Glam and Glits Nail Design v. Igel Beauty - Complaint

Case 8:20-cv-00088 Document 1 Filed 01/15/20 Page 1 of 37 Page ID #:1
1 MATTHEW C. LAPPLE (Cal. Bar No. 193546)

matt@lappleubell.com
2 HA TRAN LAPPLE (Cal. Bar No. 225022)
ha@lappleubell.com
3 LAPPLE UBELL IP LAW, LLP
4 19800 MacArthur Blvd., 3rd Floor
Irvine, California 92612
5 Telephone: (949) 756-4889
Facsimile: (949) 242-9789
6
7 Attorneys for Plaintiff
GLAM AND GLITS NAIL DESIGN, INC.
8
9 UNITED STATES DISTRICT COURT
10 FOR THE CENTRAL DISTRICT OF CALIFORNIA
11 SOUTHERN DIVISION
12
13 GLAM AND GLITS NAIL DESIGN, ) Civil Case No.
INC., a California corporation, )
14 Plaintiff, ) COMPLAINT FOR DAMAGES AND
) INJUNCTIVE RELIEF
15 )
16 vs. ) 1. Breach of Contract
) 2. Patent Infringement of Three Design
17 ) Patents
IGEL BEAUTY, LLC, a New Jersey ) 3. Trade Dress Infringement
18 limited liability company; DANIEL ) 4. California Unfair Competition,
BUI, an individual; TU BUI, an ) BUS. AND PROF. CODE § 17200 et seq.
19
individual; ALVIN BUI, an individual; )
20 ANDREW BUI, an individual; and ) JURY TRIAL DEMAND
DOES 1–20, inclusive. )
21 )
Defendants. )
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COMPLAINT FOR BREACH OF CONTRACT, INFRINGEMENT OF PATENTS & OF TRADE DRESS & UNFAIR COMP.
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Plaintiff Glam and Glits Nail Design, Inc., a California corporation (“Plaintiff”
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or “Glam and Glits”), by and through its attorneys, asserts claims against Defendants
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iGel Beauty, LLC (“iGel”), Daniel Bui, Tu Bui, Alvin Bui, and Andrew Bui
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(collectively “the Bui Family Defendants”), and DOES 1–20 (together with all of the
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foregoing, “Defendants”), for violating Glam and Glits’ proprietary rights in its
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KIARA SKY® gel- and nail-polish product lines. For its complaint, Glam and Glits
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alleges as follows:
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NATURE OF THE ACTION
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1. This is the second time in four years that Defendants—specifically, the
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Bui Family Defendants—intentionally infringed the intellectual property rights of
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Plaintiff Glam and Glits by marketing and selling an infringing copy of Plaintiff’s
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famous KIARA SKY® gel and nail polish line.
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The Prior Lawsuit
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2. In July 2016, in this judicial district, Plaintiff sued entities called Ideal
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Salon Solutions, LLC (“ISS”), and Sky Beauty, LLC (“Sky Beauty”; together with
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ISS collectively, “Prior Defendants”) for infringing Plaintiff’s U.S. Design Patent
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No. D758,737 (“D’737 Patent”) and infringing the trade-dress and trademark of
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Plaintiff’s KIARA SKY® gel and nail polish line, in a lawsuit styled, Glam and
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Glits Nail Design, Inc. v. Sky Beauty, LLC, Ideal Salon Solutions, LLC, and Saigon
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Nail Supply, Case No. 8:16-CV-1271-JLS-KES (C.D. Cal. filed Jul 8, 2016) (“the
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Prior Lawsuit”).
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The Settlement Agreement
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3. On or about February 7, 2017, Glam and Glits entered into a settlement
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agreement and release (“Settlement Agreement”) with Prior Defendants. A true and
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correct copy of the Settlement Agreement is attached hereto as “Exhibit A,” which
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Plaintiff hereby incorporates in its entirety.
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4. In the Settlement Agreement, the Prior Defendants executed:
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1 (a) a binding acknowledgment of the validity and enforceability of

2 the Glam and Glits’ D’737 Patent, as well as
3 (b) a binding acknowledgement of the validity and non-functionality
4 of the trade dress of the KIARA SKY® bottle (“KIARA SKY®
5 Bottle Trade Dress”).
6 5. The Settlement Agreement further prohibited any further infringement
7 of either (a) the Glam and Glits D’737 Patent or (b) the trade dress rights at issue in
8 the Prior Lawsuit.
9 6. The Settlement Agreement specifically bound all successors-in-interest
10 to Prior Defendants ISS and Sky Beauty:
11 “The Parties intend this Agreement to be
12 legally binding upon and inure to the benefit of
13 each of them and their respective successors,
14 assigns, executors, administrators, heirs and
15 estates.”
16 (Settlement Agrmt., § 23, p. 11 [EXH. A. at p. 11.)
17 7. Defendant iGel is the successor-in-interest to Prior Defendant ISS.
18 8. Defendant iGel is the successor-in-interest to Prior Defendant Sky
19 Beauty.
20 9. Prior Defendants ISS and Sky Beauty were owned by the Bui Family
21 Defendants or under their control. The Settlement Agreement further establishes that
22 the Bui Family Defendants are third-party beneficiaries of the Settlement Agreement.
23 Defendant iGel Succeeds the Prior Defendants in Interest and
24 Is the Alter Ego of the Bui Family Defendants
25 10. As pleaded further below, Defendant iGel is the alter ego of the Bui
26 Family Defendants.
27 11. Therefore, the Bui Family Defendants are bound by the terms of the
28 Settlement Agreement.
2
1 12. Finally, the Settlement Agreement provided Prior Defendants a

2 generous 6-month long “sell off period” in which to liquidate (but not advertise) the
3 remaining inventory of the prior infringing products. Glam and Glits agreed to this
4 sell-off period due to the representation of Prior Defendant’s counsel that the Prior
5 Defendants faced serious financial hardship and sought funds to redesign their bottle
6 and brand identity so as not to infringe the intellectual property rights of Glam and
7 Glits in the future. At no time did Glam and Glits license the Prior Defendants to
8 practice the D’737 Patent or the KIARA SKY® Bottle Trade Dress.
9 13. The Bui Family Defendants have now abused the past leniency and
10 generosity of Plaintiff by again infringing the D’737 Patent and KIARA SKY®
11 Bottle Trade Dress.
12 14. Plaintiff files this complaint because Defendants show themselves to be
13 recidivist infringers. Rather than developing their own brand identity, they again
14 copied Plaintiffs’ patented and trade-dress-protected nail polish bottle design. In
15 doing so, Defendants breach their obligations under the Settlement Agreement,
16 commit willful patent infringement, and willfully infringe Plaintiff’s trade dress.
17 15. By marketing and selling their “iGel” gel and nail polish line—which is
18 a knockoff of Glam and Glits’ distinctive and highly-successful KIARA SKY gel
19 and nail polish line—Defendants:
20 (a) breach the Settlement Agreement;
21 (b) again infringe Glam and Glits’ D’737 Patent, entitled, “NAIL
22 POLISH BOTTLE”;
23 (c) infringe Glam and Glits’ U.S. Design Patent No. D836,444 (“the
24 D’444 Patent”), entitled “NAIL POLISH BOTTLE”;
25 (d) infringe Glam and Glits’ U.S. Design Patent No. D813,551 (“the
26 D’551 Patent”), entitled “NAIL POLISH BOTTLE
27 APPLICATOR CAP”;
28 (e) again infringe Glam and Glits’ distinctive KIARA SKY® Bottle
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1 Trade Dress and engage in unfair competition in violation of 15

2 U.S.C. § 1125(a); and
3 (f) again engage in unfair competition in violation of the CALIFORNIA
4 UNFAIR PRACTICES ACT, CAL. BUS. AND PROF. CODE § 17200 et
5 seq.
6 PARTIES
7 Plaintiff Glam and Glits
8 16. Plaintiff Glam and Glits is a corporation organized under the laws of the
9 State of California. Glam and Glits has a place of business in this judicial district
10 located at 16926 10th St., Huntington Beach, California, 90742. Plaintiff’s principal
11 place of business is located at 8700 Swigert Court, Suite #209, Bakersfield,
12 California, 93311.
13 17. Plaintiff Glam and Glits is a manufacturer of gel and nail polish for
14 professional manicurists—including its “KIARA SKY” gel and nail polish line—
15 which features Glam and Glits’ proprietary KIARA SKY trademarks, label design,
16 and bottle and cap design.
17 18. Plaintiff’s proprietary polish line is protected by three U.S. design
18 patents, multiple registered trademarks, and trade-dress rights.
19 Defendant iGel
20 19. Glam and Glits is informed and believes and thereon alleges that
21 Defendant iGel is a limited liability company organized and existing under the laws
22 of the State of New Jersey.
23 20. Defendant iGel is the successor-in-interest to Prior Defendant ISS.
24 21. Prior Defendant ISS used the stylized design trademark “iGel” on its
25 nail polish products from approximately 2013 until July 2016, and, in fact, registered
26 this “iGel” trademark as U.S. Reg. No. 4,497,886 (“the ‘886 Trademark
27 Registration”).
28 22. Plaintiff Glam and Glits is informed, believes, and thereon alleges that,
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1 on or about July 7, 2016, Prior Defendant ISS executed an assignment of the “iGel”
2 trademark, the ‘886 Trademark Registration, and all goodwill associated with the
3 “iGel” trademark to Defendant iGel.
4 23. Plaintiff Glam and Glits is informed, believes, and thereon alleges that,
5 sometime around the time that the Prior Defendant ISS assigned its “iGel”
6 trademark, the ‘886 Trademark Registration, and all goodwill associated therewith to
7 Defendant iGel, Prior Defendant ISS ceased all business operations and transferred
8 its assets to Defendant iGel.
9 24. On information and belief, Defendant iGel was formed by, and intended
10 for use by the Bui Family Defendants as a shell corporation to enable Prior
11 Defendant ISS to transfer its trademark, business operations and assets to Defendant
12 iGel in an attempt to avoid liability and to improperly shield assets from Glam and
13 Glits during the Prior Lawsuit.
14 25. Plaintiff Glam and Glits is informed, believes, and thereon alleges that
15 there exists a unity of interest and ownership between Defendant iGel and the Bui
16 Family Defendants such that the former is an alter ego of the latter, and no
17 separateness exists between iGel and the Bui Family Defendants.
18 26. On information and belief, the Bui Family Defendants have used
19 Defendant iGel as a mere shell, conduit, agent, and/or instrumentality through which
20 they can benefit from infringing Plaintiff’s intellectual property while hiding their
21 assets and escaping from liability to Plaintiff.
22 27. Under the circumstances, treating Defendant iGel as separate from the
23 Bui Family Defendants would permit an abuse of the corporate form and would
24 sanction fraud and promote injustice and bad faith. Among other injustices, it would
25 permit the Bui Family Defendants repeatedly to infringe another’s patents,
26 trademark, and trade dress rights without personal liability.
27 Defendant Daniel Bui
28 28. Defendant Daniel Bui is an owner and manager of Defendant iGel.
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1 29. Defendant Daniel Bui is also the current CEO of Defendant iGel.
2 30. Plaintiff Glam and Glits is informed and believes and thereon alleges
3 that Defendant Daniel Bui also was a General Partner of Prior Defendant ISS.
4 31. Plaintiff Glam and Glits further is informed, believes, and thereon
5 alleges that Defendant Daniel Bui is a resident of New Jersey.
6 Defendant Tu Bui
7 32. Defendant Tu Bui is an owner and manager of Defendant iGel.
8 33. Defendant Tu Bui was, at one time, the CEO of Prior Defendant ISS.
10 alleges that Defendant Tu Bui is a resident of New Jersey.
11 Defendant Alvin Bui
12 35. Defendant Alvin Bui is an owner and manager of Defendant iGel.
13 36. Defendant Alvin Bui was a general partner of—and at one point in time,
14 the registered agent for service of process for—Prior Defendant ISS.
15 37. Defendant Alvin Bui also uses the alias “Tan Bui.”
16 38. Tan Bui was listed as a co-debtor on the bankruptcy filing of Ms.
17 Lequyen T. Bui in 2010.
19 alleges that Defendant Alvin Bui is a resident of New Jersey.
20 Defendant Andrew Bui
21 40. Defendant Andrew Bui is an owner and manager of Defendant iGel.
22 41. Defendant Andrew Bui was, at one point in time, the chief executive
23 officer, and the registered agent for service of process, for Defendant iGel.
24 42. Defendant Andrew Bui was, at one point in time, the chief executive
25 officer of Prior Defendant ISS.
26 43. Defendant Andrew Bui also was the member-manager and the chief
27 executive officer of Prior Defendant Sky Beauty.
28 44. Defendant Andrew Bui signed the Settlement Agreement on behalf of
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1 each of the Prior Defendants.

