Luxottica Group v. YesStyle - Com - Complaint

Case: 1:19-cv-02599 Document #: 1 Filed: 04/17/19 Page 1 of 30 PageID #:1
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
LUXOTTICA GROUP S.p.A.

and OAKLEY, INC., Case No. 19-cv-02599
Plaintiffs, JURY TRIAL DEMANDED
v.
YESSTYLE.COM LIMITED,
Defendant.
COMPLAINT
Plaintiffs Luxottica Group S.p.A. (“Luxottica”) and Oakley, Inc. (“Oakley”) (together,
“Plaintiffs”) hereby bring the present action against Defendant YesStyle.com Limited (“YesStyle”
or “Defendant”) and allege as follows:
I. INTRODUCTION
1. This action has been filed by Plaintiffs to address Defendant’s selling and offering
for sale of sunglasses or other products featuring infringements and/or counterfeits of Plaintiffs’
Luxottica and Ray-Ban trademarks (the “Infringing Ray-Ban Products”) and sunglasses or other
products featuring infringements and/or counterfeits of Plaintiffs’ Oakley trademarks and/or
patented designs (the “Infringing Oakley Products”) (collectively referred to herein as the
“Infringing Products”) through Defendant’s website at yesstyle.com. Plaintiffs seek to address
Defendant’s infringement and/or counterfeiting of their registered trademarks and patented
designs, as well as to protect unknowing consumers from purchasing low-quality Infringing
Products over the Internet. Plaintiffs have been and continue to be irreparably damaged through
consumer confusion, dilution, and tarnishment of their valuable trademarks and infringement of
their patented designs as a result of Defendant’s actions and seek injunctive and monetary relief.
II. JURISDICTION AND VENUE
2. This Court has original subject matter jurisdiction over the claims in this action
pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051, et seq., the Patent Act, 35 U.S.C.
§ 1, et seq., 28 U.S.C. § 1338(a) and (b), and 28 U.S.C. § 1331. This Court has jurisdiction over
the claims in this action that arise under the laws of the State of Illinois pursuant to 28 U.S.C. §
1367(a), because the state law claims are so related to the federal claims that they form part of the
same case or controversy and derive from a common nucleus of operative facts.
3. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may
properly exercise personal jurisdiction over Defendant by virtue of the following facts:
a) Defendant directly targets business activities toward consumers in Illinois and causes
harm to Plaintiffs’ business within this Judicial District. Defendant has targeted sales
to Illinois residents by operating a fully interactive and commercial website at
yesstyle.com that offers to sell and has sold Infringing Products to residents of Illinois.
Defendant is committing tortious acts in Illinois, is engaging in interstate commerce,
and has wrongfully caused Plaintiffs substantial injury in the State of Illinois.
b) Defendant works with global couriers such as DHL and EMS for international
deliveries to consumers in the United States, including Illinois.
c) Upon information and belief, thousands of web users from the United States, including
from the State of Illinois, visit yesstyle.com every month.
III. THE PARTIES
Plaintiff Luxottica
4. Luxottica is a corporation duly organized under the laws of Italy with its principal
place of business in Milan, Italy and an office located at 4000 Luxottica Place, Mason, Ohio 45040-
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8114. Luxottica is, in part, engaged in the business of producing, manufacturing and distributing
throughout the world, including within this judicial district, premium, luxury and sports eyewear
products under federally registered trademarks, including, but not limited to, the RAY-BAN®
family of marks and the LUXOTTICA® family of marks.
5. Products bearing Luxottica’s famous and federally registered trademarks
(collectively, the “Luxottica Products”) are known by the purchasing public for their high quality
and novel designs. Luxottica Products have become enormously popular and even iconic, driven
by the brand’s arduous quality standards and innovative design. Genuine Luxottica Products are
instantly recognizable as such, and products bearing Luxottica’s trademarks (collectively, the
“Luxottica Trademarks”) represent some of the most recognizable and high quality eyewear items
in the world. In the United States and around the world, the Luxottica brands have come to
symbolize high quality, and Luxottica Products are among the most recognizable eyewear in the
world. Products of Luxottica’s many brands (including the RAY-BAN® brand) are distributed
and sold to consumers through retailers throughout the United States, including through authorized
retailers in Illinois such as Sunglass Hut and high-end department stores, and through the official
websites of the Luxottica brands.
6. Several of the Luxottica Trademarks are registered with the United States Patent
and Trademark Office, a non-exclusive list of which is included below.
Registration Number Trademark Goods and Services
1,254,409 LUXOTTICA For: Eyeglasses, sunglasses, templates

and eyeglass frames in class 9.
1,511,615 For: Eyeglasses, sunglasses, temples

and eyeglass frames in class 9.
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4,137,447 For: Advertising; business

