Nail Alliance v. Vishine - Motion For TRO

Case 8:22-cv-00937-DOC-DFM Document 11 Filed 05/18/22 Page 1 of 4 Page ID #:109
1 BLANK ROME LLP

Todd M. Malynn (SBN 181595)
2 todd.malynn@blankrome.com
2029 Century Park East | 6th Floor
3 Los Angeles, CA 90067
Telephone: 424.239.3400
4 Facsimile: 424.239.3434
5 Jonathan W.S. England (Pro Hac Vice to be filed)
Jonathan.england@blankrome.com
6 BLANK ROME LLP
1825 Eye Street, SW
7 Washington, DC 20006
Telephone: 202.420.2200
8 Facsimile: 202.420.2201
9 Attorneys for Plaintiffs
Nail Alliance, LLC and
10 Nail Alliance – North America, Inc.
11 UNITED STATES DISTRICT COURT
12 CENTRAL DISTRICT OF CALIFORNIA
13 SOUTHERN DIVISION
14
15 NAIL ALLIANCE, LLC and NAIL Case No. 8:22-cv-00937-ADS

ALLIANCE - NORTH AMERICA, INC.,
16 EX PARTE APPLICATION FOR
Plaintiffs, (A) INTERIM INJUNCTIVE
17 RELIEF PENDING SERVICE
vs. THROUGH THE HAGUE
18 CONVENTION AND (B) ORDER
VISHINE ENTERPRISE LIMITED, and TO SHOW CAUSE WHY A
19 DOES 1 through 10, inclusive, PRELIMINARY INJUNCTION
SHOULD NOT ISSUE;
20 Defendants. MEMORANDUM OF POINTS
AND AUTHORITIES;
21 DECLARATION OF GARIDAWN
TINGLER; DECLARATION OF
22 TODD M. MALYNN
23
24 Plaintiff Nail Alliance, LLC and Nail Alliance – North America, Inc., formally
25 known as Hand & Nail Harmony, Inc. (collectively, “Plaintiffs” or “Nail Alliance”),
26 owner and licensee of trademark and patent rights in the GELISH brand bottle and
27 trade dress, as recognized by U.S. Trademark Registration Nos. 3,857,946, 4,096,115,
28 4,473,557 and 4,473,558, and U.S. Patent Nos. 8,582,739 and D656824, having
1 attempted to provide written notice of this application and supporting papers,

2 respectfully applies ex parte for (a) interim injunctive relief against defendant Vishine
3 Enterprise Limited (“Defendant” or “Vishine”), its officers, agents, servants,
4 employees, attorneys, and all other persons who are in active concert or participation
5 with them, including but not limited to those described in the Proposed Order
6 Granting Interim Injunctive Relief (collectively, the “Enjoined Parties”), pending a
7 preliminary injunction hearing after service of process under the Hague Convention,
8 and (b) an order to show cause (“OSC”) why a preliminary injunction should not issue
9 against Defendant and the other Enjoined Parties.
10 This application is made pursuant to Rule 65, subsections (a) and (b), of the
11 Federal Rules of Civil Procedure, Central District Local Rule 65, as well as the
12 inherent power of the Court to extend the length of a temporary restraining order
13 (“TRO”) in the interest of justice to enable process to be served on a foreign
14 defendant. This application is based on the following grounds:
15 I. RELIEF SOUGHT
16 Nail Alliance seeks an order (a) enjoining the making, importing, distribution,
17 inventory, shipment, sales and/or offering for sale within the United States spurious
18 imitations of the GELISH brand bottle and trade dress by Defendant and the other
19 Enjoined Parties pending a preliminary injunction hearing after service of process on
20 Defendant through the Hague Convention, (b) protecting Nail Alliance from
21 irreparable harm to the goodwill and reputation associated with its famous GELISH
22 brand bottle and trade dress, which are being infringed by cheap, inferior product sold
23 by Defendant over Internet marketplaces, and (c) issuing an OSC re: preliminary
24 injunction against Defendant to be served pursuant to the Hague Convention.
25 II. GROUNDS FOR RELIEF
26 Nail Alliance makes this application on the following grounds:
27 1. Nail Alliance would be irreparably harmed if required to wait for service
28 through the Hague Convention to obtain equitable relief from the Court;
1
1 2. Notice of this Application and supporting papers along with the summons
2 and complaint has been provided to Defendant in a manner reasonably calculated to
3 elicit a response from Defendant;
4 3. Nail Alliance has a substantial likelihood of success on the merits of its
5 trade dress and patent infringement claims for the same reasons found by this Court
6 and other district courts in granting Nail Alliance similar relief in prior cases (see, e.g.,
7 Hand & Nail Harmony et al. v. ABC Nail & Spa Products, et al., Case No. SA CV 16-
8 0969 JCGx (C.D. Cal. 2016); Hand & Nail Harmony, Inc. et al. v. Hong Ngoc T. Ngo,
9 et al., Case No. 17 C 2508 (N.D. Ill 2017); Nail Alliance, LLC et al. v. TNT Beauty, et
10 al., Case No. 2:21-cv-03140-CCC-ESK (D.N.J. 2021); Nail Alliance, LLC et al. v. Yea
11 Yea VN Nails Supply, et al., Case No. 21-cv-1576-FAB (D.P.R 2021));
12 4. Defendant’s spurious imitations of the GELISH brand bottle and trade
13 dress, which are advertised and sold over the Internet to U.S. consumers, including
14 California residents, trade off Nail Alliance’s goodwill and reputation in the GELISH
15 brand bottle and trade dress, and are continuing to cause Nail Alliance to suffer, or
16 likely suffer, irreparable harm for which there is no adequate remedy at law;
17 5. The balance of hardships weighs substantially in favor of injunctive
18 relief; Nail Alliance has invested years and millions of dollars developing its famous
19 brand, including its GELISH brand bottle and trade dress, and Defendant has no right
20 to sell infringing product in the United States, including in California; and
21 6. The public interest weighs strongly in favor of injunctive relief to avoid
22 irreparable harm pending trial and/or a further hearing.
23 III. SUPPORTING DOCUMENTS
24 Nail Alliance’s ex parte application for interim injunctive relief and an OSC re:
25 preliminary injunction after service through the Hague Convention is made and based
26 on this application, the attached Memorandum of Points and Authorities, the
27 concurrently filed Declarations of GariDawn Tingler and Todd M. Malynn, the
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1 proposed TRO and OSC re: Preliminary Injunction, any and all the pleadings on file,
2 and any and all such other matter as may be presented to the Court.
3
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Dated: May 18, 2022 Respectfully submitted,
6
/s/ Todd M. Malynn
7 Todd M. Malynn
BLANK ROME LLP
8 2029 CENTURY PARK EAST, 6TH FLOOR
LOS ANGELES, CA 90067
9 EMAIL:TODD.MALYNN@BLANKROME.COM
10 Attorneys for Plaintiffs Nail Alliance,
LLC and Nail Alliance – North America,
11 Inc.
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Case 8:22-cv-00937-DOC-DFM Document 11-1 Filed 05/18/22 Page 1 of 30 Page ID #:113
1 BLANK ROME LLP

Telephone: 424.239.3400
4 Facsimile: 424.239.3434
6 BLANK ROME LLP
1825 Eye Street, SW
Telephone: 202.420.2200
8 Facsimile: 202.420.2201
9
Attorneys for Plaintiffs
10 Nail Alliance, LLC and
Nail Alliance – North American, Inc.
