational view thereof, the right side
4,730,915 A 3, 1988 Jannard elevational view being a mirror image thereof;
4,824,233 A 4, 1989 Jannard FIG. 5 is a top plan view thereof; and,
4,859,048 A 8, 1989 Jannard FIG. 6 is a bottom plan view thereof.
4,867,550 A 9, 1989 Jannard The broken lines in the Figures show portions of the eyeglass
D322,975 S 1, 1992 Bole
D323,333 S 1/1992 Jannard et al. which form no part of the claimed design.
D324,394 S 3, 1992 Jannard
USOOD746368S
(12) Uhm
United States Design Patent (10) Patent No.: US D746,368 S
(45) Date of Patent: . Dec. 29, 2015
(54) SET OF EYEGLASS COMPONENTS D543,574 S 5/2007 Jannard et al.
(71) Applicant: Oakley, Inc., Foothill Ranch, CA (US) D545,868 S 7/2007 Chuang
D545,872 S 7, 2007 Yee et al.
(72) Inventor: Kyusik Uhm, Glendale, CA (US) D547,359 S 7/2007 Krakoffet al.
D555,705 S 1 1/2007 Chuang
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US) D557,326 S 12/2007 Jannard et al.
D561,809 S 2, 2008 Yee
(**) Term: 14 Years D564,571 S 3/2008 Jannard et al.
D564,572 S 3/2008 Yee et al.
D565,089 S 3, 2008 Moritz
(21) Appl. No.: 29/501,452 7,347,545 B1 3/2008 Jannard
(22) Filed: Sep. 4, 2014 (Continued)
(51) LOC (10) Cl. ................................................ 16-06 OTHER PUBLICATIONS
(52) U.S. C. U.S. Appl. No. 29/471,271, filed Oct. 30, 2013, Shin.
USPC ......................................................... D16/335
(58) Field of Classification Search (Continued)
USPC ........ D16/101,300 342,900; D29/109-110;
351/41, 44, 51–52, 62, 158,92, Primary Examiner — Raphael Barkai
351/103-123, 140-153, 63, 59,45-48; (74) Attorney, Agent, or Firm — Knobbe Martens Olson &
2/426-432, 447–449, 441, 434–437, Bear, LLP
2/13, 15; D21/483, 659-661; D14/372
CPC ........ G02C 2200/08; G02C 1/06; G02C5/14: (57) CLAM
G02C 11/02; G02C 11/04: GO1C 5/16: The ornamental design for a set of eyeglass components, as
A61M 2021/0044: A63B33/002 shown and described.
See application file for complete search history.
DESCRIPTION
U.S. PATENT DOCUMENTS FIG. 1 is a front perspective view of a set of eyeglass compo
nents showing an embodiment of the new design;
D426,845 S 6, 2000 Green et al. FIG. 2 is a front elevational view thereof
D437,872 S * 2/2001 Guo ............................. D16,314 FIG. 3 is a rear elevational view thereof;
D458,624 S 6/2002 Soper FIG. 4 is a left side elevational view thereof, the right side
D478,929 S 8, 2003 Baden et al.
D484, 173 S 12/2003 Jannard et al. elevational view being a mirror image thereof;
D496,383 S 9, 2004 Yee et al. FIG. 5 is a top plan view thereof; and,
D496,680 S 9, 2004 Yee FIG. 6 is a bottom plan view thereof.
D497,380 S 10, 2004 Thixton The broken lines in the Figures show portions of the set of
D505,150 S 5, 2005 Yee et al. eyeglass components which form no part of the claimed
D508,515 S 8, 2005 Yee et al.
D513,275 S 12, 2005 Yee design.
D513,761 S 1/2006 Yee et al.
D539,833 S 4/2007 Chuang 1 Claim, 5 Drawing Sheets

Oakley v. Zapals - Complaint

Hochgeladen von

Dokumentinformationen

Copyright

Verfügbare Formate

Dieses Dokument teilen

Dokument teilen oder einbetten

Freigabeoptionen

Stufen Sie dieses Dokument als nützlich ein?