management; business administration;
office functions; retail and wholesale
store services, except transport,
featuring spectacles, lenses for
spectacles, frames for spectacles,
cases and holders for spectacles,
goggles, earstems, supports and
displays for spectacles, chains for
eyeglasses, contact lenses and contact
lenses cases; and online retail and
wholesale store services featuring
spectacles, lenses for spectacles,
frames for spectacles, cases and
holders for spectacles, goggles,
earstems, supports and displays for
spectacles, chains for eyeglasses,
contact lenses and contact lenses cases
in class 35.
7. The above U.S. registrations for the Luxottica Trademarks are valid, subsisting, in
full force and effect, and are incontestable pursuant to 15 U.S.C. § 1065. Incontestable status
under 15 U.S.C. § 1065 provides that the registrations for the Luxottica Trademarks are conclusive
evidence of the validity of the Luxottica Trademarks and of the registrations of the Luxottica
Trademarks, of Luxottica’s ownership of the Luxottica Trademarks, and of Luxottica’s exclusive
right to use the Luxottica Trademarks in commerce. 15 U.S.C. §§ 1115(b), 1065. True and correct
copies of the United States Registration Certificates for the above-listed Luxottica Trademarks are
attached hereto as Exhibit 1.
8. The Luxottica Trademarks are distinctive when applied to the Luxottica Products,
signifying to the purchaser that the products come from Luxottica and are manufactured to
Luxottica’s quality standards. Whether Luxottica manufactures the products itself or contracts
with others to do so, Luxottica has ensured that products bearing the Luxottica Trademarks are
manufactured to the highest quality standards.
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9. The Luxottica Trademarks are famous marks, as that term is used in 15 U.S.C. §
1125(c)(1), and have been continuously used and never abandoned. The innovative marketing and
product designs of the Luxottica Products have enabled the Luxottica brands to achieve widespread
recognition and fame and have made the Luxottica Trademarks some of the most well-known
marks in the eyewear industry. The widespread fame, outstanding reputation, and significant
goodwill associated with the Luxottica brands have made the Luxottica Trademarks valuable
assets of Luxottica.
10. Luxottica has expended substantial time, money, and other resources in advertising
and promoting the Luxottica Trademarks. In fact, Luxottica has expended millions of dollars
annually in advertising, promoting and marketing featuring the Luxottica Trademarks. Luxottica
Products have also been the subject of extensive unsolicited publicity resulting from their high-
quality, innovative designs. As a result, products bearing the Luxottica Trademarks are widely
recognized and exclusively associated by consumers, the public, and the trade as being high-
quality products sourced from Luxottica. Luxottica Products have become among the most
popular of their kind in the U.S. and the world. The Luxottica Trademarks have achieved
tremendous fame and recognition which has only added to the inherent distinctiveness of the
marks. As such, the goodwill associated with the Luxottica Trademarks is of incalculable and
inestimable value to Luxottica.
11. For generations, Luxottica’s RAY-BAN® brand has been the undisputed world
leader in the field of sun and prescription eyewear products, including those which prominently
display the famous, internationally recognized, and federally registered Ray-Ban trademarks
(collectively, the “Ray-Ban Products”).
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12. Ray-Ban Products have become enormously popular and even iconic, driven by the
brand’s arduous quality standards and innovative design. Among the purchasing public, genuine
Ray-Ban Products are instantly recognizable as such. In the United States and around the world,
the RAY-BAN® brand has come to symbolize high quality, and Ray-Ban Products are among the
most recognizable eyewear in the world. Ray-Ban Products are distributed and sold to consumers
through retailers throughout the United States, including through authorized retailers in Illinois
such as Sunglass Hut and high-end department stores, and through the official Ray-Ban.com
website, which was launched in 1995 and began e-commerce sales in 2009.
13. Luxottica and its predecessors began using the Ray-Ban trademarks in 1938 and
have continuously sold eyewear under the Ray-Ban and other trademarks (collectively, the “Ray-
Ban Trademarks”). As a result of this long-standing use, strong common law trademark rights
have amassed in the Ray-Ban Trademarks. Luxottica’s use of the marks has also built substantial
goodwill in and to the Ray-Ban Trademarks. The Ray-Ban Trademarks are famous marks and
valuable assets of Luxottica. Ray-Ban Products typically include at least one of the registered
Ray-Ban Trademarks.
14. Several of the Ray-Ban Trademarks are registered with the United States Patent
and Trademark Office, a non-exclusive list of which is included below.
Registration Number Trademark Goods and Services
1,080,886 RAY-BAN For: Ophthalmic products and

accessories, namely, sunglasses;
eyeglasses; spectacles; lenses and
frames for sunglasses, eyeglasses, and
spectacles in class 9.
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650,499 For: Sun glasses, shooting glasses, and

ophthalmic lenses in class 9.
1,093,658 For: Ophthalmic products and

accessories, namely, sunglasses;
eyeglasses; spectacles; lenses and
frames for sunglasses, eyeglasses,
spectacles; and cases and other
protective covers for sunglasses,
eyeglasses, and spectacles in class 9.
1,320,460 For: Sunglasses and carrying cases