11
UNITED STATES DISTRICT COURT
12
DISTRICT OF CALIFORNIA
13
SOUTHERN DIVISION
14
NAIL ALLIANCE, LLC and NAIL Case No. 8:22-cv-00937-ADS
15 ALLIANCE - NORTH AMERICA INC.,
inclusive,
16 MEMORANDUM OF POINTS
Plaintiffs, AND AUTHORITIES IN
17 SUPPORT OF PLAINTIFFS’EX
vs. PARTE APPLICATION FOR
18 INTERIM INJUNCTIVE RELIEF
VISHINE ENTERPRISE LIMITED, and PENDING SERVICE THROUGH
19 DOES 1 through 10, inclusive, THE HAGUE CONVENTION
20 Defendants.
21
22 Plaintiffs Nail Alliance, LLC and Nail Alliance – North America, Inc.
23 (collectively, “Plaintiffs” or “Nail Alliance”) respectfully submit this memorandum in
24 support of their ex parte application for interim injunctive relief pending service
25 through the Hague Convention and an order to show cause (“OSC”) re: preliminary
26 injunction against defendant Vishine Enterprise Limited (“Defendant” or “Vishine”)
27 its officers, agents, servants, employees, attorneys, and all other persons who are in
28 active concert or participation with them (collectively, “Defendants”).
1
1 TABLE OF CONTENTS
2
Page(s)
3
I. INTRODUCTION ................................................................................................ 1
4
II. BACKGROUND .................................................................................................. 4
5
A. Nail Alliance’s GELISH Brand Products .................................................. 4
6
B. Counterfeits and Spurious Imitations Sold Over the Internet .................... 6
7
C. Defendants’ Reoccurring Infringing Activities ......................................... 9
8
III. THE COURT HAS AUTHORITY TO ISSUE INJUNCTIVE RELIEF
9 PENDING SERVICE THROUGH THE HAGUE CONVENTION ................. 12
10 A. Defendants Are Subject to Personal Jurisdiction in California ............... 12
11 B. The Court Is Authorized to Issue Interim Injunctive Relief Pending
Service Through the Hague...................................................................... 13
12
IV. A TRO AND PRELIMINARY INJUNCTION SHOULD ISSUE .................... 14
13
A. Plaintiffs Are Likely To Prevail On The Merits Of Their Claims ........... 15
14
1. Trade Dress Infringement .............................................................. 15
15
a. The GELISH Marks Are Valid and Protectable.................. 15
16
b. Defendants’ Products Are Confusingly Similar .................. 15
17
i. Strength of GELISH marks ....................................... 16
18
ii. Proximity of Goods ................................................... 16
19
iii. Similarity of the Marks ............................................. 17
20
iv. Actual Confusion ...................................................... 17
21
v. Marketing Channels Used ......................................... 17
22
vi. Type of Goods and Degree of Care .......................... 17
23
vii. Defendants’ Intent ..................................................... 18
24
viii. Likelihood of Expansion ........................................... 18
25
2. Patent Infringement........................................................................ 19
26
a. Design Patent Infringement ................................................. 19
27
b. Utility Patent Infringement .................................................. 20
28
B. Plaintiffs Are Likely Suffering Irreparable Injury ................................... 21
i
C. The Injury to Plaintiffs Outweighs Any Harm to Defendants ................. 23

1
D. The Public Interest Is Best Served By Enjoining Counterfeiting ............ 23
2
V. BOND AMOUNT .............................................................................................. 23
3
VI. CONCLUSION .................................................................................................. 24
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163113.00103/128821394v.1 ii
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF EX PARTE APPLICATION FOR
INTERIM INJUNCTIVE R4ELIEF PENDING SERVICE THROUGH THE HAGUE
1
TABLE OF AUTHORITIES
2 Page(s)
3
Cases
4
ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
5 694 F. 3d 1312 (Fed. Cir. 2012) ................................................................................ 20
6 Alliance for the Wild Rockies v. Cottrell,
632 F.3d 1127 (9th Cir. 2011) ................................................................................... 15
7
Am. Trucking Ass’n, Inc. v. City of Los Angeles,
8 559 F.3d 1046 (9th Cir. 2009) ................................................................................... 14
9 AMF, Inc. v. Sleekcraft Boats,
10 599 F.2d 341 (9th Cir. 1979) .......................................................................... 15, 16, 17
11
Ariz. Dream Act Coalition v. Brewer,
757 F.3d 1053 (9th Cir. 2014) ................................................................................... 22
12
AT&T Co. v. Winback and Conserve Program, Inc.
13 42 F.3d 1421 (3d Cir. 1994) ...................................................................................... 23
14 Bancroft & Masters, Inc. v. Augusta Nat. Inc.,
223 F. 3d 1082 (9th Cir. 2000) .................................................................................. 12
15
Celsis in Vitro, Inc. v. CellzDirect, Inc.,
16 664 F.3d 922 (Fed. Cir. 2012) ................................................................................... 22
17 D.light Design, Inc. v. Boxin Solar Co., Ltd.,
18 Case C-13-5988 EMC, 2014 WL 12659909 at *2 (N.D. Cal., Feb. 3, 2014) ........... 13
E. & J. Gallo Winery v. Gallo Cattle Co.,
19
967 F.2d 1280 (9th Cir. 1992) ................................................................................... 18
20
eBay Inc. v. MercExchange, L.L.C.,
21 547 U.S. 388 (2006) .................................................................................................. 22
22 Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ................................................................................... 19
23
Fiji Water Co., LLC v. Fiji Min. Water USA, LLC,
24 741 F. Supp. 2d 1165 (C.D. Cal. 2010)............................................................... 15, 16
25 Gorham Co. v. White,
26
81 U.S. 511 (1872) .................................................................................................... 19
Herb Reed Enterprises LLC v. Florida Entertainment Management Inc.,
27
736 F.3d 1239 (9th Cir. 2013 ................................................................................... 22
28
163113.00103/128821394v.1 iii
1
Int’l Shoe Co. v. Washington,
326 U.S. 310 (1945) .................................................................................................. 12
2
Mattel, Inc. v. Walking Mountain Prods.,
3 353 F.3d 792 (9th Cir. 2003) ..................................................................................... 15