2 45. Defendant Andrew Bui declared bankruptcy in 2005. Defendant
3 Andrew Bui’s bankruptcy was discharged in 2006.
4 46. Defendant Andrew Bui also was listed as a co-debtor on the bankruptcy
5 filing of Ms. Lequyen T. Bui in 2010.
7 alleges that Defendant Andrew Bui is a resident of New Jersey.
9 alleges that Defendants Andrew Bui, Alvin Bui, Daniel Bui, and Tu Bui are brothers.
10 DOE Defendants
12 alleges that Defendants DOE 1–20 have participated in and are responsible for the
13 conduct complained of herein. The true names and capacities of the defendants
14 named herein as DOE 1–20 are unknown to Plaintiff, which therefore sues them
15 under these fictitious names. Plaintiff will amend this complaint to add the true
16 names and capacities of Defendants DOE 1–20 when they become known. Plaintiff
17 further alleges that all of the defendants, including the DOE defendants, were the
18 agents and principals of all of the other defendants and were acting in the course and
19 scope of their authority.
20 ALTER EGO ALLEGATIONS
21 50. Plaintiff is informed, believes, and thereon alleges that Defendant iGel
22 was at all relevant times the alter ego corporation of Defendants Daniel Bui, Tu Bui,
23 Alvin Bui, and Andrew Bui by reason of the following:
24 51. Plaintiff is informed, believes, and thereon alleges that, at all times
25 herein mentioned, each of the individuals constituting the Bui Family Defendants
26 dominated, influenced and controlled Defendant iGel and the officers thereof as well
27 as the business, property, and affairs of said corporation.
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1 herein mentioned, there existed and now exists still a unity of interest and ownership
2 between said individual Bui Family Defendants and Defendant iGel and that the
3 individuality and separateness of said individual Bui Family Defendants and iGel has
4 ceased.
5 53. Plaintiff is informed, believes, and thereon alleges that, at all times since
6 the incorporation of Defendant iGel, iGel has been and now is a mere shell and
7 naked framework which said individual Bui Family Defendants used as a conduit for
8 the conduct of their personal business, property and affairs.
10 herein mentioned, Defendant iGel was created and continued pursuant to a
11 fraudulent plan, scheme and device, and that Defendant iGel was conceived and
12 operated by said individual Bui Family Defendants so that the income, revenue and
13 profits of Defendant iGel was diverted by said individual Bui Family Defendants to
14 themselves.
16 herein mentioned, Defendant iGel was organized by said individual Bui Family
17 Defendants as a device to avoid individual liability and for the purpose of
18 substituting financially irresponsible corporations in the place and stead of said
19 individual Bui Family Defendants, and each of them, and in the place and stead of
20 the Prior Defendants, and, accordingly, that Defendant iGel was formed with
21 capitalization totally inadequate for the business in which said corporation was
22 engaged.
24 is insolvent.
26 has been used by the Bui Family Defendants at least as part of a fraudulent attempt
27 to avoid the liability related to the Prior Lawsuit, and to further avoid obligations
28 imposed by the Settlement Agreement upon the Prior Defendants ISS and Sky
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1 Beauty.
2 58. By virtue of the foregoing, adherence to the fiction of the separate
3 corporate existence of Defendant iGel would, under the circumstances, sanction a
4 fraud and promote injustice in that Plaintiff would be unable to realize upon any
5 judgment in its favor and in that Plaintiff would be denied the benefit of the bargain
6 that it struck in the Settlement Agreement.
7 59. Plaintiff is informed and believes and thereon alleges that, at all times
8 relevant hereto, the individual Bui Family Defendants and Defendant iGel acted for
9 each other in connection with the conduct hereinafter alleged and that each of them
10 performed the acts complained of herein or breached the duties herein complained of
11 as agents of each other and each therefore fully is liable for the acts of the other.
12 JURISDICTION
13 60. This Court has original subject matter jurisdiction over the breach-of-
14 contract claim in this action pursuant to 28 U.S.C. § 1332. Plaintiff is incorporated in
15 California. Defendant iGel is formed in New Jersey. Plaintiff is informed, believes,
16 and thereon alleges that each of the Bui Family Defendants is a domiciliary of New
17 Jersey. The amount in controversy exceeds $75,000 and further exceeds the
18 minimum jurisdictional requirements for diversity jurisdiction.
19 61. This Court has original subject matter jurisdiction over the claims in this
20 action that relate to patent infringement and trade dress infringement pursuant to 35
21 U.S.C. §§ 271 and 281, 28 U.S.C. §§ 1331 and 1338, and 15 U.S.C. §§ 1116(a),
22 1121(a), and 1125(a), as these claims arise under the laws of the United States.
23 62. The Court has supplemental jurisdiction over the claims in this
24 complaint which arise under state law pursuant to 28 U.S.C. § 1367(a), because the
25 state law claims are so related to the federal claims that they form part of the same
26 case or controversy and derive from a common nucleus of operative facts.
27 63. This Court has personal jurisdiction over each Defendant.
28 64. As to the breach of contract claims, each Defendant is a successor-in-
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1 interest to the Prior Defendants ISS and Sky Beauty and, therefore, each Defendant
2 is bound by the Settlement Agreement. Each Defendant also is a third-party
3 beneficiary of the Settlement and, therefore, each Defendant is bound by the
4 Settlement Agreement. Further, as pleaded herein, Defendant iGel is the alter ego of
5 each of the Bui Family Defendants.
6 65. The Settlement Agreement has a forum-selection clause specifying that
7 any disputes arising under the Settlement Agreement are to be resolved in the U.S.
8 District Court for the Central District of California, in its Southern Division.
9 Accordingly, each Defendants has consented to the personal jurisdiction of this
10 Court for the resolution of the present dispute regarding breach of the Settlement
11 Agreement.
12 66. Further, each Defendant has a continuous, systematic, and substantial
13 presence within this judicial district by reason of each having sold and offered for
14 sale infringing products in this judicial district and by reason of each having
15 committed acts of patent infringement and trade dress infringement in this judicial
16 district by, inter alia, selling infringing gel and nail polish directly to professional
17 nail technicians and/or retailers in this district, as well as selling into the stream of
18 commerce knowing such products would be sold in California and in this judicial
19 district, which acts form a substantial part of the events or omissions giving rise to
20 Plaintiff Glam and Glits’ claim.
21 67. This Court also has personal jurisdiction over Defendants because, on
22 information and belief, Defendants and their representatives and agents have made
23 and continue to make regular visits to this judicial district (specifically, to California)
24 to promote and sell their products, including the infringing products. This Court also
25 has personal jurisdiction over Defendants because said Defendants specifically have,
26 on information and belief, targeted advertising of the infringing products to residents
27 of this judicial district.
28 68. Venue is proper in the Central District of California with respect to
10
1 Defendants because, as pleaded herein, each Defendant:

2 (a) is bound by the forum-selection clause of the Settlement
3 Agreement;
4 (b) is a successor-in-interest to the Prior Defendants;
5 (c) is a third-party beneficiary of the Settlement Agreement; and/or
6 (d) is an alter ego of a successor-in-interest to the Prior Defendants.
7 69. Venue is also proper in the Central District of California under 28
8 U.S.C. § 1391(b) with respect to Defendants because a substantial part of the events
9 giving rise to the claims occurred in this judicial district and because each of the
10 defendants is subject to the personal jurisdiction of this Court. Upon information and
11 belief, each defendant conducts regular business within this district and, specifically,
12 has marketed, sold, offered for sale—and continues to market the infringing
13 products—in this judicial district, including through advertisements targeted at
14 residents of this district.
15 GENERAL ALLEGATIONS
16 70. Founded and operated by the husband-and-wife team of Khoa
17 “Michael” Duong and Ana Tan, Glam and Glits grew from humble origins—with
18 only two employees in 2007—to become a rising star in the professional nail
19 products industry, with more than eighty employees today.
20 71. Nationwide, KIARA SKY products now are sold in hundreds of nail-
21 and-beauty-supply stores, and the products and displays are featured in thousands of
22 nail salons.
23 72. Glam and Glits’ KIARA SKY gel and nail polish has received
24 widespread acclaim among professional manicurists and beauty consultants. For
25 example, professional manicurist Kimmie Kyees has used KIARA SKY polish on
26 celebrities such as Kylie Jenner, Katy Perry, Jennifer Lopez, Kourtney Kardashian,
27 and LeAnn Rimes.
28 73. KIARA SKY products also are praised by Erika Johnson, a celebrity
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1 manicurist who has used KIARA SKY products to create the memorable nail designs
2 worn by the character “Cookie Lyon” on the hit Fox Television show, Empire.
3 74. The KIARA SKY Instagram feed, which regularly features images of
4 the patented and trade dress protected KIARA SKY® bottles, currently has
5 approximately 1.2 million followers, evidencing the widespread consumer
6 recognition and appeal of the KIARA SKY® brand.
7 75. Glam and Glits’ KIARA SKY products, including its unique and
8 distinctive gel and nail polish bottles, are widely recognized within the industry as a
9 distinctive brand associated with high quality matching gel and nail polish.
10 Glam and Glits’ KIARA SKY Intellectual Property
11 76. Glam and Glits launched its KIARA SKY product line in July 2014.
12 77. On June 14, 2016, the United States Patent and Trademark Office
13 (“USPTO”) duly and lawfully issued United States Design Patent No. D758,737 S
14 (“the D’737 Patent”), entitled, “NAIL POLISH BOTTLE.”
15 78. Glam and Glits owns, by assignment, all right, title, and interest in the
16 D’737 Patent.
17 79. A true and correct copy of the D’737 Patent is attached hereto as
18 “Exhibit B” and is hereby incorporated by reference.
19 80. Representative images of the protected design claimed in the D’737
20 Patent are shown below:
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13 81. On December 25, 2018, the USPTO duly and lawfully issued United
14 States Design Patent No. D836,444, entitled, “NAIL POLISH BOTTLE.” The D’444
15 Patent is continuation of, and claims priority to, the D’737 Patent.
16 82. Glam and Glits is the owner by assignment of all right, title, and interest
17 in the D’444 Patent. A true and correct copy of the D’444 Patent is attached hereto as
18 “Exhibit C” and is hereby incorporated by reference. Representative images of the
19 protected design claimed in the D’444 Patent are shown below:
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83. On December 25, 2018, the USPTO duly and lawfully issued United
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States Design Patent No. D813,551, entitled, “NAIL POLISH BOTTLE
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APPLICATOR CAP.” The D’551 Patent is continuation of, and claims priority to,
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the D’737 Patent.
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84. Glam and Glits is the owner by assignment of all right, title, and interest
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in the D’551 Patent. A true and correct copy of the D’551 Patent is attached hereto as
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“Exhibit D” and is hereby incorporated by reference. Representative images of the
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protected design claimed in the D’551 Patent are shown below:
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85. Glam and Glits manufactures and sells gel and nail polish products
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under the mark, KIARA SKY®, which bears a distinctive trade dress in the overall
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design of the gel and nail polish bottles (“KIARA SKY® Bottle Trade Dress”). The
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KIARA SKY® Bottle Trade Dress is not functional. An example of two Glam and
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Glits KIARA SKY products bearing the distinctive KIARA SKY® Bottle Trade
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Dress is depicted below and in the image attached as “Exhibit E.”
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1 86. As a result of Glam and Glits’ widespread use and display of the
2 KIARA SKY® Bottle Trade Dress in association with its gel and nail polish
3 products, (a) potential purchasers have come to recognize and identify nail products
4 bearing the KIARA SKY® Bottle Trade Dress as emanating from Glam and Glits,
5 (b) potential purchasers recognize that products bearing the KIARA SKY® Bottle
6 Trade Dress constitute high quality products that conform to the specifications––
7 created by Glam and Glits, and (c) the KIARA SKY® Bottle Trade Dress has
8 established strong secondary meaning and extensive goodwill.
9 The Prior Lawsuit, the Settlement Agreement
10 and Infringing Products Prohibited Thereafter
11 87. On or about July 8, 2016, Plaintiff filed the Prior Lawsuit in this judicial
12 district.
13 88. The Prior Lawsuit asserted that, inter alia, Prior Defendants willfully
14 infringed the D’737 Patent and willfully infringed the KIARA SKY® Bottle Trade
15 Dress.
16 89. Prior Defendants consented to personal jurisdiction and venue in this
17 judicial district.
18 90. Prior Defendants answered the complaint in the Prior Lawsuit by
19 asserting, inter alia, defenses of non-infringement and invalidity and by filing
20 counterclaims seeking declaratory judgment that the D’737 Patent was invalid and
21 that the KIARA SKY® Bottle Trade Dress was not distinctive and was functional.
22 91. In the Prior Lawsuit, the accused products were the “Sky Match”
23 products. An example of these prior accused products are shown in the photograph
24 below:
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16 92. The Prior Lawsuit was resolved by execution of the Settlement
17 Agreement (EXH. A).
18 93. By executing the Settlement Agreement, the Prior Defendants agreed to
19 cease sales of the “Sky Match” products, subject to a limited duration sell-off period,
20 and further agreed to:
21 “b. stop making (or having made), using,
22 selling, offering for sale or importing any
23 combination bottle-and-cap that, in the eye of
24 an ordinary observer, is substantially similar to
25 the design claimed in the D’737 Patent; and
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“c. stop selling, offering for sale, marketing,
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promoting or advertising any combination
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1 bottle-and-cap that infringes the KIARA SKY®