therefor, in class 9.
3,522,603 For: Sunglasses, eyeglasses, lenses for

eyeglasses, eyeglasses frames, cases
for eyeglasses, in class 9.
15. The above U.S. registrations for the Ray-Ban Trademarks are valid, subsisting, in
full force and effect, and are incontestable pursuant to 15 U.S.C. § 1065. Incontestable status
under 15 U.S.C. § 1065 provides that the registrations for the Ray-Ban Trademarks are conclusive
evidence of the validity of the Ray-Ban Trademarks and of the registrations of the Ray-Ban
Trademarks, of Luxottica’s ownership of the Ray-Ban Trademarks, and of Luxottica’s exclusive
right to use the Ray-Ban Trademarks in commerce. 15 U.S.C. §§ 1115(b), 1065. True and correct
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copies of the United States Registration Certificates for the above-listed Ray-Ban Trademarks are
attached hereto as Exhibit 2.
16. The Ray-Ban Trademarks are distinctive when applied to the Ray-Ban Products,
signifying to the purchaser that the products come from Luxottica and are manufactured to
Luxottica’s quality standards. Whether Luxottica manufactures the products itself or contracts
with others to do so, Luxottica has ensured that products bearing the Ray-Ban Trademarks are
manufactured to the highest quality standards.
17. The Ray-Ban Trademarks are famous marks, as that term is used in 15 U.S.C. §
1125(c)(1), and have been continuously used and never abandoned. The innovative marketing and
product designs of the Ray-Ban Products have enabled the RAY-BAN® brand to achieve
widespread recognition and fame and have made the Ray-Ban Trademarks some of the most well-
known marks in the eyewear industry. The widespread fame, outstanding reputation, and
significant goodwill associated with the RAY-BAN® brand have made the Ray-Ban Trademarks
valuable assets of Luxottica.
18. Luxottica has expended substantial time, money, and other resources in advertising
and promoting the Ray-Ban Trademarks. In fact, Luxottica has expended millions of dollars
annually in advertising, promoting and marketing featuring the Ray-Ban Trademarks. Ray-Ban
Products have also been the subject of extensive unsolicited publicity resulting from their high-
quality, innovative designs. As a result, products bearing the Ray-Ban Trademarks are widely
recognized and exclusively associated by consumers, the public, and the trade as being high-
quality products sourced from Luxottica. Ray-Ban Products have become among the most popular
of their kind in the U.S. and the world. The Ray-Ban Trademarks have achieved tremendous fame
and recognition which has only added to the inherent distinctiveness of the marks. As such, the
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goodwill associated with the Ray-Ban Trademarks is of incalculable and inestimable value to
Luxottica.
19. Genuine Ray-Ban Products are sold only through authorized retail channels and are
recognized by the public as being exclusively associated with the RAY-BAN® brand.
20. Since at least as early as 2009, genuine Ray-Ban Products have been promoted and
sold at the official Ray-Ban.com website. Sales of Ray-Ban Products via the Ray-Ban.com website
are significant. The Ray-Ban.com website features proprietary content, images and designs
exclusive to the RAY-BAN® brand.
Plaintiff Oakley
21. Oakley is a corporation organized and existing under the laws of the State of
Washington, having its principal place of business at One Icon, Foothill Ranch, California 92610.
22. Oakley is an indirect, wholly-owned subsidiary of Luxottica.
23. Oakley is an internationally recognized manufacturer, distributor and retailer of
eyewear, apparel, footwear, outerwear, jackets, accessories and other merchandise, all of which
prominently display its famous, internationally-recognized and federally-registered trademarks,
including OAKLEY and various Icon logos (collectively, the “Oakley Products”). Oakley
Products have become enormously popular and even iconic, driven by Oakley’s arduous quality
standards and innovative design. Among the purchasing public, genuine Oakley Products are
instantly recognizable as such. In the United States and around the world, the Oakley brand has
come to symbolize high quality, and Oakley Products are among the most recognizable eyewear,
apparel, footwear, outerwear, jackets and accessories in the world.
24. Oakley Products are distributed and sold to consumers through retailers throughout
the United States, including through authorized retailers in Illinois, the official Oakley.com
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website which was launched in 1995, and Oakley O Stores, including one located at 835 N.
Michigan Avenue in Chicago, Illinois.
25. Oakley incorporates a variety of distinctive marks in the design of its various
Oakley Products. As a result of its long-standing use, Oakley owns common law trademark rights
in its Oakley trademarks. Oakley has also registered its trademarks with the United States Patent
and Trademark Office. Oakley Products typically include at least one of Oakley’s registered
trademarks. Oakley uses its trademarks in connection with the marketing of its Oakley Products,
including, but not limited to, the following marks which are collectively referred to as the “Oakley
Trademarks.”
Registration Trademark Good and Services

Number
1,522,692 OAKLEY For: Clothing, namely, shirts and hats in
class 25.
1,552,583 OAKLEY For: Googles; Hand grips for bicycles
and motorcycles in classes 9 and 12.
For: Goggles, sunglasses, protective pads
for elbows, feet and knees. clothing -
namely t-shirts; gloves; racing pants;
1,356,297 hats; sweatshirts; sport shirts, jackets,
jeans, jerseys and ski pants, jackets, hats,
gloves and socks in classes 9 and 25.
For: Sunglasses and accessories for

sunglasses, namely, replacement lenses,
1,519,596
ear stems and nose pieces in class 9.
3,151,994 For: Protective eyewear, namely

spectacles, prescription eyewear, anti
glare glasses and sunglasses and their
parts and accessories, namely
replacement lenses, frames, earstems,
and nose pieces; cases specially adapted
for spectacles and sunglasses and their
parts and accessories in class 9.
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For: Protective eyewear, namely