4 Mysfyt, Inc. v. Lum, Case No. 4:16-cv-03813-KAW, 2016 WL 6962954 at *3 (N.D.
Cal., Nov. 29, 2016) .................................................................................................. 12
5
Nintendo of Am., Inc. v. Storman,
6 No. CV197818CBMRAOX, 2021 WL 4772529, at *2 (C.D. Cal. Aug. 5, 2021) ... 22
7 Pacific Telesis v. International Telesis Comms.,
8 994 F.2d 1364 (9th Cir.1993) .................................................................................... 18
Rathmann Grp. v. Tanenbaum,
9
889 F.2d 787 (8th Cir. 1989) ..................................................................................... 23
10
Reilly v. City of Harrisburg,
11 858 F.3d 173 (3d Cir. 2017) ...................................................................................... 23
12 Reno Air Racing Ass’n, Inc. v. McCord,
452 F.3d 1126 (9th Cir. 2006) ................................................................................... 13
13
Rent-A-Car, Inc. v. Canyon Television and Appliance Rental, Inc.,
14 944 F.2d 597 (9th Cir. 1991) ..................................................................................... 22
15 S & R Corp. v. Jiffy Lube Intern., Inc.,
16
968 F.2d 371 (3d Cir. 1992) ...................................................................................... 23
Samsung Elec. Co. v. Early Bird Sav.,
17
2014 WL 324558, at *2 (S.D. Cal., Jan. 27, 2014) ................................................... 13
18
19 2014 WL 324558, at *2 (citing H.D. Michigan, LLC v. Hellenic Duty Free Shops
S.A., 694 F.3d 827, 832 (7th Cir. 2012)) ................................................................... 14
20
21 2014 WL 324558, at *2 (quoting Almetals, Inc. v. Wickeder Westfalenstahl, GMBH,
22 2008 WL 624067, at *4 (E.D. Mich., Mar. 6, 2008)) ............................................... 14
23 See O2 Micro, Int’l Ltd., v. Beyond Innovation Tech. Co.,
521 F.3d 1351 (Fed. Cir. 2008) ................................................................................. 20
24
Spigen Korea Co. v. Ultraproof, Inc.,
25 955 F.3d 1379 (Fed. Cir. 2021) ................................................................................. 19
26 Stomp, Inc. v. NeatO, LLC,
61 F. Supp. 2d 1074 (C.D. Cal. 1999)....................................................................... 12
27
28
163113.00103/128821394v.1 iv
1
Stuhlbarg Int’l Sales Co. v. John D. Brushy & Co.,
240 F.3d 832 (9th Cir. 2001) ............................................................................... 14, 15
2
Titan Tire Corp. v. Case New Holland, Inc.,
3 566 F.3d 1372 (Fed. Cir. 2009) ................................................................................. 19
4 Trebro Mfg., Inc. v. Firefly Equip., LLC,
748 F. 3d 1159 (Fed. Cir. 2014) ................................................................................ 19
5
U.S. Surgical Corp. v. Ethicon, Inc.,
6 103 F. 3d 1554 (Fed. Cir. 1997) ................................................................................ 20
7 Winter v. Natural Res. Def. Council, Inc.,
8 555 U.S. 7 (2008) ...................................................................................................... 14
Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme,
9
433 F.3d 1199 (9th Cir. 2006) ................................................................................... 12
10
11 Statutes
12 15 U.S.C. § 1115 ........................................................................................................... 14
13 15 U.S.C. § 1116(a) ...................................................................................................... 20
14 Cal Civ. Code § 410.10 ................................................................................................. 11
15 Other Authorities
16 Lanham Act ............................................................................................................. 15, 20
17
Rules
Fed. R. Civ. Proc. 65(b) ................................................................................................ 12
18
Fed. R. Civ. Proc. 65(b)(1)(A) ...................................................................................... 12
19
Fed. R. Civ. Proc. 65(b)(1)(B) ...................................................................................... 12
20
21
22
23
24
25
26
27
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163113.00103/128821394v.1 v
1 MEMORANDUM OF POINTS AND AUTHORITIES

2
3 I. INTRODUCTION
4 Defendants are manufacturing, marketing, selling, and offering to sell spurious
5 imitations of GELISH® brand products copying Nail Alliance’s registered trade dress
6 and patented bottle.1 This lawsuit is Plaintiffs’ eighth time moving for injunctive
7 relief against counterfeit products and spurious imitations trading off the goodwill and
8 reputation of Nail Alliance’s famous GELISH® bottle and trade dress. One of
9 Plaintiffs’ lawsuits addressing this reoccurring problem involved forty-two defendants
10 in an action entitled Hand & Nail Harmony et al. v. ABC Nail & Spa Products, et al.,
11 United States District Court, Central District of California, Case No. SA CV 16-0969
12 (JCGx) (the “California Action”).2 Plaintiffs’ last three actions, entitled Hand & Nail
13 Harmony, Inc. et al. v. Hong Ngoc T. Ngo, et al., United States District Court,
14 Northern District of Illinois, Case No. 17 C 2508 (the “Illinois Action”), Nail Alliance,
15 LLC et al. v. TNT Beauty, et al., United States District Court, District of New Jersey,
16 Case No. 2:21-cv-03140-CCC-ESK (the “New Jersey Action”) and Nail Alliance,
17 LLC et al. v. Yea Yea VN Nails Supply, et al., Case No. 21-cv-1576-FAB (the “Puerto
18 Rico Action”)) involved seizures at nail salons buying infringing product over the
19 Internet and selling it from their salons and websites.
20 Below is an image from the New Jersey Action of a reoccurring problem in
21 U.S. nail salons – entire walls of counterfeit and spurious imitation of GELISH® brand
22 gel polish, foundation and top-coat products being offered to patrons:
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28 See Declaration of GariDawn Tingler (“Tingler Decl.”) ¶¶ 42-43.
2
Nail Alliance – North America, Inc. was formally known as Hand & Nail Harmony, Inc. Id. ¶ 1.
1
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16 Unscrupulous nail salons deceive patrons into paying for and believing they are
17 receiving an authentic GELISH® manicure when, in fact, these nail salons are
18 providing patrons with manicures utilizing cheap, low-quality and potentially
19 dangerous product—harming the goodwill and reputation of Nail Alliance’ famous
20 GELISH® brand. Manufacturers in China do not follow and China does not have laws
21 equivalent to Proposition 65 in California protecting consumers.
22 At the heart of the problem are Internet marketplaces (e.g., Amazon, eBay,
23 Alibaba Express, Walmart) where U.S. nail salons purchase the counterfeit product
24 and spurious imitations. Nail Alliance has registered its trademarks, trade dress and
25 patents with the USPTO and U.S. customs, followed the processes provided by and
26 conducted take downs with the aforementioned Internet marketplaces, to no avail. As
27 soon as Defendants’ listings are seized or taken down, they reappear in an endless
28
163113.00103/128821394v.1 2
1 cycle. Worse, the documents seized from the nail salons only identify ever-changing
2 “front” sellers on these Internet platforms from who they purchased the counterfeit
3 product or spurious imitations—not the underlying source in China.
4 Accordingly, Nail Alliance seeks injunctive relief against Defendants—the
5 purveyors of the infringing product—and those acting in concert and participation
6 them, including Internet marketplaces who are making a market in selling spurious
7 imitations of GELISH® brand products. It is imperative that Nail Alliance not only
8 shut down prolific purveyors of spurious products, such as Defendants, but also
9 remove their ability to change the listed sellers or “fronts” and continue to export,
10 market, sell and offer to sell the contraband over Internet marketplaces in the United
11 States. Relief is necessary to stop the sale of counterfeit and spurious imitations of
12 GELISH® brand products in California and other states.
13 Defendants’ unlawful activities have caused and will continue to cause
14 irreparable injury to Nail Alliance as to which there is no adequate remedy at law.