Sind diese Inhalte unangemessen?

Copyright:

Verfügbare Formate

Oakley v. Zapals - Complaint

Hochgeladen von

Copyright:

Verfügbare Formate

Case: 1:18-cv-07530 Document #: 1 Filed: 11/14/18 Page 1 of 39 PageID #:1

IN THE UNITED STATES DISTRICT COURT

ZAPALS CORP. LTD.,

Defendant Zapals Corp. Ltd. (“Zapals” or “Defendant”) and alleges as follows:

Plaintiff’s Oakley trademarks (the “Infringing Products”) through Defendant’s websites at

Zapals.com and Zapalstyle.com. Plaintiff seeks to address Defendant’s counterfeiting and

Defendant’s actions and seeks injunctive and monetary relief.

II. JURISDICTION AND VENUE

using counterfeit versions of Plaintiff’s trademarks and infringements of Plaintiff’s patented

III. THE PARTIES

5. Oakley is an internationally recognized manufacturer, distributor and retailer of

prominently display its famous, internationally-recognized and federally-registered trademarks,

headwear, footwear, outerwear, jackets and apparel in the world.

Michigan Avenue in Chicago, Illinois.

7. Oakley incorporates a variety of distinctive marks in the design of its various

Registration Trademark Good and Services

1,541,380 PLUTONITE For: Lenses for sunglasses, in class 9.

anti-glare eyewear and their parts and

1,984,501 For: Protective and/or anti-glare eyewear,

3,379,110 RADAR For: Protective eyewear, namely,

Oakley Trademarks is of incalculable and inestimable value to Oakley.

proprietary content, images and designs exclusive to Oakley.

valuable assets of Oakley.

following patented designs, herein referred to as the “Oakley Designs.”

Patent Number Claim Issue Date

D581,443 November 25,

D581,444 November 25,

D640,727 June 28, 2011

D646,708 October 11, 2011

D719,209 December 9, 2014

D725,695 March 31, 2015

D725,696 March 31, 2015

D728,002 April 28, 2015

D746,355 December 29,

D746,368 December 29,

May 13, 2008 with named inventor Peter Yee.

December 9, 2014 with a named inventor of Nicolas Adolfo Garfias.

March 31, 2015 with a named inventor of Nicolas Adolfo Garfias.

March 31, 2015 with a named inventor of Nicholas Adolfo Garfias.

April 28, 2015 with a named inventor of Kyusik Uhm.

December 29, 2015 with a named inventor of Kyusik Uhm.

December 29, 2015 with a named inventor of Kyusik Uhm.

IV. DEFENDANT’S UNLAWFUL CONDUCT

30. Defendant is engaged in designing, manufacturing, advertising, promoting,

studied imitations, infringements, and/or counterfeits of the Oakley Trademarks (previously

defined as the “Infringing Products”).

32. Plaintiff’s investigator visited Defendant’s websites at Zapals.com and

Zapalstyle.com and purchased Infringing Products.

35. A comparison of the Oakley Trademarks to Defendant’s Infringing Products

exemplifies Defendant’s infringement of U.S. Trademark Registration No. 1,521,599 for an

“JAWBREAKER” word mark owned by Oakley.

Oakley Trademarks Defendant’s Infringing Products

(Reg. No. 1,984,501)

(Reg. No. 1,980,039)

(Reg. No. 1,984,501)

(Reg. No. 1,980,039)

(Reg. No. 1,984,501)

(Reg. No. 1,984,501)

38. Defendant’s use of infringements and/or counterfeits of the Oakley Trademarks in

39. Defendant’s willful use of infringements and/or counterfeits of the Oakley

Design Patent No. D568,918 owned by Oakley.

As shown offered for sale on Zapalstyle.com

Received product purchased from

Oakley’s ‘918 Design Claim Defendant’s Infringing Product