spectacles, prescription eyewear, anti
glare glasses and sunglasses and their
parts and accessories, namely
replacement lenses, frames, earstems,
and nose pieces; cases specially adapted
for spectacles and sunglasses and their
parts and accessories; and protective
clothing, namely, racing pants; Clothing,
3,331,124 namely, t-shirts, beach-wear, blouses,
sports shirts, jerseys, swimwear,
swimtrunks, shorts, underwear, shirts,
pants, ski and snowboard pants and
jackets, jeans, vests, jackets, wetsuits,
sweaters, pullovers, coats, sweatpants,
headwear, namely, hats, caps, visors and
footwear, namely wetsuit booties, shoes,
sandals, athletic footwear, all purpose
sports footwear, thongs and boots in
classes 9 and 25.
5,109,790 For: Gloves in class 25.
For: Clothing, headwear and footwear,

namely t-shirts, sweatshirts, blouses,
sport shirts, jerseys, skiwear, shorts,
2,698,855 FACTORY PILOT pants, sweat pants, coats, vests, jackets,
swimwear, hats, visors, caps, gloves,
clothing belts, socks, sandals and shoes
in class 25.
2,740,800 FACTORY PILOT For: Sporting goods, namely mountain
bike gloves in class 28.
26. The above registration for the Oakley Trademarks are valid, subsisting, in full force
and effect, and many are incontestable pursuant to 15 U.S.C. § 1065. The Oakley Trademarks
have been used exclusively and continuously by Oakley for many years, and have never been
abandoned. Attached hereto as Exhibit 3 are true and correct copies of the United States
Registration Certificates for the Oakley Trademarks. Incontestable status under 15 U.S.C. § 1065
provides that the registrations for the Oakley Trademarks are conclusive evidence of the validity
of the Oakley Trademarks and of the registration of the Oakley Trademarks, of Oakley’s ownership
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of the Oakley Trademarks, and of Oakley’s exclusive right to use the Oakley Trademarks in
commerce. 15 U.S.C. §§ 1115(b), 1065.
27. The Oakley Trademarks are exclusive to Oakley, and are displayed extensively on
Oakley Products and in Oakley’s marketing and promotional materials. Oakley Products have
long been among the most popular eyewear and apparel in the world and have been extensively
promoted and advertised at great expense. In fact, Oakley has expended millions of dollars
annually in advertising, promoting and marketing featuring their trademarks, including the Oakley
Trademarks. Oakley Products have also been the subject of extensive unsolicited publicity
resulting from their high-quality and innovative designs. Because of these and other factors, the
Oakley name and the Oakley Trademarks have become famous throughout the United States.
28. The Oakley Trademarks are distinctive when applied to the Oakley Products,
signifying to the purchaser that the products come from Oakley and are manufactured to Oakley’s
quality standards. Whether Oakley manufactures the products itself or licenses others to do so,
Oakley has ensured that products bearing its trademarks are manufactured to the highest quality
standards. The Oakley Trademarks have achieved tremendous fame and recognition, which has
only added to the inherent distinctiveness of the mark. As such, the goodwill associated with the
Oakley Trademarks is of incalculable and inestimable value to Oakley.
29. Since at least as early as 1995, Oakley has operated a website where it promotes
and sells genuine Oakley Products at Oakley.com. Sales of Oakley Products via the Oakley.com
website represent a significant portion of Oakley’s business. The Oakley.com website features
proprietary content, images and designs exclusive to Oakley.
30. Oakley’s innovative marketing and product designs have enabled Oakley to achieve
widespread recognition and fame and have made the Oakley Trademarks some of the most well-
12
known marks in the eyewear and apparel industry. The widespread fame, outstanding reputation,
and significant goodwill associated with the Oakley brand have made the Oakley Trademarks
valuable assets of Oakley.
31. Oakley has expended substantial time, money, and other resources in developing,
advertising and otherwise promoting the Oakley Trademarks. As a result, products bearing the
Oakley Trademarks are widely recognized and exclusively associated by consumers, the public,
and the trade as being high-quality products sourced from Oakley. Oakley is a multi-million dollar
operation, and Oakley Products have become among the most popular of their kind in the world.
32. The Luxottica Trademarks, the Ray-Ban Trademarks, and the Oakley Trademarks
are collectively referred to herein as “Plaintiffs’ Trademarks.”
33. The Luxottica Products, the Ray-Ban Products, and the Oakley Products are
collectively referred to herein as “Plaintiffs’ Products.”
34. In addition to Oakley’s valuable trademarks, Oakley Products are further known
for their distinctive patented designs. Like the Oakley Trademarks, these designs are broadly
recognized by consumers. Sunglasses fashioned after these designs are associated with the quality
and innovation that the public has come to expect from Oakley Products. Oakley uses these
designs in connection with the marketing of its Oakley Products, including, but not limited to, the
following patented designs, herein referred to as the “Oakley Designs.”
Patent Number Claim Issue Date