2 bottle trade dress or that bears a trade dress that
3 is likely to confuse consumers with the KIARA
4 SKY® bottle trade dress.”
5 (EXH. A, ¶ 1(b)(c).)
6 94. By executing the Settlement Agreement, Prior Defendants also agreed
7 that:
8 “For any and all future products, Defendants
9 shall use a cap that is different from the current
10 SKY MATCH cap, and a bottle that is different
11 from the current SKY MATCH bottle. Such
12 new bottle and cap designs shall not infringe
13 the D’737 patent or the KIARA SKY® bottle
14 trade dress.”
15 (EXH.A, ¶ 2.)
16 95. By executing the Settlement Agreement, Prior Defendants also agreed
17 that:
18 “For a period of one (1) year from the Effective
19 Date of this Agreement, Defendants Sky
20 Beauty and ISS will provide Glam and Glits
21 with images of the proposed new bottle and
22 proposed new cap at least thirty (30) days prior
23 to making, using, selling, offering for sale,
24 importing, marketing, advertising or otherwise
25 promoting a new nail polish, gel polish, or other
26 nail product that is bottled (hereinafter
27 “Defendants’ New Design Product”).
28 Defendants Sky Beauty and ISS shall not make,
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1 use, sell, offer for sale, import, market,

2 advertise or promote Defendants’ New Design
3 Product without the prior approval of Plaintiff
4 Glam and Glits, of said Defendants’ New
5 Design.”
6 (EXH. A, ¶ 3.)
7 96. By executing the Settlement Agreement, Prior Defendants also:
8 “…hereby agree, acknowledge and admit that
9 the claim of the D‘737 patent is valid and
10 enforceable. Defendants, and each of them,
11 shall not take any further action to advocate or
12 assert that the claim of the D‘737 patent is
13 invalid or unenforceable.”
14 (EXH. A, ¶ 8.)
15 97. By executing the Settlement Agreement, Prior Defendants also:
16 “…hereby agree, acknowledge and admit that
17 the KIARA SKY® bottle trade dress is valid,
18 non-functional, and enforceable. Defendants,
19 and each of them, shall take no action to
20 advocate or assert that the KIARA SKY®
21 bottle trade dress is invalid, functional, or
22 unenforceable.”
23 (EXH. A, ¶ 10.)
24 98. Defendant iGel is bound by the Settlement Agreement.
25 99. The Bui Family Defendants, and each of them, are bound by the
27 100. The Defendant DOES 1–20 are bound by the Settlement Agreement.
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1 Defendant iGel’s Infringing Products

2 101. Without permission or consent from Plaintiff Glam and Glits,
3 Defendants are making, offering for sale, distributing, marketing, advertising and/or
4 selling an infringing two-step soak-off gel polish and a nail polish called “iGel.”
5 102. A photograph of samples of the infringing iGel products are shown
6 below:
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16
17
18
19 103. At no time prior to the date that Defendants began using their infringing
20 iGel bottle design did Defendants, or the Prior Defendants, “provide Glam and Glits
21 with images of the proposed new bottle and proposed new cap at least thirty (30)
22 days prior to making, using, selling, offering for sale, importing, marketing,
23 advertising or otherwise promoting a new nail polish, gel polish, or other nail
24 product that is bottled.”
25 104. Defendants did not begin using their infringing bottle design, the subject
26 bottle trade dress in connection with two-step gel polish, or any other nail product
27 until long after Plaintiff Glam and Glits began using both the KIARA SKY® mark
28 and its patented, distinctive, non-functional, and trade dress protected KIARA SKY
20
1 bottle design.
2 105. Defendants’ unauthorized use of the infringing bottle design is intended
3 to trade upon the goodwill and substantial recognition associated with Plaintiff Glam
4 and Glits and the patented, distinctive and non-functional trade-dress protected
5 KIARA SKY bottle design.
6 106. Defendants are using their infringing bottle design in an attempt to
7 associate their gel and nail polish products with Plaintiff Glam and Glits and the
8 KIARA SKY brand, to cause mistake or deception as to the source of Defendants’
9 gel and nail polish products, and/or to otherwise trade upon Plaintiff Glam and Glits’
10 valuable reputation and customer goodwill in the KIARA SKY brand identity.
11 107. Defendants’ use of their infringing iGel bottle design is designed to
12 cause confusion, mistake, or deception with respect to the authentic KIARA SKY®
13 products.
14 108. By virtue of the acts complained of herein, Defendant has created a
15 likelihood of injury to Plaintiff Glam and Glits’ business reputation, has caused a
16 strong likelihood of consumer and/or potential purchaser confusion, mistake, and
17 deception as to the source of or origin or relationship of Plaintiff Glam and Glits’ and
18 Defendants’ goods, has caused actual confusion, and has otherwise competed
19 unfairly with Plaintiff Glam and Glits by unlawfully trading on and using the
20 KIARA SKY Bottle Trade Dress without Glam and Glits’ permission or consent.
21 109. Defendants, and each of them, had actual knowledge of the D’737
22 Patent and the KIARA SKY Bottle Trade Dress prior to making, using, selling, or
23 offering to sell the infringing iGel products.
24 110. Therefore, the acts of infringement by Defendants, and each of them,
25 complained of herein with respect to the D’737 Patent and the KIARA SKY® Bottle
26 Trade Dress are willful and deliberate.
27 111. Plaintiff is informed, believes, and thereon alleges that Defendants were
28 aware of the D’551 Patent and the D’444 Patent.
21
1 112. Plaintiff is informed, believes, and thereon alleges that the acts of
2 infringement by Defendants complained of herein with respect to the D’444 Patent
3 and the D’551 Patent are willful and deliberate. Therefore, Plaintiff Glam and Glits
4 alleges that the acts of infringement with respect to the D’444 and D’551 Patents are
5 willful and deliberate.
6 113. Alternatively, Glam and Glits alleges that the acts of infringement by
7 Defendants complained of herein were taken with reckless disregard of Glam and
8 Glits’ intellectual property rights such that Defendants knew or should have known
9 that their actions constituted infringement of Glam and Glits’ intellectual property
10 rights. Defendants’ acts of infringement were not, and are not, consistent with the
11 standards of commerce for the professional nail products industry.
12 114. Glam and Glits has never licensed a third-party to use any of the
13 Patents-in-Suit.
14 115. Glam and Glits has never licensed a third-party to use the KIARA
15 SKY® Bottle Trade Dress.
16 116. Defendants’ acts complained of herein have caused Glam and Glits to
17 suffer irreparable injury to its business. Glam and Glits will suffer substantial loss of
18 goodwill and reputation unless and until Defendant is preliminarily and permanently
19 enjoined from its wrongful actions complained of herein. Glam and Glits has no
20 adequate remedy at law.
21 FIRST CLAIM FOR RELIEF
22 Breach of Contract for Settlement of Prior Lawsuit
23 (against all Defendants)
24 117. Glam and Glits repeats and re-alleges the allegations of the previous
25 paragraphs of this Complaint as if set forth fully herein.
26 118. On or about February 7, 2017, Plaintiff Glam and Glits entered into a
27 binding and enforceable contract with the Prior Defendants, which is attached hereto
28 as Exhibit A, and referred to herein as the Settlement Agreement.
22
1 119. Defendant iGel is a successor-in-interest to the Prior Defendants.

2 120. The Bui Family Defendants are each successors-in-interest to the Prior
3 Defendants.
4 121. The Bui Family Defendants are each third-party beneficiaries to the
6 122. Defendant iGel and the Bui Family Defendants, and each of them, are
7 bound by the terms of the Settlement Agreement.
8 123. The Defendants, and each of them, breached the Settlement Agreement
9 by making, using, selling, offering for sale and/or importing the iGel infringing
10 products.
11 124. On information and belief, the Defendants, and each of them, breached
12 the Settlement Agreement by not providing Plaintiff Glam and Glits with “images of
13 the proposed new bottle and proposed new cap at least thirty (30) days prior to
14 making, using, selling, offering for sale, importing, marketing, advertising or
15 otherwise promoting a new nail polish, gel polish, or other nail product that is
16 bottled.”
17 125. Glam and Glits is unaware of the date that Defendants first made, used,
18 sold, offered to sell, imported, marketed, advertised or otherwise promoted the
19 infringing iGel nail polish and gel polish.
20 126. On information and belief, any and all conditions precedent, to the
21 extent such exist, have been fulfilled by Plaintiff.
22 127. By Defendants’ breach of the Settlement Agreement, Plaintiff has been
23 denied its expected benefits of the Settlement Agreement, namely that Defendants
24 would cease unfairly competing with Plaintiff by infringing its design patent and
25 illegally trading-off of Plaintiffs’ goodwill embodied in the KIARA SKY® Bottle
26 Trade Dress.
27 128. Accordingly, Plaintiff is entitled to expectation damages in the amount
28 of Glam and Glits’ lost profit for every bottle of “iGel” nail polish and/or gel polish
23
1 sold by Defendants.
2 129. However, due to the aforesaid breach of contract, which relates to
3 intangible property rights, Glam and Glits has suffered great and irreparable injury,
4 for which Glam and Glits has no adequate remedy at law.
5 130. Defendants will continue to breach the Settlement Agreement by
6 directly and/or indirectly infringing Glam and Glits’ patent rights and by directly
7 infringing Glam and Glits’ trade dress rights, to the great and irreparable injury of
8 Glam and Glits, unless enjoined by this Court. Glam and Glits has no adequate
9 remedy at law.
10 131. Accordingly, Glam and Glits is entitled to both a preliminary and
11 permanent injunction against Defendants requiring specific performance of the
12 Settlement Agreement and thereby enjoining each of them from further acts of
13 infringement of the D’737 Patent and/or the KIARA SKY® Bottle Trade Dress.
14 SECOND CLAIM FOR RELIEF
15 Design Patent Infringement of the D’737 Patent, 35 U.S.C. § 271
17 132. Glam and Glits repeats and re-alleges the allegations of the preceding
19 133. This is a claim for patent infringement under 35 U.S.C. § 271.
20 134. Defendants, and each of them, through their agents, employees, and
21 servants knowingly, intentionally, and willfully have directly infringed—and
22 continue directly to infringe—the D’737 Patent by making, using, selling, offering
23 for sale, and/or importing products having a design that would appear to an ordinary
24 observer to be substantially similar to the claim of the D’737 Patent.
25 135. Defendants’ acts of infringement of the D’737 Patent were undertaken
26 without permission or license from Glam and Glits.
27 136. Defendants each had actual knowledge of Glam and Glits’ rights in the
28 design claimed in the D’737 Patent.
24
1 137. Defendants, and each of them, being bound by the Settlement