15 Defendants have (a) confused or misled and are continuing to confuse and mislead
16 consumers, including end users and nail technicians, that their cheap, low-quality and
17 potentially hazardous goods from China are authentic GELISH® brand products,
18 tarnishing the brand and injuring Nail Alliance’s reputation and goodwill; (b) deceived
19 and are continuing to deceive consumers as to the source and origin of Defendants’
20 goods, further injuring Nail Alliance’s reputation and goodwill and the reputation and
21 goodwill of GELISH® products; (c) deprived and are continuing to deprive Nail
22 Alliance of the right and ability to control the use of its intellectual property in
23 commerce; and (d) misappropriated and are continuing to misappropriate Nail
24 Alliance’s reputation and goodwill and the commercial value of its GELISH® brand in
25 ruinous fashion. Accordingly, Plaintiffs bring this application.
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1 II. BACKGROUND
2 A. Nail Alliance’s GELISH Brand ProductsNail Alliance manufactures,
3 promotes, distributes and sells an enormously successful line of gel polish, foundation
4 and topcoat under the brand name GELISH. GELISH brand products are of
5 exceedingly high quality, durability, consistency and beauty. Tingler Decl. ¶¶ 4-9, 17.
6 Beginning in January 2010, GELISH® products were sold in novel, elegantly adorned
7 and distinctive bottles illustrated below, which are protected by U.S. Trademark
8 Registration Nos. 3,857,946, 4,096,115, 4,473,557 and 4,473,558 (the “Trademarks-
9 In-Suit”), and U.S. Patent Nos. 8,582,739 (“the ‘739 Patent”) and D656824 (“the
10 ‘D824 Patent”) (the “Patents-In-Suit):
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20 See Complaint ¶¶ 17-49, Ex. A-D, Tingler Decl. ¶ 10.

21 Plaintiffs’ principal, Danny Haile, invented the first brush-on, soak-off gel
22 polish, which is sold under the federally registered trademark name “GELISH.”
23 Tingler Decl. ¶¶ 4, 10. GELISH brand gel polish has the benefits of both a traditional
24 nail polish (vibrant colors and a brush on application and finish) and a hard gel (long
25 lasting wear). Id. ¶ 4-6. GELISH foundation, which due to its quality is relatively
26 expensive,3 is used by consumers before the gel polish is applied, and GELISH
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See Tingler Decl. ¶ 12., Ex. 1 (Declaration of Suni Sirdesai (“Sirdesai Decl.”) ¶ 6).
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1 topcoat is used by consumers after the gel polish is applied, to help a consumer’s nails
2 obtain a long-lasting desired look. Id. ¶ 14.
3 GELISH brand products revolutionized the nail industry. Prior to the
4 introduction of GELISH brand gel polish, foundation and topcoat, most consumers
5 occasionally went to a salon for pampering or professional treatment in advance of a
6 formal occasion, rather than for the application of a nail polish, which they could
7 apply at home. Id. ¶ 5. It is expensive to frequent a salon, especially just for an
8 application of nail polish, a finish that lasts only a few days before chipping or
9 cracking. Id. Although salons offered longer lasting products, such as acrylics or
10 hard-gels, consumers generally preferred the natural look of a traditional nail polish.
11 These practical realities were a significant impediment to salon business. Id.
12 GELISH products provided salons new products and value proposition targeted
13 at consumers of traditional nail polish to sell as part of their salon services. By
14 frequenting salons, those consumers could now obtain the natural, nail-polish look but
15 in a finish that could last up to four weeks and that was more easily removed than
16 existing alternatives.4 Id. ¶ 6.
17 GELISH substantially increased salon business and has been a tremendous
18 commercial success. Plaintiffs are now the largest privately owned manufacturer of
19 nail products in the world, selling millions of bottles of their GELISH brand products.
20 Id. ¶ 8. GELISH immediately won and has continued to win product recognition
21 awards, including multiple product-of-the-year awards. Id. ¶ 7.
22 Consumers recognize GELISH brand goods by their distinctive trademarks,
23 trade dress and bottle, and routinely ask for GELISH by name. Id. ¶¶ 9, 15. Nail
24 Alliance invested millions of dollars in promoting its GELISH goods, marks and
25 bottle in the United States and throughout the world. Id. ¶ 14. Among other things,
26 Plaintiffs advertised GELISH products over the Internet, and in numerous trade
27
4
28 Accord Sirdesai Decl ¶ 6.
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1 publications as well as at trade shows and conventions. Id. Plaintiffs emphasized the
2 GELISH brand name in their advertisements and over the Internet, including a highly
3 visited website (e.g., wwe.gelish.com) as well as corporate pages on social media
4 sites, such as Facebook, which link to popular online advertisements, including one
5 video that has been viewed more than 2.5 million visitors. Id.
6 Nail Alliance, LLC owns the rights to (a) U.S. Trademark Registration Nos.
7 4,096,115 (GELISH character mark) and 3,857,946 (GELISH design plus word mark),
8 (b) the unique GELISH three-dimensional configuration and scrollwork pattern of the
9 GELISH trade dress, which is protected by U.S. Trademark Registration Nos.
10 4,473,557 and 4,473,558, (c) common law trademark rights associated with the
11 GELISH goods, including trade dress (collectively, “GELISH marks”), and (d) patents
12 protecting both the design of the GELISH bottle (see the ‘D824 Patent) and function
13 of its transparent window (see the ‘739 Patent). Tingler Decl. ¶ 10; Complaint, Exs.
14 A-D (certificates of registration). Nail Alliance – North America, Inc. also is the
15 worldwide manufacturer and licensee of the GELISH goods, marks and bottle. Id.
16 The GELISH marks and bottle are instantly recognizable and associated with Nail
17 Alliance in the United States and throughout the world. Tingler Decl. ¶ 13. Indeed,
18 Plaintiffs submit that the GELISH marks are famous within the meaning of the
19 Lanham Act, 15 U.S.C. § 1125(c). See Complaint ¶¶ 24, 38.
20 B. Counterfeits and Spurious Imitations Sold Over the Internet
21 The commercial success of GELISH products has attracted a network of
22 unscrupulous competitors bent on syphoning Plaintiffs’ profits at the expense of
23 unwary consumers and Plaintiffs’ goodwill and reputation. See Tingler Decl. ¶¶ 18-
24 40. Plaintiffs have brought numerous enforcement actions against U.S. distributors
25 and nail salons and have filed take down requests with Internet platforms in an effort
26 to protect the GELISH brand from cheap, low-quality counterfeit and spurious
27 imitations infringing upon Plaintiffs’ trade dress and patent rights. See id. ¶¶ 21, 23-
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1 24, 35-40, Complaint Exs. A-D. Because of the growing proliferation of counterfeit
2 and spurious imitations from China and marketed and sold over Internet marketplaces,
3 such “whack-a-mole” type enforcement efforts have proven futile.
4 For example, on November 15, 2021, Nail Alliance was notified that custom
5 officials in the United Kingdom had seized counterfeit GELISH products. After
6 obtaining images of the contraband, Nail Alliance confirmed that the product seized
7 was counterfeit. See Tingler Decl. ¶ 42. The next day, on November 16, 2021, Nail
8 Alliance was notified by its distributor in Puerto Rico that she discovered the same
9 counterfeit GELISH products at a trade show. See id.