D719,209 December 9, 2014
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D725,695 March 31, 2015
D725,696 March 31, 2015
35. Oakley is the lawful assignee of all right, title and interest in and to the United
States Design Patent No. D719,209 (“the ‘209 Patent”). The ‘209 Patent was lawfully issued on
December 9, 2014 with a named inventor of Nicolas Adolfo Garfias.
March 31, 2015 with a named inventor of Nicolas Adolfo Garfias.
March 31, 2015 with a named inventor of Nicholas Adolfo Garfias.
38. Attached hereto as Exhibit 4 are true and correct copies of the ‘209 Patent, the ‘695
Patent, and the ‘696 Patent.
39. Plaintiffs have not granted a license or any other form of permission to Defendant
with respect to: the Luxottica Trademarks, the Ray-Ban Trademarks, the Oakley Trademarks, the
design protected by the ‘209 Patent, the design protected by the ‘695 Patent, or the design protected
by the ‘696 Patent.
Defendant
40. Upon information and belief, Defendant YesStyle.com Limited is a corporation
organized and existing under the laws of the Hong Kong Special Administrative District of the
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People’s Republic of China, and headquartered at 19/f Wyler Ctr Ph 2, 192 - 200 Tai Lin Pai Rd,
Kwai Fong, Hong Kong.
41. Defendant conducts business throughout the United States, including within the
State of Illinois and this Judicial District, through at least the operation of the fully interactive,
commercial website at yesstyle.com. Defendant targets the United States, including Illinois
residents, and has offered to sell, and has sold, Infringing Products to consumers within the State
of Illinois through the yesstyle.com website
IV. DEFENDANT’S UNLAWFUL CONDUCT
42. Defendant operates a fully interactive, commercial website located at yesstyle.com.
43. Defendant is engaged in designing, manufacturing, advertising, promoting,
distributing, selling, and/or offering for sale products on its website at yesstyle.com bearing at least
one logo, source-identifying indicia and design elements, that are studied imitations,
infringements, and/or counterfeits of Plaintiffs’ Trademarks (previously defined as the “Infringing
Products”).
44. Defendant is involved in the importation, offering for sale, and/or sale of sunglasses
that infringe Oakley’s ‘209, ‘695, and ‘696 Patents (previously defined as the “Infringing
Products”).
45. Plaintiffs’ investigator visited Defendant’s website at yesstyle.com and purchased
Infringing Products.
46. The purchased Infringing Products were shipped to the State of Illinois.
47. The purchased Infringing Products were inspected and it was determined that the
purchased Infringing Products infringed the Luxottica Trademarks, Ray-Ban Trademarks, Oakley
Trademarks and/or the Oakley Designs.
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48. A comparison of the Luxottica Trademarks to Defendant’s Infringing Products
exemplifies Defendant’s infringement of U.S. Trademark Registration No. 1,254,409 for a
“LUXOTTICA” word mark owned by Luxottica, U.S. Trademark Registration No. 1,511,615 for
a stylized “LUXOTTICA” design mark owned by Luxottica, and U.S. Trademark Registration No.
4,137,447 for a stylized “LUXOTTICA” design mark owned by Luxottica.
Luxottica Trademarks Defendant’s Infringing Products
LUXOTTICA
(Reg. No. 1,254,409)
(Reg. No. 1,511,615)
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(Reg. No. 4,137,447)
49. A comparison of the Ray-Ban Trademarks to Defendant’s Infringing Products
exemplifies Defendant’s infringement of U.S. Trademark Registration No. 650,499 for a stylized
“RAY-BAN” design mark owned by Luxottica, U.S. Trademark Registration No. 1,080,886 for a
“RAY-BAN” word mark owned by Luxottica, U.S. Trademark Registration No. 1,093,658 for a
stylized “RAY-BAN” design mark owned by Luxottica, U.S. Trademark Registration No.
1,320,460 for a stylized “RAY-BAN” design mark owned by Luxottica, and U.S. Trademark
Registration No. 3,522,603 for a stylized “RAY-BAN” design mark owned by Luxottica.
Ray-Ban Trademarks Defendant’s Infringing Products
(Reg. No. 650,499)
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RAY-BAN
(Reg. No. 1,080,886)
(Reg. No. 1,093,658)
(Reg. No. 1,320,460)
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(Reg. No. 3,522,603)
50. A comparison of the Oakley Trademarks to Defendant’s Infringing Products
exemplifies Defendant’s infringement of U.S. Trademark Registration No. 1,519,596 for an
“Oakley” design mark owned by Oakley, U.S. Trademark Registration No. 3,151,994 for an “O”
design mark owned by Oakley, U.S. Trademark Registration No. 5,109,790 for an “O” design
mark owned by Oakley, U.S. Trademark Registration No. 1,522,692 for an “OAKLEY” word
mark owned by Oakley, U.S. Trademark Registration No. 1,552,583 for an “OAKLEY” word
mark owned by Oakley, U.S. Trademark Registration No. 1,356,297 for an “OAKLEY” design
mark owned by Oakley, U.S. Trademark Registration No. 2,698,855 for a “FACTORY PILOT”
word mark owned by Oakley, and U.S. Trademark Registration No. 2,740,800 for a “FACTORY
PILOT” word mark owned by Oakley, and U.S. Trademark Registration No. 3,331,124 for an “O”
design mark owned by Oakley.
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Oakley Trademark Defendant’s Infringing Products
(Reg. No. 1,519,596)
(Reg. No. 3,151,994)
(Reg. No. 5,109,790)
OAKLEY
(Reg. No. 1,522,692)
OAKLEY
(Reg. No. 1,552,583)
(Reg. No. 1,356,297)
FACTORY PILOT
(Reg. No. 2,698,855)
FACTORY PILOT
(Reg. No. 2,740,800)
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(Reg. No. 3,331,124)
51. Upon information and belief, Defendant is well aware of the extraordinary fame
and strength of Plaintiffs’ Trademarks and the goodwill associated therewith.
52. Defendant, without any authorization, license, or other permission from Plaintiffs,