2 Agreement, have acknowledged the validity and enforceability of the D’737 Patent.
3 Accordingly, Defendants, and each of them, are estopped from contesting the
4 validity and/or enforceability of the D’737 Patent.
5 138. Glam and Glits and its iconic KIARA SKY bottle design are well-
6 known throughout the relevant industry, and Defendants’ SKY product is a nearly
7 identical copy of Glam and Glits’ KIARA SKY bottle design.
8 139. Accordingly, Defendants’ actions constitute willful and intentional
9 infringement of the D’737 Patent.
10 140. Defendants infringed the D’737 Patent with reckless disregard of Glam
11 and Glits’ patent rights. Defendants knew, or it was so obvious that Defendants
12 should have known, that their actions constituted infringement of the D’737 Patent.
13 Defendants’ acts of infringement of the D’737 Patent were not consistent with the
14 standards of commerce for their industry.
15 141. As a direct and proximate result of Defendants’ patent infringement,
16 Defendants have each derived and received gains, profits, and advantages in an
17 amount not presently known to Glam and Glits.
18 142. Pursuant to 35 U.S.C. § 284, Glam and Glits is entitled to damages for
19 Defendants’ infringing acts, in the amount of Glam and Glits’ lost profits, and in an
20 amount not less than a reasonable royalty, and treble actual damages together with
21 interests and costs as fixed by this Court.
22 143. Pursuant to 35 U.S.C. § 289, Glam and Glits is entitled to Defendants’
23 total profits from the sale of products that infringe Glam and Glits’ design patent
24 rights.
25 144. Based on the intentional, willful and malicious nature of the acts of
26 infringement alleged, Glam and Glits is entitled to a determination that this case is
27 exceptional.
28 145. Pursuant to 35 U.S.C. § 285, Glam and Glits is entitled to reasonable
25
1 attorneys’ fees for the necessity of bringing this claim.

2 146. Due to the aforesaid infringing acts, Glam and Glits has suffered great
3 and irreparable injury, for which Glam and Glits has no adequate remedy at law.
4 147. Defendants will continue to directly and/or indirectly infringe Glam and
5 Glits’ patent rights to the great and irreparable injury of Glam and Glits, unless
6 enjoined by this Court. Glam and Glits has no adequate remedy at law.
8 permanent injunction against Defendants enjoining each of them from further acts of
10 THIRD CLAIM FOR RELIEF
23 153. On information and belief, Defendants each had actual knowledge of
24 Glam and Glits’ rights in the design claimed in the D’444 Patent.
25 154. Glam and Glits and its iconic KIARA SKY bottle design are well-
26 known throughout the relevant industry, and Defendants’ SKY product is a nearly
27 identical copy of Glam and Glits’ KIARA SKY bottle design.
26

16 rights.
19 exceptional.
27

4 FOURTH CLAIM FOR RELIEF
17 170. On information and belief, Defendants each had actual knowledge of
18 Glam and Glits’ rights in the design claimed in the D’551 Patent.
19 171. Glam and Glits and its iconic KIARA SKY bottle applicator cap design
20 are well-known throughout the relevant industry, and Defendants’ SKY product is a
21 nearly identical copy of Glam and Glits’ KIARA SKY bottle design.
28

10 rights.
13 exceptional.
24 FIFTH CLAIM FOR RELIEF
25 Federal Trade Dress Infringement, 15 U.S.C. § 1125(a)
29
1 183. This is a claim for trade dress infringement under 15 U.S.C. § 1125(a).
2 184. As a result of the widespread use and display of Glam and Glits’
3 KIARA SKY® Bottle Trade Dress, the trade dress has acquired secondary meaning
4 to potential purchasers, in that potential purchasers have come to associate nail
5 polish and gel polish bottles bearing the design of the KIARA SKY® Bottle Trade
6 Dress with Glam and Glits.
7 185. The KIARA SKY® Bottle Trade Dress is not functional.
8 186. Defendants have, by way of the Settlement Agreement, acknowledged
9 the validity, non-functionality, and enforceability of the KIARA SKY® Bottle Trade
10 Dress.
11 187. Accordingly, Defendants are estopped from asserting that the KIARA
12 SKY Bottle Trade Dress is invalid, functional and/or unenforceable.
13 188. Subsequent to Glam and Glits’ use and adoption of the KIARA SKY®
14 Bottle Trade Dress, Defendants produced, advertised, and sold gel and nail polish
15 products that use a trade dress that is confusingly similar to the KIARA SKY®
16 Bottle Trade Dress.
17 189. Defendants’ acts of trade dress infringement were undertaken willfully
18 with full knowledge and with the express intent to cause confusion, and to mislead
19 and deceive the purchasing public.
21 Defendants have derived and received, and will continue to derive and receive, gains,
22 profits and advantages from Defendants’ trade dress infringement in an amount that
23 is not presently known to Glam and Glits. By reason of Defendants’ actions,
24 constituting trade dress infringement, Glam and Glits has been damaged and is
25 entitled to monetary relief in an amount to be determined at trial.
26 191. Due to Defendants’ actions, constituting trade dress infringement, Glam
27 and Glits has suffered and will continue to suffer great and irreparable injury, unless
28 such actions are restrained by this Court. Glam and Glits has no adequate remedy at
30
1 law.
4 infringement of the KIARA SKY® Bottle Trade Dress.
5 SIXTH CLAIM FOR RELIEF
6 California Unfair Competition
7 (Cal. Bus. and Prof. Code § 17200 et seq .)
9 193. Glam and Glits repeats and re-alleges the allegations of paragraphs 1–87
10 of this Complaint as if set forth fully herein.
11 194. This is a claim for unfair competition arising under CALIFORNIA
12 BUSINESS AND PROFESSIONS CODE § 17200 et seq.
13 195. Defendants’ acts of patent infringement and trade dress infringement
14 complained of herein constitute unfair competition with Glam and Glits under the
15 laws of the State of California, particularly under CALIFORNIA BUSINESS AND
16 PROFESSIONS CODE § 17200 et seq.
18 Defendants have derived and received, and will continue to derive and receive, gains,
19 profits and advantages from Defendants’ unfair competition in an amount that is not
20 presently known to Glam and Glits. By reason of Defendants’ wrongful acts as
21 alleged in this Complaint, Glam and Glits has been damaged and is entitled to
22 restitution.
23 197. By their actions, Defendants have injured and violated the rights of
24 Glam and Glits and has irreparably injured Glam and Glits, and such irreparable
25 injury will continue unless Defendant is enjoined by this Court. Glam and Glits has
26 no adequate remedy at law.
31
1 unfair competition.
2 REQUEST FOR RELIEF
3 WHEREFORE, Glam and Glits requests that the Court grant the following
4 relief:
5 A. A preliminary and permanent injunction enjoining Defendants, and each
6 of them, and their respective officers, directors, agents, servants,
7 employees, and attorneys, and those persons in active concert or
8 participation with Defendants, from infringing any of the Patents-in-Suit
9 in violation of 35 U.S.C. § 271.
10 B. A judgment that:
11 1. Defendants, and each of them, have infringed the D’737 Patent,
12 the D’444 Patent, and the D’551 Patent, and each of them, under
13 35 U.S.C. § 271;
14 2. Defendants’ infringement of the D’737 Patent was willful;
17 5. Awards to Plaintiff compensatory damages, including Plaintiff’s
18 lost profits due to the infringement, but not less than a reasonably
19 royalty; and/or awards to Plaintiff the Defendants’ total profits
20 from such infringement pursuant to 35 U.S.C. § 289;
21 6. Awards to Plaintiff treble damages and/or exemplary damages
22 because of Defendants’ willful conduct pursuant to 35 U.S.C. §
23 284;
24 7. Awards to Plaintiff its attorney fees, expenses and costs incurred
25 by Plaintiff in connection with this action pursuant to 35 U.S.C. §
26 285;
27 8. Awards to Plaintiff pre-judgment and post-judgment interest;
28 9. Adjudges that this is an exceptional case;
32
1 C. A preliminary and permanent injunction against Defendants, and each

2 of them, their officers, agents, servants, employees, representatives,
3 successors, and assigns, and all persons, firms, or corporations in active
4 concert or participation with each Defendant, enjoining them from
5 engaging in the following activities and from assisting or inducing,
6 directly or indirectly, others to engage in the following activities:
7 1. using Glam and Glits’ KIARA SKY® Bottle Trade Dress, or any
8 other trade dress that is confusingly similar to the Glam and Glits’
9 KIARA SKY® Bottle Trade Dress;
10 2. manufacturing, using, displaying, distributing, or selling any
11 goods that infringe any of the Glam and Glits’ KIARA SKY®
12 Bottle Trade Dress; or
13 3. unfairly competing further with Glam and Glits.
14 D. An order that Defendants, and each of them, file with the Court and
15 serve on Plaintiff within thirty (30) days after issuance of an injunction,
16 a report in writing and under oath setting forth in detail the manner and
17 form in which Defendant has complied with the injunction pursuant to
18 15 U.S.C. § 1116(a).
19 E. An order that Defendants, and each of them, and all others acting under
20 Defendants’ authority, shall deliver up for destruction all products,
21 literature, advertising, labels and other material in their possession
22 bearing or showing the infringing trade dress within (30) days after
23 issuance of an injunction pursuant to 15 U.S.C. § 1118.
24 F. A further judgment that:
25 1. Defendants’ infringement of Glam and Glits’ KIARA SKY®
26 Bottle Trade Dress was willful;
27 2. Defendants’ competed unfairly with Glam and Glits under 15
28 U.S.C. § 1125 and CALIFORNIA BUSINESS AND PROFESSIONS CODE
33
1 § 17200 et seq.;
2 3. Defendants, and each of them, are required to account to Glam
3 and Glits for any and all profits derived by their acts of trade
4 dress infringement and unfair competition complained of in this
5 Complaint;
6 4. Defendants pay compensatory, consequential, statutory and
7 punitive damages to be determined at trial pursuant to 15 U.S.C.
8 § 1117;
9 5. Defendants pay treble damages and/or exemplary damages
10 because of Defendants’ willful conduct pursuant to 15 U.S.C. §
11 1117;
12 6. Awarding to Plaintiff a disgorgement of Defendants’ wrongful
13 profits pursuant to CALIFORNIA BUSINESS AND PROFESSIONS CODE
14 § 17203 et seq.;
15 7. Awarding Plaintiff the costs of this civil action, including
16 reasonable attorneys’ fees; and
17 8. Awarding Plaintiff pre-judgment and post-judgment interest;
18 G. A further judgment and finding of fact that:
19 1. Defendant iGel is the successor-in-interest to the Prior
20 Defendants;
21 2. The Bui Family Defendants, and each of them, are the
22 successors-in-interest to the Prior Defendants;
23 3. Defendant iGel is a third-party beneficiary to the Settlement
24 Agreement;
25 4. The Bui Family Defendants, and each of them, are third-party
26 beneficiaries to the Settlement Agreement;
27 5. Defendant iGel is bound by the Settlement Agreement;
28 6. The Bui Family Defendants, and each of them, are the alter ego
34
1 of Defendant iGel;
2 7. The Bui Family Defendants are bound by the Settlement
3 Agreement;
4 8. Defendants, and each of them, breached the Settlement
5 Agreement;
6 9. Awarding compensatory damages, in an amount to be
7 determined, for Defendants’ breach of the Settlement Agreement;
8 10. An Order requiring the Defendants to specifically perform their
9 obligations under the Settlement Agreement; and
10 H. Such other and further relief as this Court may deem just and proper.
11
12 Respectfully submitted,
13 Date: January 15, 2020 LAPPLE UBELL IP LAW LLP