10 In the New Jersey Action, Nail Alliance discovered that some U.S. nail salons
11 are brazenly displaying counterfeit products intermixed with spurious imitations
12 purchased off the Internet on walls trading off the GELISH’s goodwill and reputation:
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1 As seen from a where a salon patron would be standing, neither the counterfeit
2 nor the spurious imitations of GELISH brand gel polish, foundation and topcoat are
3 readily discernable, and cause and/or are likely to cause actual confusion as to the
4 source or origin. Also, because patrons presumably trust their salon and/or nail
5 technician to provide them what they paid for – an authentic GELISH manicure, they
6 are necessarily confused and the GELISH brand’s goodwill and reputation are
7 necessarily diminished by diverted sales. Tingler Decl. Tingler Decl. ¶ 47.
8 Given the look-a-like nature and inferior quality of these spurious imitations,
9 their dissemination is plainly harming and potentially ruinous to Plaintiffs’ goodwill
10 and reputation. See Tingler Decl. ¶¶ 19-20, 28-30, 36, 41-50; Sirdesai Decl. 4-8, Ex.
11 2. For example, after purchasing 10 bottles of counterfeit foundation, a nail technician
12 complained about the poor quality of “GELISH” as it ruined one of her client’s nails.
13 Id. ¶ 29 (the nails “all fall off”). She complained that, unlike other foundations, the
14 “GELISH” brand “seems like it was thinned out with a gel polish thinner.” Id. Upon
15 opening a counterfeit bottle, one was immediately assailed by a foul burnt plastic
16 smell, an indication that the ingredients are not cosmetic grade and risk potential harm
17 to consumers if a nail technician is not careful in application. Id. ¶ 28.
18 Similarly, a salon owner in Beverly Hills who had purchased counterfeit
19 foundation over eBay contacted Nail Alliance. He complained that the product was
20 “brittle,” cracked within days, and “burned” one of his customers. After learning that
21 the product purchased off eBay was counterfeit, the owner still faulted Nail Alliance
22 and demanded that Nail Alliance take action. Id. ¶ 36.
23 These are not isolated incidents. Over the years Plaintiffs have located multiple
24 purveyors of counterfeit product and spurious imitations all across the country,
25 including California, Texas, Missouri, Nebraska, South Carolina, Nevada, Florida,
26 Illinois, and most recently in New Jersey and New York. Id. ¶¶ 24-30, 33-40.
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1 The infringing activity is causing substantial harm. In one quarter, alone, as a

2 result of unchecked infringing activity, Plaintiffs experienced (a) an unexpected and
3 substantial drop in sales of foundation and topcoat,5 (b) a loss of control over their
4 leading brand, (c) a corresponding set of deceived and disappointed consumers who
5 may never try the product again and who have been exposed to an undue risk of harm,
6 and (d) disruption to their relationships with distributors due to the proliferation of
7 cheap, low-quality, infringing product.6 See Tingler Decl. ¶¶ 44-50; Sirdesai Decl. 4-
8 7. Vishine, itself, reportedly has gross revenues over $4.8 million from just one U.S.
9 Internet platform. Tingler Decl. ¶ 55. Given the scope and proliferation of infringing
10 activities over Internet marketplaces, it is imperative that Plaintiffs stop the same.
11 C. Defendants’ Reoccurring Infringing Activities
12 Defendants are manufacturing, purchasing, promoting, distributing, advertising,
13 offering to sell, and/or selling counterfeit, spurious, and/or confusingly similar
14 products as the GELISH brand products in the United States, including in California,
15 as illustrated below. Tingler Decl. ¶¶ 44-46. Defendants have knowledge of Nail
16 Alliance’s patent and trademark rights, including their exclusive right to use the
17 GELISH trade dress and bottle and the goodwill associated therewith in the United
18 States and around the world. Declaration of Todd M. Malynn (“Malynn Decl.”) ¶¶ 2-
19 6. Such notice has been specifically provided to Defendants, including through cease
20 and desist correspondence and numerous take-down requests on Internet platforms
21 specifically regarding the below infringing products:
22
23 5
See Tingler Decl. ¶ 47 ($2 million). One of Harmony’s master distributors met with one of its
24 sub-distributors in Kansas City, Missouri, to discuss a drop of $70,000 in sales in Foundation and
Top It Off in just two months; the distributor complained that the drop off was due in large part
25 (more than 60%) to the infringing activity. Id.¶ 48.
6
It is hard to understate the risk of harm and the damage being done to Plaintiffs’ brand as a result
26 of counterfeit product from China masquerading as GELISH “Made in USA.” Because of the
proliferation of cheap, low-quality product from China, Sweden took the extreme step of banning a
27 gel polish from China that had resulted in “51 complaints from people who had experienced adverse
effects from using the polish.” Sirdesai Decl. ¶ 8, Ex. 2.
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8 Tingler Decl. ¶ 44; Malynn Decl.”) ¶¶ 2-6.

9 The infringing products manufactured, distributed, promoted and sold by
10 Defendants are confusingly similar and nearly identical in terms of both the GELISH
11 trade dress and patented features of genuine GELISH bottles. The above images,
12 taken from https://www.amazon.com/Vishine-Gel-Nail-Polish-
13 Starter/dp/B07JDDC866?th=1, illustrate representative examples of Defendants’
14 infringement of the Trademarks-In-Suit and Patents-In-Suit. These examples of
15 infringing product are advertised as part of Defendants’ Gel Nail Polish Starter Kit.
16 Tingler Decl. ¶ 45. Below are images of Defendant’s gel polish, foundation and
17 topcoat purchased off Amazon.com from California. The product was invoiced and
18 shipped to Fullerton, California. Tingler Decl. ¶ 46, Ex. 9.
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1 Nail salons in California and throughout the United States have been purchasing
2 Defendant’s infringing product, as evidenced by the product seized in the New Jersey
3 Action and Defendant’s $4.8 million in gross revenues from Amazon, alone. Tingler
4 Decl. ¶¶43-44, 55. Based on the design of Defendants’ bottles and the inclusion of
5 Nail Alliance’s trade dress, Defendants are intentionally trading off the goodwill and
6 reputation of GELISH brand products and designing imitations to confuse consumers
7 either when products are purchased over the Internet or displayed in a nail salon. To
8 prevent salons from purchasing, displaying, advertising, and selling Defendants’
9 spurious imitations, Nail Alliance contracted with a brand protection service to
10 conduct take downs on third party e-commerce websites, to no avail. Tingler Decl.
11 ¶¶ 47-48; Malynn Decl. ¶ 5. Not only does the process take time, thereby allowing the
12 infringing products to proliferate and injure the GELISH brand, but the platforms do
13 little or nothing to prevent Defendants from reposting the same infringing listings and
14 selling infringing product. Ibid. Plaintiffs have been informed that absent a court
15 order, which Internet platforms reportedly prefer, Amazon could (or would) not
16 prevent the reoccurring infringing listings and sales. Ibid.
17 Nail Alliance is suffering irreparable harm due, not only to consumer confusion,
18 but also to the cheap/poor quality of spurious imitations, the lack of quality control
19 and customer support provided by Defendants, the loss of control over Nail Alliance’s
20 famous GELISH marks and reputation of its GELISH products, and the ongoing
21 disparagement and diminution of the goodwill associated with the GELISH brand.