has used Plaintiffs’ Trademarks in connection with the advertisement, distribution, offering for
sale, and sale of the Infringing Products into the United States and Illinois over the Internet.
53. Defendant’s use of infringements and/or counterfeits of Plaintiffs’ Trademarks in
the advertisement, distribution, offering for sale, and sale of the Infringing Products was willful.
54. Defendant’s willful use of infringements and/or counterfeits of Plaintiffs’
Trademarks in connection with the advertisement, distribution, offering for sale, and sale of the
Infringing Products, including the sale of an Infringing Products into Illinois, is likely to cause and
has caused confusion, mistake, and deception by and among consumers and is irreparably harming
Plaintiffs.
55. A comparison of Oakley’s claims in the ‘209, ‘695, and ‘696 Patents with
Infringing Products offered for sale on yesstyle.com exemplifies Defendant’s infringement of
United States Design Patent Nos. D719,209; D725,695; and D725,696 owned by Oakley.
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(‘209 Claim)
(‘695 Claim)
(‘696 Claim)
Oakley Designs’ Claims Defendant’s Infringing Products
56. Upon information and belief, Defendant is well aware of the extraordinary fame of
the Oakley Designs and the high-quality products associated therewith.
57. Defendant, without any authorization, license, or other permission from Oakley,
has used the Oakley Designs in connection with the making, using, offering to sell, selling, or
importing of Infringing Products into the United States and Illinois over the Internet.
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58. Defendant’s use of infringements of the Oakley Designs in the making, using,
offering to sell, selling, or importing of the Infringing Products was willful.
59. Defendant’s willful use of infringements of the Oakley Designs in connection with
the making, using, offering to sell, selling, or importing of Infringing Products, including the sale
of Infringing Products into Illinois, is irreparably harming Oakley.
COUNT I
TRADEMARK INFRINGEMENT AND COUNTERFEITING (15 U.S.C. § 1114)
60. Plaintiffs hereby re-allege and incorporate by reference the allegations set forth in
the preceding paragraphs.
61. This is a trademark infringement action against Defendant based on its
unauthorized use in commerce of counterfeit imitations of the federally registered Plaintiffs’
Trademarks in connection with the sale, offering for sale, distribution, and/or advertising of
infringing goods. Plaintiffs’ Trademarks are highly distinctive marks. Consumers have come to
expect the highest quality from Plaintiffs’ Products sold or marketed under Plaintiffs’ Trademarks.
62. Defendant has sold, offered to sell, marketed, distributed and advertised, and is still
selling, offering to sell, marketing, distributing, and advertising products bearing counterfeits of
Plaintiffs’ Trademarks without Plaintiffs’ permission.
63. Plaintiffs are the exclusive owners of their respective Plaintiffs’
Trademarks. Plaintiffs’ United States Registrations for their respective Plaintiffs’ Trademarks
(Exhibits 1-3) are in full force and effect. Upon information and belief, Defendant has knowledge
of Plaintiffs’ rights in Plaintiffs’ Trademarks and is willfully infringing and intentionally using
counterfeits of Plaintiffs’ Trademarks. Defendant’s willful, intentional and unauthorized use of
Plaintiffs’ Trademarks is likely to cause and is causing confusion, mistake, and deception as to the
origin and quality of the Infringing Products among the general public.
23
64. Defendant’s activities constitute willful trademark infringement and counterfeiting
under Section 32 of the Lanham Act, 15 U.S.C. § 1114.
65. Plaintiffs have no adequate remedy at law, and if Defendant’s actions are not
enjoined, Plaintiffs will continue to suffer irreparable harm to their respective reputations and the
goodwill of their well-known Plaintiffs’ Trademarks.
66. The injuries and damages sustained by Plaintiffs have been directly and
proximately caused by Defendant’s wrongful reproduction, use, advertisement, promotion,
offering to sell, and sale of Infringing Products.
COUNT II
FALSE DESIGNATION OF ORIGIN (15 U.S.C. § 1125(a))
68. Defendant’s promotion, marketing, offering for sale, and sale of Infringing
Products has created and is creating a likelihood of confusion, mistake, and deception among the
general public as to the affiliation, connection, or association with Plaintiffs or the origin,
sponsorship, or approval of Defendant’s Infringing Products by Plaintiffs.
69. By using Plaintiffs’ Trademarks on the Infringing Products, Defendant created a
false designation of origin and a misleading representation of fact as to the origin and sponsorship
of the Infringing Products.
70. Defendant’s false designation of origin and misrepresentation of fact as to the origin
and/or sponsorship of the Infringing Products to the general public involves the use of counterfeit
marks and is a willful violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125.
24
71. Plaintiffs have no adequate remedy at law and, if Defendant’s actions are not
enjoined, Plaintiffs will continue to suffer irreparable harm to their respective reputations and the
goodwill of the LUXOTTICA®, RAY-BAN®, and OAKLEY® brands.
COUNT III
VIOLATION OF ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT
(815 ILCS § 510, et seq.)
73. Defendant has engaged in acts violating Illinois law including, but not limited to,
passing off its Infringing Products as those of Plaintiffs, causing a likelihood of confusion and/or
misunderstanding as to the source of its goods, causing a likelihood of confusion and/or
misunderstanding as to an affiliation, connection, or association with genuine Plaintiffs’ Products,