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By: /Matthew C. Lapple/
15 Matthew C. Lapple
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Attorneys for Plaintiff
17 GLAM AND GLITS NAIL DESIGN, INC.
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1 DEMAND FOR JURY TRIAL

2 Plaintiff Glam and Glits Nail Design, Inc., hereby demands a trial by jury on
3 all issues so triable.
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5 Respectfully submitted,
6 Date: January 15, 2020 LAPPLE UBELL IP LAW LLP

7
By: /Matthew C. Lapple/
8 Matthew C. Lapple
9
Attorneys for Plaintiff
10 GLAM AND GLITS NAIL DESIGN, INC.
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JURY DEMAND
Case 8:20-cv-00088 Document 1-1 Filed 01/15/20 Page 1 of 17 Page ID #:38
Exhibit A
Settlement Agreement and Release, Glam &
Glits Nail Design, Inc.-Ideal Salon Solutions,
LLC-Sky Beauty, LLC-Saigon Nail Supply,
Feb. 7, 2017
SETTLEMENT AGREEMENT AND RELEASE

This settlement agreement and release (hereinafter, “Agreement”) is entered
into as of the effective date (“Effective Date,” defined below) between Glam &
Glits Nail Design, Inc., a California corporation with its principal place of business
at 8700 Swigert Court, Suite 109-209, Bakersfield, California, 93311 (“Glam and
Glits” or “Plaintiff”), on the one hand, and Ideal Salon Solutions, LLC, a New
Jersey limited liability company with its principal place of business at 2360
Lakewood Road, Suite 3, Toms River, New Jersey, 08755 (“ISS”); Sky Beauty,
LLC, a New Jersey limited liability company with its principal place of business at
2360 Lakewood Road, Suite 3, Toms River, New Jersey, 08755 (“Sky Beauty”);
and Saigon Nail Supply, a sole proprietorship with its principal place of business at
9550 Bolsa Avenue, Westminster, California, 92683 (“Saigon Nail”) (collectively,
“Defendants”), on the other hand. Collectively, Glam & Glits, ISS, Sky Beauty
and Saigon Nail shall be referred to as the “Parties.”
Recitals
WHEREAS, on June 24, 2016, Sky Beauty filed a declaratory judgment

action against Glam & Glits alleging non-infringement and invalidity of Glam &
Glits’ U.S. Design Patent No. D758,737 (“the D‘737 patent”), non-infringement
and invalidity of Glam & Glits’ trade dress for its KIARA SKY® bottle, non-
infringement and invalidity of various trademarks related to KIARA SKY®, and
unlawful interference with prospective economic advantage, in an action styled,
Sky Beauty, LLC v. Glam and Glits Nail Design, Inc., DBA Kiara Sky Professional
Nails., in the United States District Court for the District of New Jersey, Case No.
3:16-CV-3729-FLW-LHG (“the New Jersey Lawsuit”); and
WHEREAS, on July 8, 2016, Glam & Glits filed an action against Sky
Beauty, ISS and Saigon Nail alleging infringement of Glam & Glits’ D‘737 Patent,
-1-
infringement of Glam & Glits’ trade dress for its KIARA SKY® bottle,
infringement the KIARA SKY® trademark Registration No. 4,913,675, and related
claims, in an action styled, Glam and Glits Nail Design, Inc. v. Sky Beauty, LLC,
et. al., in the United States District Court for the Central District of California,
Case No. SA-CV-16-1271-JLS-KES (“the California Lawsuit”); and
WHEREAS, Glam & Glits moved to dismiss or transfer the New Jersey
Lawsuit to the Central District of California; and
WHEREAS, Sky Beauty consented to the transfer of the New Jersey

Lawsuit to the Central District of California, and the New Jersey Lawsuit was
transferred and consolidated with the California Lawsuit, such that the California
Lawsuit is the only active litigation between the Parties; and
WHEREAS the Parties now desire to settle fully and finally all differences
between them pursuant to the terms and conditions of this Agreement, and to avoid
the costs, expenses and inconvenience of further litigation;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, and intending to be legally bound
hereby, the Parties agree as follows:
Agreed Terms
1. Defendants Shall Discontinue Accused Products. Subject to the Sell-Off

Period provision of Paragraph 11, below, Defendants immediately shall:
-2-
a. stop making, using, selling, offering for sale, or importing the

accused products under the “Sky Match” trademark or
confusingly similar trademark or brand;
b. stop making (or having made), using, selling, offering for sale
or importing any combination bottle-and-cap that, in the eye of
an ordinary observer, is substantially similar to the design
claimed in the D’737 Patent; and
c. stop selling, offering for sale, marketing, promoting or

advertising any combination bottle-and-cap that infringes the
KIARA SKY® bottle trade dress or that bears a trade dress that
is likely to confuse consumers with the KIARA SKY® bottle
trade dress.
2. Changed Bottle & Cap Design. For any and all future products,
Defendants shall use a cap that is different from the current SKY MATCH cap, and
a bottle that is different from the current SKY MATCH bottle. Such new bottle
and cap designs shall not infringe the D’737 patent or the KIARA SKY® bottle
trade dress.
3. Prior Approval of New Bottle & Cap Design. For a period of one (1)
year from the Effective Date of this Agreement, Defendants Sky Beauty and ISS
will provide Glam and Glits with images of the proposed new bottle and proposed
new cap at least thirty (30) days prior to making, using, selling, offering for sale,
importing, marketing, advertising or otherwise promoting a new nail polish, gel
polish, or other nail product that is bottled (hereinafter “Defendants’ New Design
Product”). Defendants Sky Beauty and ISS shall not make, use, sell, offer for sale,
import, market, advertise or promote Defendants’ New Design Product without the
prior approval of Plaintiff Glam and Glits, of said Defendants’ New Design
-3-
Product, which approval shall not be unreasonably withheld, and which shall be
given or withheld within fifteen (15) calendar days after said Defendants’ New
Design Product is provided to counsel for Glam and Glits.
4. Defendants Shall Discontinue Use of “SKY” term. Subject to the

Sell-Off Period of Paragraph 11 below, Defendants shall cease selling, offering for
sale marketing, promoting, or advertising goods that are marked or named with the
marks “SKY,” “SKY MATCH,” or “SKY BEAUTY,” or including any of these
marks or names, or any other mark or name that is likely to cause confusion
between the mark or name and the registered KIARA SKY® trademark.
5. Defendants Shall Cease Advertising & Shall takedown the Sky

Beauty Website. Immediately upon the expiration of the Sell-Off period set forth
below in Paragraph 11, Defendants shall:
a. stop advertising products under the “Sky Match” trademark;
b. take down their website at the URL

https://www.skybeautyusa.com/ and shall remove images of
products marked with the “Sky Match” trademark or brand
from any other websites owned or controlled by Defendants or
their agents.
The provisions of this Paragraph 5 shall be construed to be consistent with the Sell-
Off Period of Paragraph 11 below, in that the Sell-Off Period provision allows for
a limited time period for Defendants to offer for sale and/or sell existing inventory
and allows Defendants to promote such sales to distributors and customers.
6. Defendant Sky Beauty to Change Corporate Name. Within ninety

(90) days of the Effective Date, Defendant Sky Beauty will file papers with the
appropriate agency in the State of New Jersey and in any other states in which it is
-4-
registered to do business to change Defendant’s corporate name to one that does

not include the term “SKY” or “KS” or “Kiara.”
7. Surrender for Cancellation of Trademark Registration for “SKY

MATCH.” Within ten (10) days of the Effective Date, Defendant Sky Beauty will
file papers with the U.S. Trademark Office to surrender for cancellation the SKY
MATCH trademark Registration No. 5037969, and any other registrations or
pending applications for similar marks.
8. Patentability of D‘737 Patent. Defendants, and each of them, hereby

agree, acknowledge and admit that the claim of the D‘737 patent is valid and
enforceable. Defendants, and each of them, shall not take any further action to
advocate or assert that the claim of the D‘737 patent is invalid or unenforceable.
Further, subject to any requirements under law to respond to a subpoena or court
order, Defendants, and each of them, will not take any action to assist or facilitate a
third-party in any effort to invalidate the D’737 patent or to demonstrate that the
D’737 patent is unenforceable.
9. Validity of KIARA SKY® Trademark. Defendants, and each of them,

hereby agree, acknowledge and admit that the KIARA SKY® trademark,
Registration No. 4,913,675 is valid, non-functional, and enforceable. Defendants,
and each of them, shall take no action to advocate or assert that the KIARA SKY®
trademark is invalid, functional or unenforceable. Further, subject to any
requirements under law to respond to a subpoena or court order, Defendants, and
each of them, shall take no action to assist or facilitate a third-party in any effort to
invalidate the KIARA SKY® trademark or to demonstrate that the KIARA SKY®
trademark is functional or otherwise unenforceable.
10. Validity of KIARA SKY® Bottle trade dress. Defendants, and each of
them, hereby agree, acknowledge and admit that the KIARA SKY® bottle trade
-5-
dress is valid, non-functional, and enforceable. Defendants, and each of them,

shall take no action to advocate or assert that the KIARA SKY® bottle trade dress
is invalid, functional, or unenforceable. Further, subject to any requirements under
law to respond to a subpoena or court order, Defendants, and each of them, shall
take no action to assist or facilitate a third-party in any effort to invalidate the
KIARA SKY® bottle trade dress or to demonstrate that the KIARA SKY® bottle
trade dress is functional or otherwise unenforceable.
11. Sell-Off Period. For six (6) months after the Effective Date,
Defendants may continue to sell any existing inventory of the accused products, or
any products bearing the mark SKY MATCH (hereinafter the “Sell-Off Period”).
At the end of the Sell-Off Period, Defendants shall cease all sales and offers to sell
these products and shall destroy all (a) unsold inventory of the accused products;
and (b) all products bearing the mark SKY MATCH. During this Sell-Off Period,
Defendants may promote the sales or offers to sell the accused products or
products bearing the mark SKY MATCH. This Sell-Off Period expressly is
conditioned on the accuracy of Defendants’ representation that there are only about
a total of 200,000 bottles of the accused products bearing the mark SKY MATCH,
in Defendants’ existing inventory. Defendants agree that this representation is
material and survives the execution of the Agreement. Defendants shall not sell
the accused products or any products bearing the mark SKY MATCH to any entity
that is owned or controlled by any Defendant, or is the successor-in-interest to any
Defendant, or to any of Defendants’ owners, officers, directors or employees, or
any entity owned or controlled by any of Defendants’ owners, officers, directors or
employees, or to any family member or entity owned by any family member of any
of Defendants’ owners, officers, directors or employees, in an effort to circumvent
the requirement that any unsold accused products must be destroyed at the
conclusion of the Sell-Off Period. Within seven (7) months after the Effective
-6-
Date, Defendants shall provide Glam and Glits with an accounting, showing: (a)
the total number of accused products sold during the Sell-Off Period and the date
of such sales. If the amount of accused products sold by Defendants during the
Sell-Off Period is more than 220,000 bottles, this shall constitute a material breach
of this Agreement. At the same time as the accounting is provided, Defendants
Sky Beauty and ISS shall certify, in writing and under penalty of perjury, that the
accounting is accurate and that all unsold accused products bearing the SKY
MATCH mark have been destroyed.
12. No Sky Beauty Attendance at Cosmoprof 2017 / No Promotion or