22 Tingler Decl. ¶¶ 49-55. Since Defendants’ infringing conduct will continue unless
23 enjoined, Nail Alliance has no adequate remedy at law.
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1 III. THE COURT HAS AUTHORITY TO ISSUE INJUNCTIVE RELIEF

2 PENDING SERVICE THROUGH THE HAGUE CONVENTION
3 A. Defendants Are Subject to Personal Jurisdiction in California
4 California permits the exercise of personal jurisdiction to the full extent
5 permitted by due process. See Cal Civ. Code § 410.10; Bancroft & Masters, Inc. v.
6 Augusta Nat. Inc., 223 F. 3d 1082, 1086 (9th Cir. 2000), overruled in part on other
7 grounds by Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d
8 1199, 1207 (9th Cir. 2006) (en banc). Due process requires that non-residents have
9 “minimum contacts” with the forum state “such that the maintenance of the suit does
10 not offend traditional notions of fair play and substantial justice.” Int’l Shoe Co. v.
11 Washington, 326 U.S. 310, 316 (1945). Personal jurisdiction exists where an entity is
12 conducting business over the Internet and has offered for sale and sold its products to
13 forum residents designed to other residents of a state. See Mysfyt, Inc. v. Lum, Case
14 No. 4:16-cv-03813-KAW, 2016 WL 6962954 at *3 (N.D. Cal., Nov. 29, 2016) (citing
15 Stomp, Inc. v. NeatO, LLC, 61 F. Supp. 2d 1074, 1077-78 (C.D. Cal. 1999)).
16 This Court has personal jurisdiction over Defendants because they have
17 purposefully directed marketing and sales of and shipped infringing products into
18 California, among other states, and because their infringing activity is and has been
19 designed to cause direct harm to Nail Alliance, a California-based manufacturer. See
20 Compl. ¶¶ 8-10. Defendants have advertised and sold the infringing products over
21 national e-commerce sites and Internet marketplaces, including Amazon.com and
22 Alibaba. See id. ¶ 8. Defendants also make the infringing product available for sale
23 on their own website. Id. ¶ 57. The infringing products are and have been ordered
24 and shipped to California residents, including Nail Alliance. See Tingler Decl. ¶ 46.
25 Defendants intentionally placed their goods into the stream of commerce with Internet
26 retailers, which undoubtedly results and have in fact resulted in activity directed to
27 California residents. Id. Further, because of repeated take-down and cease and desist
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1 notifications to Defendants, Defendants are and have been aware of the allegations of
2 infringement but continued to sell and ship product into California. Tingler Decl.,
3 ¶ 48; Malynn Decl. ¶¶ 2-7. Defendants’ willful infringement of Nail Alliance’s
4 intellectual property rights, including their continued advertisement and sales of
5 infringing products in California, are intentional acts aimed at residents of this forum.
6 See D.light Design, Inc. v. Boxin Solar Co., Ltd., Case C-13-5988 EMC, 2014 WL
7 12659909 at *2 (N.D. Cal., Feb. 3, 2014) (finding exercise of personal jurisdiction
8 proper with evidence of willful infringement). The Court’s exercise of personal
9 jurisdiction over Defendants is therefore necessary and proper.
10 B. The Court Is Authorized to Issue Interim Injunctive Relief Pending
11 Service Through the Hague
12 Under Fed. R. Civ. Proc. 65(b), the Court has authority to issue interim
13 injunctive relief pending service of process on foreign defendants through the Hague.
14 See Fed. R. Civ. Proc. 65(b)(1); Samsung Elec. Co. v. Early Bird Sav., 2014 WL
15 324558, at *2 (S.D. Cal., Jan. 27, 2014) (extending TRO until service through Hague
16 was completed); see also Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126,
17 1131 (9th Cir. 2006) (“Reno Air”) (ex parte TRO may issue “‘where notice to the
18 adverse party is impossible either because the identity of the adverse party is unknown
19 or because a known party cannot be located in time for a hearing’”) (citation omitted).
20 Only two requirements must be met: First, “specific facts in an affidavit” must
21 “clearly show” that “irreparable injury, loss, or damage will result to the movant
22 before the adverse party can be heard in opposition” after service of process through
23 the Hague is completed and a preliminary injunction hearing has been specially set.
24 See Fed. R. Civ. Proc. 65(b)(1)(A). Second, the movant’s attorney must certify “in
25 writing any efforts made to give notice and the reasons why it should not be required.”
26 Fed. R. Civ. Proc. 65(b)(1)(B). When these two requirements are met, the Court in
27 the interest of justice may extend the length of a TRO beyond 14 days or a like period
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1 “[w]here a plaintiff is unable to promptly serve a foreign defendant because the only
2 proper means of serving defendants available to plaintiff cannot be completed within
3 the usual deadlines . . . .” Samsung Elec., 2014 WL 324558, at *2 (citing H.D.
4 Michigan, LLC v. Hellenic Duty Free Shops S.A., 694 F.3d 827, 832 (7th Cir. 2012)).
5 “If a TRO were not permitted to remain in effect until a defendant is served under the
6 Hague Convention, ‘Rule 65 would be inoperative against foreign defendants.’”
7 Samsung Elec., 2014 WL 324558, at *2 (quoting Almetals, Inc. v. Wickeder
8 Westfalenstahl, GMBH, 2008 WL 624067, at *4 (E.D. Mich., Mar. 6, 2008)).
9 Here, Rule 65(b)’s two requirements have been met. Plaintiffs have
10 demonstrated with specific facts that, if interim injunctive relief does not issue,
11 irreparable harm will result to Plaintiffs before they can complete service on
12 Defendants through the Hague. Tingler Decl. ¶¶ 49-55. Second, Plaintiffs’ counsel
13 has certified in writing the reasonable steps taken to notify Defendants of this
14 proceeding, including both electronic and physical delivery of the summons,
15 complaint, application and supporting papers, as well as specific reasons why further
16 notice should not be required. See Malynn Decl. ¶¶ 2-7.
17 IV. A TRO AND PRELIMINARY INJUNCTION SHOULD ISSUE
18 The standards for issuing a TRO or a preliminary injunction are “substantially
19 identical.” Stuhlbarg Int’l Sales Co. v. John D. Brushy & Co., 240 F.3d 832, 839 n.7
20 (9th Cir. 2001). A preliminary injunction, like a TRO, is an “extraordinary remedy.”
21 Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24 (2008). Accordingly, a
22 plaintiff seeking interim injunctive relief “must establish [1] that he is likely to
23 succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of
24 preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an
25 injunction is in the public interest.” Am. Trucking Ass’n, Inc. v. City of Los Angeles,
26 559 F.3d 1046, 1052 (9th Cir. 2009). After Winter, the Ninth Circuit re-affirmed that
27 only a minimal showing of irreparable harm is required where there is a substantial
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1 likelihood of success on the merits. Alliance for the Wild Rockies v. Cottrell, 632 F.3d
2 1127, 1135 (9th Cir. 2011) (discussing sliding scale). Evidence of loss of prospective
3 customers or goodwill supports a finding of irreparable harm. Id.; Stuhlbarg Int’l
4 Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F. 3d 832, 841 (9th Cir. 2001).