representing that its Infringing Products have Plaintiffs’ approval when they do not, and engaging
in other conduct which creates a likelihood of confusion or misunderstanding among the public.
74. The foregoing Defendant’s acts constitute a willful violation of the Illinois Uniform
Deceptive Trade Practices Act, 815 ILCS § 510, et seq.
75. Plaintiffs have no adequate remedy at law, and Defendant’s conduct has caused
Plaintiffs to suffer damage to their respective reputations and goodwill associated therewith.
Unless enjoined by the Court, Plaintiffs will suffer future irreparable harm as a direct result of
Defendant’s unlawful activities.
COUNT IV
INFRINGEMENT OF UNITED STATES DESIGN PATENT NO. D719,209
(35 U.S.C. § 271)
25
77. Defendant makes, uses, offers for sale, sells, and/or imports into the United States
for subsequent sale or use products that infringe directly and/or indirectly the ornamental design
claimed in the ‘209 Patent.
78. Defendant has infringed the ‘209 Patent through the aforesaid acts, and will
continue to do so unless enjoined by this Court. Defendant’s wrongful conduct has caused Oakley
to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others from
making, using, selling, offering for sale and importing the patented inventions. Oakley is entitled
to injunctive relief pursuant to 35 U.S.C. § 283.
79. Oakley is entitled to recover damages adequate to compensate for the infringement,
including Defendant’s profits pursuant to 35 U.S.C. § 289. Oakley is entitled to recover any other
damages as appropriate pursuant to 35 U.S.C. § 284.
COUNT V
(35 U.S.C. § 271)
26
COUNT VI
(35 U.S.C. § 271)
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray for judgment against Defendant as follows:
1) That Defendant, its officers, agents, servants, employees, attorneys, confederates, and all
persons acting for, with, by, through, under or in active concert with it be temporarily,
preliminarily and permanently enjoined and restrained from:
27
a. using Plaintiffs’ Trademarks or any reproductions, counterfeit copies or colorable
imitations thereof in any manner in connection with the distribution, marketing,
advertising, offering for sale, or sale of any product that is not a genuine Plaintiffs
Product or is not authorized by Plaintiffs to be sold in connection with Plaintiffs’
Trademarks;
b. passing off, inducing, or enabling others to sell or pass off any product as a genuine
Plaintiffs’ Product or any other product produced by Plaintiffs, that is not Plaintiffs’ or
not produced under the authorization, control or supervision of Plaintiffs and approved
by Plaintiffs for sale under Plaintiffs’ Trademarks;
c. committing any acts calculated to cause consumers to believe that Defendant’s products
are those sold under the authorization, control or supervision of Plaintiffs, or are
sponsored by, approved by, or otherwise connected with Plaintiffs;
d. further infringing Plaintiffs’ Trademarks and damaging Plaintiffs’ goodwill;
e. making, using, offering to sell, selling, or importing any products not authorized by
Oakley and that include any reproduction, copy or colorable imitation of the designs
claimed in any of Oakley’s ‘209, ‘695, and ‘696 Patents;
f. manufacturing, shipping, delivering, holding for sale, transferring or otherwise moving,
storing, distributing, returning, or otherwise disposing of, in any manner, products or
inventory not manufactured by or for Plaintiffs, nor authorized by Plaintiffs to be sold
or offered for sale, and which bear any of Plaintiffs’ trademarks, including the
Plaintiffs’ Trademarks, or any reproductions, counterfeit copies or colorable imitations
thereof;
28
g. aiding, abetting, contributing to or otherwise assisting anyone in infringing upon
Plaintiffs’ Trademarks, or any of Oakley’s ‘209, ‘695, and ‘696 Patents; and
h. effecting assignments or transfers, forming new entities or associations or utilizing any
other device for the purpose of circumventing or otherwise avoiding the prohibitions
set forth in Subparagraphs (a) through (g).
2) That Defendant, within fourteen (14) days after service of judgment with notice of entry thereof
upon it, be required to file with the Court and serve upon Plaintiffs a written report under oath
setting forth in detail the manner in which Defendant has complied with paragraph 1, a through
h, supra;
3) That Defendant account for and pay to Plaintiffs all profits realized by Defendant by reason of
Defendant’s unlawful acts herein alleged, and that the amount of damages for infringement of
Plaintiffs’ Trademarks be increased by a sum not exceeding three times the amount thereof as
provided by 15 U.S.C. § 1117;
4) That Plaintiffs be awarded statutory damages for willful trademark counterfeiting pursuant to
15 U.S.C. § 1117(c) of $2,000,000.00 (two million dollars) for each and every use of Plaintiffs’
Trademarks;
5) That Oakley be awarded such damages as it shall prove at trial against Defendant that are
adequate to compensate Oakley for infringement of Oakley’s ‘209, ‘695, and ‘696 Patents, and
all of the profits realized by Defendant, or others acting in concert or participation with
Defendant, from Defendant’s unauthorized use and infringement of Oakley’s ‘209, ‘695, and
‘696 Patents;
29
6) That Oakley be awarded from Defendant, as a result of Defendant’s use of the Oakley Designs,
three times Oakley’s damages therefrom and three times Defendant’s profits therefrom, after
an accounting, pursuant to 35 U.S.C. § 284;
7) That Plaintiffs be awarded their reasonable attorneys’ fees and costs; and
8) Award any and all other relief that this Court deems just and proper.
JURY DEMAND
Pursuant to Fed. R. Civ. P. 38, Plaintiffs hereby demand a trial by jury as to all issues so
triable.
Dated this 17th day of April 2019. Respectfully submitted,
/s/ Justin R. Gaudio_______________