Sales of Sky Match products at Cosmoprof 2017. Sky Beauty, including its
officers, directors, employees and owners, agree that Sky Beauty will not attend,
obtain a booth, or register any attendees under the Sky Beauty name at the
Cosmoprof North America Show, currently scheduled for July 9-11, 2017
(“Cosmoprof 2017”). Defendants further agree that, notwithstanding the
provisions of Paragraph 11 above, Defendants will not promote, advertise, show
case, offer to sell or sell any accused products bearing the SKY MATCH mark, or
any confusingly similar marks, at or during Cosmoprof 2017.
13. Joint Press Release. Upon execution of this Agreement, the Parties
will issue a joint press release in the form attached hereto as Exhibit A.
14. Dismissal of Lawsuit. Based on the mutual consideration exchanged

under this Agreement, the Parties agree to dismiss, with prejudice, all claims and
counter-claims in the California Lawsuit, and to the extent still applicable, the New
Jersey Lawsuit. The Parties agree to the language and content of the Joint
Stipulated Motion for Dismissal with Prejudice (“Dismissal Motion”) and the
Proposed Order of Dismissal (“Dismissal Order”) that are attached hereto as
Exhibits B and C respectively, and direct their respective counsel to cooperate in
-7-
good faith to execute and effectuate the filing of the Dismissal Motion within ten
(10) business days of the Effective Date.
15. No Payment. The Parties agree that no Party shall make any payment
of money to any other Party under this Agreement.
16. Each Party to Bear Own Attorneys’ Fees & Costs. The Parties
acknowledge that they are each solely responsible for paying any attorney fees and
costs they incurred; no Party and no attorney shall seek an award of attorneys’ fees
or costs from any other Party.
17. Mutual Releases. Sky Beauty, ISS and Saigon Nail Supply, on the
one hand, on behalf of themselves, their predecessors, successors, direct and
indirect parent companies, direct and indirect subsidiary companies, companies
under common control with any of the foregoing, affiliates and assigns, and their
past, present and future officers, directors, shareholders, interest holders, members,
partners, attorneys, agents, employees, managers, representatives, assigns, and
successors in interest, and all persons acting by, through, under, or in concert with
them, and each of them, and Glam and Glits, on the other hand, on behalf of itself,
its predecessors, successors, direct and indirect parent companies, direct and
indirect subsidiary companies, companies under common control with any of the
foregoing, affiliates and assigns, and their past, present and future officers,
directors, shareholders, interest holders, members, partners, attorneys, agents,
employees, managers, representatives, assigns, and successors in interest, and all
persons acting by, through, under, or in concert with them, and each of them,
hereby release and discharge each of the opposing Part(y)ies, together with their
predecessors, successors, direct and indirect parent companies, direct and indirect
subsidiary companies, companies under common control with any of the
foregoing, affiliates and assigns, and their past, present and future officers,
-8-
directors, shareholders, interest holders, members, partners, attorneys, agents,

employees, managers, representatives, assigns, and successors in interest, and all
persons acting by, through, under, or in concert with them, and each of them, from
all known and unknown charges, complaints, claims, grievances, liabilities,
obligations, promises, agreements, controversies, damages, actions, causes of
action, suits, rights, demands, costs, losses, debts, penalties, fees, expenses
(including attorneys’ fees and costs actually incurred), punitive damages, and
exceptional case damages, of any nature whatsoever, known or unknown, which
the releasing Party has, or may have had, against the opposing Part(y)ies, whether
or not apparent or yet to be discovered, which accrued (irrespective of any tolling
provisions) on or before the Effective Date.
The mutual releases in this Agreement include express, informed, knowing

and voluntary waivers and relinquishment of the matters released to the fullest
extent permitted by law. In this connection, the Parties acknowledge that they may
have sustained damages, losses, costs or expenses which are presently unknown
and unsuspected and that such damages, losses, costs or expenses as may have
been sustained may give rise to additional damages, losses, costs or expenses in the
future. The Parties hereto further acknowledge that they have negotiated this
Agreement taking into account presently unsuspected and unknown claims,
counterclaims, causes of action, damages, loses, costs and expenses, and the
Parties voluntarily and with full knowledge of its significance, expressly waive and
relinquish any and all rights they many have under any state or federal statute, rule
or common law principle, in law or equity, relating to limitations on general
releases. The Parties voluntarily and with full knowledge of its significance,
expressly waive and relinquish any and all rights they may have under any state or
federal statute, rule or common law principle, in law or equity, relating to
limitations on releases. Specifically, each Party hereby expressly waives any rights
-9-
it may have under California Civil Code § 1542 (or any other similar law in any
jurisdiction) which provides that: “A general release does not extend to claims
which the creditor does not know or suspect to exist in his favor at the time of
executing the release, which if known by him must have materially affected
his settlement with the debtor.”
18. No Admission of Liability. The Parties acknowledge that the terms of

this Agreement were agreed upon as a compromise and final settlement of the
Lawsuit and that no Party admits – nor may this Agreement be construed as an
admission of – liability that any Party has engaged in any wrongful, tortious or
unlawful activity.
19. No License. The Parties hereby agree and acknowledge that this
Agreement does not constitute a license under any patent, trademark, copyright,
trade secret or other intellectual property right of any other Party.
20. Defendants’ Representations and Warranties. Sky Beauty, ISS and

Saigon Nail Supply each respectively represent and warrant as of the Effective
Date that:
a. they each have the right to take the actions agreed to above;
b. they each have the right to grant the full scope of the release set
forth above;
c. none of them have assigned or otherwise transferred to any

other person any rights to the California Lawsuit, or the New
- 10 -
Jersey Lawsuit, that would prevent Sky Beauty, ISS and Saigon
Nail Supply from entering into this Agreement; and
d. the persons executing this Agreement on behalf of Sky Beauty,

ISS and Saigon Nail Supply, and each of them, have the full
right and authority to enter into this Agreement on their behalf
e. Defendants have only about 200,000 bottles of accused

products in their inventory.
21. Plaintiff’s Representations and Warranties. Glam and Glits

represents and warrants as of the Effective Date that: (a) it has the right to take the
actions agreed to above; (b) it has the right to grant the full scope of the release set
forth above; (c) it has not assigned or otherwise transferred to any other person any
rights to the California Lawsuit that would prevent Glam and Glits from entering
into this Agreement; and (d) the persons executing this Agreement on behalf of
Glam and Glits have the full right and authority to enter into this Agreement on its
behalf.
22. New or Different Facts: No Effect. Except as provided herein, this

Agreement shall be, and remain, in effect despite any alleged breach of this
Agreement or the discovery or existence of any new or additional fact, or any fact
different from that which any Party now knows or believes to be true.
Notwithstanding the foregoing, nothing in this Agreement shall be construed as, or
constitute, a release of any Party’s rights to enforce the terms of this Agreement.
23. Successors & Assigns. The Parties intend this Agreement to be

legally binding upon and inure to the benefit of each of them and their respective
successors, assigns, executors, administrators, heirs and estates. Moreover, the
persons and entities referred to in Section 16 above, but who are not Parties, are
- 11 -
third-party beneficiaries of this Agreement.
24. Governing Law. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and governed in all
respects in accordance with the laws of the United States of America and the State
of California, without reference to conflict of laws principles. In the event of any
dispute arising under this Agreement, the Parties agree to venue in the U.S. District
Court for the Central District of California, Southern Division.
25. Sophisticated Parties Represented by Counsel. The Parties each

acknowledge, accept, warrant and represent that (a) they are sophisticated parties
represented at all relevant times during the negotiation and execution of this
Agreement by counsel of their choice, and that they have executed this Agreement
with the consent and on the advice of such independent legal counsel, and (b) they
and their counsel have determined through independent investigation and robust,
arm’s length negotiation that the terms of this Agreement shall exclusively embody
and govern the subject matter of this Agreement.
26. Severability. If any provision of this Agreement is held to be illegal

or unenforceable, such provision shall be limited or eliminated to the minimum
extent necessary so that the remainder of this Agreement will continue in full force
and effect and be enforceable. The Parties agree to negotiate in good faith and to
enforce a substitute provision for any invalid or unenforceable provision that most
nearly achieves the intent of such provision.
27. Entire Agreement. The Parties acknowledge, accept, warrant and

represent that: (a) this Agreement is an enforceable agreement; (b) this Agreement
embodies the entire and only understanding of each of them with respect to the
settlement of the California and New Jersey Lawsuits, and merges, supersedes and
cancels all previous representations, warranties, assurances, conditions, definitions,
- 12 -
understanding or any other statement, express, implied or arising by operation of

law whether oral or written, whether by omission or commission between and
among them with respect to the settlement of the California and New Jersey
Lawsuits; (c) no oral explanation or oral information by any Party hereto shall alter
the meaning or interpretation of this Agreement; (d) the terms and conditions of
this Agreement may not be altered, modified, changed or amended except by a
written agreement executed by duly authorized representatives of all the Parties;
(e) the language of this Agreement has been approved by counsel for each of them,
and shall be construed as a whole according to its fair meaning; and (f) no Party
(nor their respective counsel) shall be deemed to be the draftsman of this
Agreement in any action which may hereafter arise with respect to the Agreement.
28. Construction / Language. Any rule of construction to the effect that

ambiguities are to be resolved against the drafting party will not be applied in the
construction or interpretation of this Agreement. As used in this Agreement, the
words “include” and “including” and variations thereof, will not be deemed to be
terms of limitation, but rather will be deemed to be followed by the words,
“without limitation.” The headings of this Agreement will not be referred to in
connection with the construction or interpretation of this Agreement. This
Agreement is in the English language only, which language shall be controlling in
all respects.
29. Effective Date. The terms of this Agreement will be effective on the
Effective Date, which shall be the date on which the Agreement has been signed by
the last of the respective representatives of Glam and Glits, Sky Beauty, ISS and
Saigon Nail Supply.
30. Counterparts. This Agreement may be executed in counterparts or

duplicate originals, both of which shall be regarded as one and the same
- 13 -
instrument, and which shall be the official and governing version in the
interpretation of this Agreement. This Agreement may be executed by facsimile
signatures or other electronic means and such signatures shall be deemed to bind
each Party as if they were original signature.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to

be signed below by their respective duly authorized officers.
Dated: SKY BEAUTY, LLC,

a New Jersey limited liability company
By:
Andrew Bui
Dated: IDEAL SALON SOLUTIONS, LLC,

By:
Andrew Bui
Dated: SAIGON NAIL SUPPLY

By:
Andrew Bui
Dated: GLAM AND GLITS NAIL DESIGN, INC.,

a California corporation
By:
Ana Katrina Tan
- 14 -
instrument, and which shall be the official and governing version in the
interpretation ofthis Agreement. This Agreement may be executed by facsimile
signatures or other electronic means and such signatures shall be deemed to bind
each Party as if they were original signature.
IN WITNESS WHEREOF,the Parties hereto have caused this Agreement to

be signed below by their respective duly authorized officers.
Dated: 02/07/2017 SKY BEAUTY,LLC,