5 Here, all four Winter factors support granting interim injunctive relief.
6 A. Plaintiffs Are Likely To Prevail On The Merits Of Their Claims
7 1. Trade Dress Infringement
8 Plaintiffs’ Count I is for trade dress infringement. Liability for trade dress
9 infringement is established when the following elements are met: (1) the trade dress is
10 protectable; and (2) use of the same or similar trade dress is likely to confuse
11 customers. See Fiji Water Co., LLC v. Fiji Min. Water USA, LLC, 741 F. Supp. 2d
12 1165, 1178 (C.D. Cal. 2010). Plaintiffs are likely to prevail on each element.
13 a. The GELISH Marks Are Valid and Protectable
14 A trademark registration on the principal register constitutes prima facia
15 evidence of the validity of the mark. 15 U.S.C. § 1115. Here, the GELISH marks,
16 which include Nail Alliance’s registered trade dress associated with GELISH products
17 (see U.S. Trademark Registration Nos. 4,473,557 and 4,473,558), are on the principal
18 register, and thus are presumed valid. See Tingler Decl. ¶ 10; Complaint, Exs. A-B.
19 b. Defendants’ Products Are Confusingly Similar
20 In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (“Sleekcraft”),
21 abrogated on other grounds by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792
22 (9th Cir. 2003), the Ninth Circuit enumerated the following factors relevant to
23 establishing liability based on a likelihood of confusion: (i) strength of the mark or
24 trade dress; (ii) proximity of goods; (iii) similarity of the trade dress; (iv) evidence of
25 actual confusion; (v) marketing channels used; (vi) type of goods and the degree of
26 care likely to be exercised by purchaser; (vii) defendant’s intent in selecting the mark;
27 and (viii) likelihood of expansion of the product lines. Id. at 348. Because
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1 Defendants have mimicked Plaintiffs’ trade dress associated with the GELISH mark
2 and embedded therein the generic phrase “Gel Polish” rather than GELISH in
3 substantially the same stylized font and lettering against the identical grey scrollwork
4 highlights over a white background with similar lettering on the front of the bottle, a
5 conclusion of a likelihood of confusion is unavoidable. Indeed, each of the likelihood
6 of confusion factors weighs in favor of an injunction.
7 i. Strength of GELISH marks
8 Trade dresses are afforded varying levels of protection according to the strength
9 of the mark. Sleekcraft, 599 F.2d at 349. Arbitrary or fanciful marks are the strongest
10 and are entitled to the “widest ambit of protection from infringing uses.” Id. District
11 Courts in this circuit have considered the length of time that a trade dress has been in
12 use to be indicative of the strength of the trade dress especially where, as here,
13 plaintiffs have spent considerable time and money on extensive advertising. See Fiji
14 Water, 741 F. Supp. 2d at 1179 (“Its distinctive trade dress has been further
15 strengthened since 1997 by extensive advertising.”).
16 In this case, Plaintiffs are entitled to a presumption that their marks are
17 protected under the Lanham Act because Plaintiffs hold valid and subsisting
18 registrations for trademarks in the United States. Tingler Decl. ¶ 10. Moreover, the
19 GELISH marks are among the strongest marks because they are or include a fanciful,
20 coined term. Further, because of the extensive use by Plaintiffs, the GELISH marks
21 have come to be highly associated by consumers as an indicator of source and quality.
22 Tingler Decl. ¶¶ 7-9, 12-17. Accordingly, the GELISH marks are strong, and this
23 favor further supports Plaintiffs’ request for injunctive relief.
24 ii. Proximity of Goods
25 Where the goods are related, there is a danger that the public will mistakenly
26 assume there is an association between the producers. Sleekcraft Inc., 599 F.2d at
27 349. A lesser degree of similarity in the marks is required for a finding of likelihood
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1 of confusion where the public is more likely to make such an association. Id. Here, in
2 direct competition with Plaintiffs, Defendants are selling gel polish, foundation and
3 topcoat. There is 100% relatedness between the goods. To an ordinary observer, the
4 goods are the same. Therefore, this factor also weighs heavily in favor of Plaintiffs.
5 iii. Similarity of the Marks
6 Defendants are using essentially identical trade dress to sell their product.
7 Down to the script, color, and placement of the marks on the bottles, there is little
8 difference between Defendants’ counterfeit marks and genuine GELISH marks.
9 Moreover, the GEL POLISH marks used by Defendants closely mimic the look and
10 sound of the GELISH mark. Thus, this factor weighs heavily in favor of Plaintiffs and
11 the issuance of a TRO and preliminary injunction.
12 iv. Actual Confusion
13 Evidence of actual consumer confusion is not required to prove that a likelihood
14 of confusion exists, and “failure to prove instances of actual confusion is not
15 dispositive.” Id. Nevertheless, in this case, actual confusion exists in the marketplace.
16 Consumers have complained to Plaintiffs about the low-quality nature and poor
17 performance of imitating product. Tingler Decl. ¶¶ 28-29, 35. Therefore, this factor
18 also weighs heavily in favor of Plaintiffs and the issuance of injunctive relief.
19 v. Marketing Channels Used
20 There is an increased likelihood of confusion where the goods are sold or
21 marketed in the same channels. Here, the products have been sold at trade shows and
22 over the Internet. See Tingler Decl. ¶¶ 14, 33, 45. The same purchasers are exposed
23 to both Defendants’ spurious imitations and Plaintiffs’ genuine products. Thus, this
24 factor also weighs in favor of Plaintiffs.
25 vi. Type of Goods and Degree of Care
26 The Ninth Circuit assesses purchaser care by the typical buyer exercising
27 ordinary caution standard. Sleekcraft Inc., 599 F.2d at 349. Even where buyers may
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1 have expertise in the field or when goods are expensive confusion may still be likely.
2 Id. Price is also relevant to this factor. The lower the price of a product, the less
3 careful the typical potential purchaser is expected to be and the more reliance
4 consumers will have on brand names, thereby increasing the likelihood of confusion.
5 E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1293 (9th Cir. 1992)
6 (“Gallo”) (“consumers tend to exercise less care when purchasing lower cost items
7 like wine and cheese, and thus rely more on brand names”). Here, the goods (gel
8 polish foundation and topcoat) are relatively inexpensive items. Accordingly,
9 consumers will generally exercise a low degree of care and rely more on the brand
10 name in purchasing product. Therefore, this factor weighs in favor of Plaintiffs.
11 vii. Defendants’ Intent
12 If an infringer “adopts his designation with the intent of deriving benefit from
13 the reputation of the trade-mark or trade name, its intent may be sufficient to justify
14 the inference that there are confusing similarities.” Pacific Telesis v. International
15 Telesis Comms., 994 F.2d 1364, 1369 (9th Cir.1993) (quoting Restatement of Torts,
16 § 729, Cmt. (b) (1938)). Indeed, bad faith intent to deceive, without more, is
17 sufficient to support a finding of a likelihood of confusion. See Gallo, 967 F.2d at
18 1293. Here, Defendants’ sales of spurious imitations create a presumption of bad
19 faith. Moreover, given the famous nature of the GELISH marks, trade dress and
20 bottle, the publicized nature of prior lawsuits involving similar products and the
21 repeated take-down requests involving Defendants’ products, Defendants undoubtedly
22 know they are selling infringing product and are intentionally trading off Plaintiffs’
23 goodwill and reputation. Tingler Decl. ¶¶ 39, 45-48, Malynn Decl. ¶¶ 2-7.