Amy C. Ziegler
Justin R. Gaudio
Allyson M. Martin
Greer, Burns & Crain, Ltd.
300 South Wacker Drive, Suite 2500
Chicago, Illinois 60606
312.360.0080
312.360.9315 (facsimile)
aziegler@gbc.law
jgaudio@gbc.law
amartin@gbc.law
Counsel for Plaintiffs

Luxottica Group S.p.A and Oakley, Inc.
30
Case: 1:19-cv-02599 Document #: 1-1 Filed: 04/17/19 Page 1 of 5 PageID #:31
Exhibit 1
Exhibit 2
Exhibit 3
Reg. No. 5,109,790 Oakley, Inc. (WASHINGTON CORPORATION)

One Icon
Registered Dec. 27, 2016 Foothill Ranch, CA 92610
CLASS 25: Gloves

Int. Cl.: 25
FIRST USE 2-1-2005; IN COMMERCE 2-1-2005
Trademark
The mark consists of an ellipse.
Principal Register
OWNER OF U.S. REG. NO. 2207455, 1984501, 1927106
SER. NO. 87-049,490, FILED 05-25-2016

NATALIE LANGF KENEALY, EXAMINING ATTORNEY
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5109790
Exhibit 4

Luxottica Group v. YesStyle - Com - Complaint

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Case: 1:19-cv-02599 Document #: 1 Filed: 04/17/19 Page 1 of 30 PageID #:1

IN THE UNITED STATES DISTRICT COURT

LUXOTTICA GROUP S.p.A.

or “Defendant”) and allege as follows:

products featuring infringements and/or counterfeits of Plaintiffs’ Oakley trademarks and/or

“Infringing Products”) through Defendant’s website at yesstyle.com. Plaintiffs seek to address

Defendant’s infringement and/or counterfeiting of their registered trademarks and patented

designs, as well as to protect unknowing consumers from purchasing low-quality Infringing

II. JURISDICTION AND VENUE

to Illinois residents by operating a fully interactive and commercial website at

Defendant is committing tortious acts in Illinois, is engaging in interstate commerce,

deliveries to consumers in the United States, including Illinois.

from the State of Illinois, visit yesstyle.com every month.

III. THE PARTIES

family of marks and the LUXOTTICA® family of marks.

5. Products bearing Luxottica’s famous and federally registered trademarks

websites of the Luxottica brands.

and Trademark Office, a non-exclusive list of which is included below.

Registration Number Trademark Goods and Services

1,254,409 LUXOTTICA For: Eyeglasses, sunglasses, templates

1,511,615 For: Eyeglasses, sunglasses, temples

4,137,447 For: Advertising; business

Trademarks, of Luxottica’s ownership of the Luxottica Trademarks, and of Luxottica’s exclusive

attached hereto as Exhibit 1.

manufactured to the highest quality standards.

inestimable value to Luxottica.

(collectively, the “Ray-Ban Products”).

and Trademark Office, a non-exclusive list of which is included below.

Registration Number Trademark Goods and Services

1,080,886 RAY-BAN For: Ophthalmic products and

650,499 For: Sun glasses, shooting glasses, and

1,093,658 For: Ophthalmic products and

1,320,460 For: Sunglasses and carrying cases

3,522,603 For: Sunglasses, eyeglasses, lenses for

Trademarks, of Luxottica’s ownership of the Ray-Ban Trademarks, and of Luxottica’s exclusive

attached hereto as Exhibit 2.

manufactured to the highest quality standards.

valuable assets of Luxottica.

exclusive to the RAY-BAN® brand.

22. Oakley is an indirect, wholly-owned subsidiary of Luxottica.

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

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

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

Michigan Avenue in Chicago, Illinois.

Registration Trademark Good and Services

For: Sunglasses and accessories for

3,151,994 For: Protective eyewear, namely

For: Protective eyewear, namely

5,109,790 For: Gloves in class 25.

For: Clothing, headwear and footwear,

commerce. 15 U.S.C. §§ 1115(b), 1065.

Oakley Trademarks is of incalculable and inestimable value to Oakley.

proprietary content, images and designs exclusive to Oakley.

valuable assets of Oakley.

are collectively referred to herein as “Plaintiffs’ Trademarks.”

collectively referred to herein as “Plaintiffs’ Products.”

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

Patent Number Claim Issue Date

D725,695 March 31, 2015

D725,696 March 31, 2015

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

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

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