By:
Andre ui
Dated: 02/07/2017 IDEAL SALON SOLUTIONS,LLC,

a New Jerseyjliu^ted liability company
By:
Andrew Bui
Dated: 02/07/2017 SAIGON NAIL SUPPLY
Bv:
Andrew Bui
Dated: GL/VM AND GLITS NAIL DESIGN,INC.,

a C:1 lifomia corporation
Ana Katrina Tan

Exhibit B
United States Design Patent No. D758,737
USOOD758737S
(12) United States Design Patent (10) Patent No.: US D758,737 S

Tan et al. (45) Date of Patent: ... Jun. 14, 2016
(54) NAIL POLISH BOTTLE OTHER PUBLICATIONS

(71) Applicants: Ana Katrina Tan, Bakersfield, CA CN 3520352, Registered Design, (Luo Yizhong), Apr. 19, 2006
(US); Khoa Duong, Bakersfield, CA online), retrieved on Sep. 5, 2015). Retrieved from the Design
(US) Database of the State Intellectual Property Office using the Internet:
http://epub.sipo.gov.cn.
(72) Inventors: Ana Katrina Tan, Bakersfield, CA <http://epub.sipo.gov.cn> (Continued)
(US); Khoa Duong, Bakersfield, CA O1
(US) Primary Examiner — Keli L Hill
(73) Assignee: Glam and Glits Nail Design, Inc., (74) Attorney, Agent, or Firm — Lapple Ubell IP Law, LLP:
Bakersfield, CA (US) Matthew Lapple
(**) Term: 14 Years 'Ee ornamental1 design
design for
f CIAIM lish bottl
a nail polish h and
bottle, as shown
(21) Appl. No. 29/499,385 described.
(22) Filed: Aug. 14, 2014 DESCRIPTION
(51) LOC (10) Cl. ................................................ 04-01
(52) U.S. Cl. FIG. 1 is a perspective view of a nail polish bottle:
USPC ............................................. D4/116; D9/503 FIG. 2 is a front view of the nail polish bottle of FIG. 1;
(58) Field of Classification Search FIG. 3 is a back view of the nail polish bottle of FIG. 1;
USPC ............ D4/116, 121, 127, 135; D9/436, 454, FIG. 4 is a right side view of the nail polish bottle of FIG. 1;
D9/500, 503, 504,516,520, 529,549,558, FIG. 5 is a left side view of the nail polish bottle of FIG. 1;
D9/723, 725; 132/74.5: 206/15.2, 15.3, FIG. 6 is a top view of the nail polish bottle of FIG. 1;
206/581, 823; 215/227, 228: 401/118-123, FIG. 7 is a bottom view of the nail polish bottle of FIG. 1;
401/125-127, 129, 130 FIG. 8 is an exploded perspective view of the nail polish bottle
CPC ....... A45D 29/00; A45D 29/11; A45D 29/12; of FIG. 1:
A45D 34/00; A45D 34/042: A45D 34/043; FIG.9 is a perspective view of a second embodiment of a nail
A45D 34/045; A45D 34/046; A45D 40/262: pistle, t view of the nail polish bottle of FIG. 9
A45D 40/265: A45D 40/267: A45D 2034f00: . 1U 1s a Iron V1ew of une na11 poi1sn bolue o ..y:
A45D 2034,002. A45D 22OO/10: A45D FIG. 11 is a back view of the nail polish bottle of FIG.9;
22OO/1009 A45D 2200/1018. B65D 5 1/32 FIG. 12 is a right side view of the nail polish bottle of FIG.9;
S lication fil f let hhi t FIG. 13 is a left side view of the nail polish bottle of FIG.9;
ee appl1cauon Ille Ior complete searcn n1Story. FIG. 14 is a top view of the nail polish bottle of FIG.9;
(56) References Cited FIG. 15 is a bottom view of the nail polish bottle of FIG. 9;
and,
U.S. PATENT DOCUMENTS FIG. 16 is an exploded perspective view of the nail polish
M bottle of FIG. 9.
D255,648 S 7, 1980 Bolter The broken lines that are immediately adjacent the surface
D259,252 S 5, 1981 Acker shading represent the bounds of the claim and form no part
(Continued) thereof. The broken lines showing the bottom surfaces in
FIGS. 7 and 15 illustrate portions of the bottle that form no
part of the claimed design while the broken line showing the
FOREIGN PATENT DOCUMENTS top surface of the cap in FIGS. 9-14 illustrates a portion of the
CN 3O262.7680 S * 11, 2013 bottle that forms no part of the second embodiment.
CN 302708377 S : 1/2014
FR 257.8403 A * 9, 1986 1 Claim, 10 Drawing Sheets
US D758,737 S
Page 2
(56) References Cited D732,893 S * 6/2015 Bronwasser et al. .......... D7/510

2003. O196672 A1* 10, 2003 Kirita et al. .......... A45D 40,267
U.S. PATENT DOCUMENTS 132,218
2010/0098479 A1 4/2010 Brantenaar et al. .... B65D 5 1/32
4,781,484. A * 1 1/1988 Goncalves ........... A45D 34,045 401 129
401 129 2011/0170936 A1* 7, 2011 Kim ..................... A45D 34,045
D363,374 S 10/1995 Arntsen 401 129
D363.375 S 10, 1995 Arntsen
D399.658 S 10, 1998 NoSella OTHER PUBLICATIONS
D429,154 S * 8/2000 Chang ............................ D9,503
6,966,716 B2 * 1 1/2005 Eg . . . . . . . . . . . . . . . . . . . A45D 34,045 Images of publicly available prior art Nail Polish Bottles, specifi.
401 126 cally: OPI Nail Lacquer; Essie Nail Gel and Polish: Nanacoco Nail
D548,084 S * 8/2007 Dittmer et al. ................. D9/504 Polish; Orly GelFX Gel Nail Lacquer; Orly Nail Lacquer (silver
BSE: s ck i39. NY a Ca.
o D9,500 dimpled cap); Orly Nail Lacquer (black ridged cap); Creative Nail
--- S6 s
D604,167 S 11/2009 Tran et al. Design (“CND) Shellac, LeChat Perfect Match; Color Club Nail
D677,569 S 3/2013 Lemaitre Lacquer; and Angelacq nail and gel lacquer.
D677,583 S 3, 2013 In
D730, 189 S 5, 2015 Haile * cited by examiner
U.S. Patent Jun. 14, 2016 Sheet 1 of 10 US D758,737 S
FIG. 1
FIG. 2 FIG. 3
FIG. 4 FIG. 5
FIG. 6
FIG. 7
FIG. 8

"... a f; ; ; ; ;
A
FIG. 10 FIG. 11
FIG. 12 FIG. 13
FIG 14
FIG 15
FIG. 16
Exhibit C
USOOD8364445
(12 ) Tan
United
et al.
States Design Patent ( 10) Patent No.: US D836 ,444 S
(45 ) Date of Patent: * * Dec . 25 , 2018
(54) NAIL POLISH BOTTLE Primary Examiner — Keli L Hill
(74 ) Attorney, Agent, or Firm — Lapple Ubell IP Law ,
( 71) Applicants :Ana Katrina Tan , Bakersfield , CA LLP ; Matthew C . Lapple
( US); Khoa Duong, Bakersfield, CA
(US ) (57) CLAIM
(72 ) Inventors: Ana Katrina Tan , Bakersfield , CA The ornamental design for a nail polish bottle , as shown and
( US ); Khoa Duong , Bakersfield, CA described .
(US ) DESCRIPTION
( 73 ) Assignee : GLAM AND GLITS NAIL DESIGN , FIG . 1 is a perspective view of a nail polish bottle ;
INC ., Bakersfield , CA (US ) FIG . 2 is a front view of the nail polish bottle of FIG . 1 ;
FIG . 3 is a back view of the nail polish bottle of FIG . 1 ;
(** ) Term : 15 Years FIG . 4 is a right side view of the nail polish bottle of FIG .
(21) Appl. No.: 29 /563,743 FIG . 5 is a left side view of the nail polish bottle of FIG . 1 ;
( 22) Filed : May 6 , 2016 FIG . 6 is a top view of the nail polish bottle of FIG . 1 ;
FIG . 7 is a bottom view of the nail polish bottle of FIG . 1 ;
Related U .S. Application Data FIG . 8 is an exploded perspective view of the nail polish
bottle of FIG . 1 ;
(63) Continuation of application No. 29/499 ,385 , filed on FIG . 9 is a perspective view of the nail polish bottle , shown
Aug. 14 , 2014 , now Pat. No. Des. 758 ,737. in an alternate environment;
(51 ) LOC (11) CI. .. ... 09 -01 FIG . 10 is a front view of the nail polish bottle of FIG . 9 ;
(52) U . S . CI. FIG . 11 is a back view of the nail polish bottle of FIG . 9 ;
USPC ............. 09/500; D4/ 116
. . .. .. . .. .. . FIG . 12 is a right side view of the nail polish bottle of FIG .
(58) Field of Classification Search
USPC ....... D9/434 , 435 , 444, 454 , 500 , 503 , 504 ; FIG . 13 is a left side view of the nail polish bottle of FIG .
D4/116 , 121 , 127 , 135 ; D28 /7 9;
(Continued ) FIG . 14 is a top view of the nail polish bottle of FIG . 9 ;
FIG . 15 is a bottom view of the nail polish bottle of FIG . 9 ;
(56 ) References Cited and ,
FIG . 16 is an exploded view of the nail polish bottle of FIG .
U . S . PATENT DOCUMENTS 9.
D316 , 034 S * 4 / 1991 DeGaetano D4 / 116 In the figures, portions drawn in broken lines do not form
D435 ,450 S * 12/2000 Eisenbarth D9 /500 any part of the claimed design . The broken lines showing the
D715 , 157 S * 10 /2014 In D9/691 bottom surfaces in FIGS. 7 and 15 illustrate portions of the
8 ,852,528 B2 * 10 /2014 Thomson . .............. B05B 11/00 bottle that form no part of the claimed design . The broken
422/505 lines showing the cap in FIGS. 1 - 6 and FIGS. 8 - 14 illustrate
(Continued ) portions of the nail polish bottle that form no part of the
claimed design . The broken lines showing the brush in
OTHER PUBLICATIONS FIGS. 8 and 16 illustrate portions of the nail polish bottle
that form no part of the claimed design .
Wayback Machine Roma International, ‘R7565 10ml bottle ', cap
tured by Wayback Machine Sep . 4 , 2015, 6p . ( Year: 2015 ) * 1 Claim , 10 Drawing Sheets
.
S
HE
US D836 ,444 S
Page 2
( 58 ) Field of Classification Search

CPC ... B65D 1 / 00 ; B65D 1 /02 ; B65D 1/ 12 ; B65D
1 / 14 ; B65D 1/40 ; B65D 1 /44 ; B65D
1 /023 ; B65D 1/ 0223 ; B65D 1 / 165; B65D
1 /238 ; B65D 1/ 246 ; B65D 1 / 253 ; B65D
7 /04; B65D 21/0209; B65D 21/0233 ;
B65D 25 / 00 ; B65D 25 /28 ; B65D
41 /0457 ; B65D 41/17 , B65D 53 /06 ;
B65D 75 /56 ; B65D 79 /005 ; B65D
2501/ 0036 ; B65D 2543/ 00074 ; B65D
2543/00083 ; B65D 2543 /00092 ; B65D
2543/00101; B65D 2543 /00111
See application file for complete search history.
(56 ) References Cited
U . S . PATENT DOCUMENTS
D730 ,189 S * 5 /2015 Haile .... D4 / 116
D746 ,140 S * 12/ 2015 Watabe .................. B05B 11 /00
D9/445
D758 ,737 S * 6 /2016 Tan ...................... A45D 34 /045
D4 /116
D770 ,287 S * 11/ 2016 Holaschke ........ D9 /453
D787 ,333 S * 5 / 2017 Ma A45D 34 /046
D4/ 116
2003/0196672 A1* 10 / 2003 Kirita ................. A45D 34 /046
132/218
2004 /0202502 A1* 10 /2004 Gueret .............. A45D 34 /045
401/ 129
2011/ 0170936 A1 * 7/ 2011 Kim ..................... A45D 34/ 045
401/ 129
* cited by examiner
U . S . Patent Dec. 25 , 2018 Sheet 1 of 10 US D836 ,444 S
-
154
-
es
V
-
.
FIG . 1
LAW
: :: :: :: :
FIG . 2 FIG . 3
-
-
w
.
-
w
FIG . 4 FIG . 5
FIG . 6
-- -
Si
1
FIG . 7
FIG . 8
M -
FIG . 9
mmmmmmmm
FIG . 10 FIG . 11
-
-
??????????????????????????????????????
'
-
'
-
'
-
'
-
FIG . 12 FIG . 13
FIG . 14
FIG . 15
U . S . Patent Dec . 25 , 2018 Sheet 10 of 10 US 1836 ,444 S
*
-
14
:33
telut
:
ili
:
:
-
:
-
:
:
- ww
FIG . 16
Exhibit D
DONNTET MUL ON USOOD8135518
(12 ) Tan
United
et al.
States Design Patent ( 10) Patent No.: US D813 ,551 S
(45) Date of Patent: * * Mar. 27 , 2018
(54 ) NAIL POLISH BOTTLE APPLICATOR CAP OTHER PUBLICATIONS
( 71) Applicants :Ana Katrina Tan , Bakersfield , CA Images of Publicly -Available Prior Art Nail Polish Bottles, Specifi
( US); Khoa Duong , Bakersfield, CA cally : OPI Nail Lacquer; Essie Nail Gel and Polish ; Nanacoco Nail
(US ) Polish ; Orly GelFX Gel Nail Lacquer; Orly Nail Lacquer (silver
dimpled cap ); Orly Nail Lacquer (black ridged cap ); Creative Nail
(72) Inventors : Ana Katrina Tan , Bakersfield , CA Design (“ CND ” ) Shellac ; LeChat Perfect Match ; Color Club Nail
( US ); Khoa Duong, Bakersfield, CA Lacquer; and Angelacq Nail and Gel Lacquer .
(US)
Primary Examiner — Keli L Hill
(73) Assignee : Glam and Glits Nail Design , Inc ., (74 ) Attorney, Agent, or Firm — Lapple Ubell IP Law ,
Bakersfield , CA (US ) LLP ; Matthew C . Lapple
(* * ) Term : 15 Years
(21) Appl. No.: 29 /593,584 (57 ) CLAIM
@ The ornamental design for a nail polish bottle applicator cap ,
(22 ) Filed : Feb . 10 , 2017 as shown and described .
Related U .S . Application Data
(63 ) Continuation of application No. 29 / 563,743, filed on
@ DESCRIPTION
May 6 , 2016 , which is a continuation of application
(Continued ) FIG . 1 is a perspective view of a nail polish bottle applicator
(51) LOC ( 11) CI. ............. 04 -01 cap ;
(52 ) U . S . CI. FIG . 2 is a front view of the nail polish bottle applicator cap
USPC .. .. .. ..... D4/116; D28/ 7; D9/ 454 of FIG . 1 ;
(58 ) Field of Classification Search FIG . 3 is a back view of the nail polish bottle applicator cap
USPC ................ D9/434 , 435 , 444 , 652 , 900 , 454 ; of FIG . 1 ;
215 /381– 385; 220 /660 , 669, 675 ; FIG . 4 is a right side view of the nail polish bottle applicator
D28 / 7 , 57, 59; D4 /116 , 121, 127 , 135 cap of FIG . 1 ;
CPC ... B65D 1 /00 ; B65D 1/02, B65D 1/ 12 ; B65D FIG . 5 is a left side view of the nail polish bottle applicator
1 /14 ; B65D 1 /40 ; B65D 1 / 44 ; B65D cap of FIG . 1 ;
1 /023 ; B65D 1/ 0223 ; B65D 1 / 165; B65D FIG . 6 is a top view of the nail polish bottle applicator cap
1/ 238 ; B65D 1/ 246 ; B65D 1/ 253 ; B65D of FIG . 1 ;
7 /04 ; FIG . 7 is a bottom view of the nail polish bottle applicator
(Continued ) cap of FIG . 1; and ,
FIG . 8 is an exploded perspective view of the nail polish
References Cited bottle applicator cap of FIG . 1.
(56 ) In the figures, portions drawn in broken lines do not form
U . S . PATENT DOCUMENTS any part of the claimed design . The broken lines showing the
bottle in FIGS. 1 -8 illustrate portions of the nail polish bottle
3 ,337, 901 A 8/ 1967 Schefer et al. that form no part of the claimed design .
4 , 189 ,245 A 2 / 1980 Bennett
(Continued ) 1 Claim , 5 Drawing Sheets
1 [
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US D813 ,551 S
Page 2
Related U .S . Application Data D415 ,319 S * 10 / 1999 Bakic .....

D469, 356 S 1/ 2003 Vo
D28 / 76
No. 29/499,385, filed on Aug . 14 , 2014 , now Pat . No. D486 ,735
D487,016
S * 2 /2004
S * 2 /2004
DeBiasse ............. D9/444
DeBiasse ....................... D9/444
Des . 758 ,737 . 6 , 966 ,716 B2 11/ 2005 Pink
( 58 ) Field of Classification Search D542 ,658 S * 5 /2007 Larson .......... D9/ 500
CPC ............ B65D 21/0209; B65D 21 /0233 ; B65D 7 ,311 ,457 B2 12 /2007 Pink
25 / 00 ; B65D 25 /28 ; B65D 41/0457 ; D561,027 S 2 / 2008 Nguyen
B65D 41/ 17 , B65D 53/06 ; B65D 75 /56 ; 7 ,524 ,122 B2 * 4 / 2009 Pink .. . . .. . A45D 34 /045
B65D 79 /005 ; B65D 2501 /0036 ; B65D 401/ 126
D604, 167 S 11/ 2009 Tran et al.
2543/ 00064; B65D 2543 / 00074 ; B65D D695 ,121 S 12 /2013 Seo
2543 /00083; B65D 2543/00092, B65D D701, 124 S * 3 /2014 O 'Hara D98624
2543 /00101 ; B65D 2543 / 00111 D730 ,189 S * 5 /2015 Haile ....... D4/ 116
See application file for complete search history. D756 , 779 S * 5 / 2016 Kang ............ D9/454
D758 ,737 S * 6 / 2016 Tan ..... D4 / 116
D770 ,284 S 11/ 2016 Luu et al .
(56 ) References Cited D770, 285 S 11/ 2016 Luu et al.
D784 ,023 S * 4 /2017 Huang . . . . . . .. . D4 / 116
U .S . PATENT DOCUMENTS 2003/0196672 A1* 10 /2003 Kirita ................... A45D 40 / 267
132 /218
D316 ,034 S 4 / 1991 DeGaetano 2008/ 0041407 A1 * 2/ 2008 Kearney .............. A45D 40 / 265
D330 ,859 S 11/ 1992 Schaeffer 132 /218
D365, 889 S * 1/ 1996 Kim .. D27 / 147
D379 ,764 S 6 / 1997 Litton * cited by examiner
U . S . Patent Mar . 27, 2018 Sheet 1 of 5 US D813,551 S
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Exhibit E
KIARA SKY Bottle Trade Dress

Glam and Glits Nail Design v. Igel Beauty - Complaint

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Case 8:20-cv-00088 Document 1 Filed 01/15/20 Page 1 of 37 Page ID #:1

1 MATTHEW C. LAPPLE (Cal. Bar No. 193546)

10 FOR THE CENTRAL DISTRICT OF CALIFORNIA

1 (a) a binding acknowledgment of the validity and enforceability of

1 12. Finally, the Settlement Agreement provided Prior Defendants a

1 Trade Dress and engage in unfair competition in violation of 15

1 each of the Prior Defendants.

1 Defendants because, as pleaded herein, each Defendant:

1 bottle-and-cap that infringes the KIARA SKY®

1 use, sell, offer for sale, import, market,

1 Defendant iGel’s Infringing Products

1 119. Defendant iGel is a successor-in-interest to the Prior Defendants.

1 137. Defendants, and each of them, being bound by the Settlement

1 attorneys’ fees for the necessity of bringing this claim.

1 infringement of the D’444 Patent.

1 infringement of the D’444 Patent.

1 174. As a direct and proximate result of Defendants’ patent infringement,

1 C. A preliminary and permanent injunction against Defendants, and each

13 Date: January 15, 2020 LAPPLE UBELL IP LAW LLP

1 DEMAND FOR JURY TRIAL

6 Date: January 15, 2020 LAPPLE UBELL IP LAW LLP

SETTLEMENT AGREEMENT AND RELEASE

WHEREAS, on June 24, 2016, Sky Beauty filed a declaratory judgment

WHEREAS, Sky Beauty consented to the transfer of the New Jersey

1. Defendants Shall Discontinue Accused Products. Subject to the Sell-Off

a. stop making, using, selling, offering for sale, or importing the

c. stop selling, offering for sale, marketing, promoting or

4. Defendants Shall Discontinue Use of “SKY” term. Subject to the

5. Defendants Shall Cease Advertising & Shall takedown the Sky

a. stop advertising products under the “Sky Match” trademark;

b. take down their website at the URL

6. Defendant Sky Beauty to Change Corporate Name. Within ninety

registered to do business to change Defendant’s corporate name to one that does

7. Surrender for Cancellation of Trademark Registration for “SKY

8. Patentability of D‘737 Patent. Defendants, and each of them, hereby

9. Validity of KIARA SKY® Trademark. Defendants, and each of them,

dress is valid, non-functional, and enforceable. Defendants, and each of them,

12. No Sky Beauty Attendance at Cosmoprof 2017 / No Promotion or

14. Dismissal of Lawsuit. Based on the mutual consideration exchanged

directors, shareholders, interest holders, members, partners, attorneys, agents,

The mutual releases in this Agreement include express, informed, knowing

18. No Admission of Liability. The Parties acknowledge that the terms of

20. Defendants’ Representations and Warranties. Sky Beauty, ISS and

c. none of them have assigned or otherwise transferred to any

d. the persons executing this Agreement on behalf of Sky Beauty,

e. Defendants have only about 200,000 bottles of accused

21. Plaintiff’s Representations and Warranties. Glam and Glits

22. New or Different Facts: No Effect. Except as provided herein, this

23. Successors & Assigns. The Parties intend this Agreement to be

third-party beneficiaries of this Agreement.

25. Sophisticated Parties Represented by Counsel. The Parties each

26. Severability. If any provision of this Agreement is held to be illegal

27. Entire Agreement. The Parties acknowledge, accept, warrant and

understanding or any other statement, express, implied or arising by operation of

28. Construction / Language. Any rule of construction to the effect that

30. Counterparts. This Agreement may be executed in counterparts or

IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to

Dated: SKY BEAUTY, LLC,

Dated: IDEAL SALON SOLUTIONS, LLC,

Dated: SAIGON NAIL SUPPLY

Dated: GLAM AND GLITS NAIL DESIGN, INC.,

IN WITNESS WHEREOF,the Parties hereto have caused this Agreement to

Dated: 02/07/2017 SKY BEAUTY,LLC,