24 viii. Likelihood of Expansion
25 Because the products at issue are already directly competitive, no likelihood of
26 expansion is needed to establish confusion. Thus, because all eight factors weight in
27 Plaintiffs’ favor, Plaintiffs have a high probability of success on the merits.
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1 2. Patent Infringement
2 Under Federal Circuit law, “[l]ikely success on the merits requires that the
3 patent-in-suit likely is (a) infringed and (b) valid.” Titan Tire Corp. v. Case New
4 Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009). Infringement is shown when the
5 accused “device includes all elements of the claim.” Trebro Mfg., Inc. v. Firefly
6 Equip., LLC, 748 F. 3d 1159, 1166 (Fed. Cir. 2014). A claim is invalid as anticipated
7 if a prior art reference discloses all of claim limitations. Impax Labs., Inc. v. Aventis
8 Pharm., Inc., 468 F.3d 1366, 1381 (Fed. Cir. 2006). The burden of proof on invalidity
9 remains with the defendant. Titan Tire, 566 F. 3d at 1377 (“[T]he evidentiary burdens
10 at the preliminary injunction stage track the burdens at trial.”).
11 a. Design Patent Infringement
12 Design patents are presumed valid. Spigen Korea Co. v. Ultraproof, Inc., 955
13 F.3d 1379, 1383 (Fed. Cir. 2021). Liability attaches if the ordinary observer would
14 find the accused product’s design substantially the same as the claimed design such
15 that she might buy the accused product thinking it is the other. See Egyptian Goddess,
16 Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008). A plaintiff has a reasonable
17 likelihood of success if, in the eyes or an ordinary observer, given such attention as a
18 purchaser usually gives, two designs are substantially the same. See Gorham Co. v.
19 White, 81 U.S. 511, 528 (1872). Here, the patented design and novel feature is simply
20 a nail polish bottle with a transparent window. The ’824 Patent claims the ornamental
21 design for a bottle with transparent window shown from multiple perspectives:
22
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1 Complaint, ¶¶108-09; Tingler Decl. ¶ 47. On April 3, 2012, the USPTO issued the
2 ‘824 Patent entitled “Bottle with Transparent Window”; the named inventor is Danny
3 Lee Haile, who assigned the patent to Nail Alliance, LLC. Ibid.
4 Plaintiffs are likely to prevail on their design patent infringement claim
5 because Defendants are infringing the ‘824 Patent by offering for sale and shipping
6 into the United States a bottle with a transparent window of the claimed design – the
7 allowed and asserted novel feature – such that a consumer would mistakenly purchase
8 Defendants’ bottle rather than the commercial embodiment of the ‘824 Patent:
9
10
11
12
13
14
15
16 b. Utility Patent Infringement

17 With respect to utility patents, determining liability for infringement generally
18 involves a two-step process: (1) the proper construction of the asserted claim; and (2)
19 a determination whether the claim as properly construed reads on the accused product.
20 ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F. 3d 1312, 1319 (Fed.
21 Cir. 2012). Claim construction is appropriate if necessary to clarify what the patentee
22 covered by the claims. U.S. Surgical Corp. v. Ethicon, Inc., 103 F. 3d 1554, 1568
23 (Fed. Cir. 1997). However, not every claim limitation requires construction. Id. In
24 fact, terms often are simply accorded their plain and ordinary meanings. See O2
25 Micro, Int’l Ltd., v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir.
26 2008) (claim construction only required when plain and ordinary meaning is
27 inadequate or readily in dispute by party opposing such meaning).
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1 On September 10, 2013, the USPTO issued the ‘739 Patent, entitled Package
2 for Colored Products. Pertinent here is Claim 8 of the ’739 Patent, which provides:
3 8. A cosmetic container for containing a colored
photocurable cosmetic product, said container comprising a
4 transparent bottle substantially covered with a coating and
having at least one transparent product viewing area adapted
5 to allow the product to show therethrough; wherein the
coating substantially reduces transmission of at least one
6 wavelength of light capable of photo-curing said colored
cosmetic product that would otherwise pass through the
7 bottle to the contained colored cosmetic product;
8 wherein said viewing area substantially lacks said coating;
and
9
wherein said colored cosmetic product is a nail polish, nail
10 gel, or a combination or modification thereof.
11 Plaintiffs are likely to prevail on their utility patent infringement claim because
12 Defendants’ accused bottle reads on each limitation in Claim 8. For example, the
13 accused products are cosmetic containers for containing a gel nail polish that is a
14 colored photocurable cosmetic product. See Malynn Decl. ¶ 11, Compl. Ex. F at pp.
15 1-3 (“6PCS Colors Gel Polish”) (“Step 4: Apply the color gel polish, then cure with
16 the nail dryer.”). These transparent bottles are substantially covered with a coating to
17 prevent UV/LED transmission to the photocurable gel polish, and also have a small
18 transparent window without any coating for a user to see the color of the gel polish in
19 the containers. Ibid. As demonstrated by the figures included herein, the accused
20 products include a transparent window for viewing the color of the gel polish
21 contained within the bottle, and the transparent window does not include, or in the
22 alternative substantially lacks, the coating that prevents light that could cure the gel
23 polish. Finally, the accused products are nail gel polishes. See Compl., Ex. F, p. 3
24 (“6PCS Colors Gel Polish”). Because each claim limitation is met, Plaintiffs are
25 likely to prevail on their patent infringement claim.
26 B. Plaintiffs Are Likely Suffering Irreparable Injury
27 Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a), provides that:
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A plaintiff seeking [an] injunction shall be entitled to a rebuttable

1 presumption of irreparable harm upon a finding of a violation
identified in this subsection in the case of a motion for a permanent
2 injunction or upon a finding of likelihood of success on the merits for
a violation identified in this subsection in the case of a motion for a
3 preliminary injunction or temporary restraining order.
4 With this amendment to the Lanham Act, Congress resolved a circuit split regarding
5 the presumption of irreparable harm after eBay Inc. v. MercExchange, L.L.C., 547
6 U.S. 388 (2006). Some Circuits had erroneously stopped recognizing a presumption
7 of irreparable harm arising from a likelihood of confusion and required evidence that
8 irreparable harm was likely absent an injunction. See Herb Reed Enterprises LLC v.
9 Florida Entertainment Management Inc., 736 F.3d 1239 (9th Cir. 2013).
10 Plaintiffs are entitled to the presumption of irreparable harm because neither
11 Plaintiffs’ ownership of federal trademark registrations nor a likelihood of confusion
12 arising from Defendants’ spurious imitations are disputed. See Nintendo of Am., Inc.
13 v. Storman, No. CV197818CBMRAOX, 2021 WL 4772529, at *2 (C.D. Cal. Aug. 5,
14 2021). The evidence of record in this case also affirmatively establishes irreparable
15 harm arising from Defendant’s sales of the accused products.7
16 Based on the low cost and poor quality of spurious imitations, Nail Alliance has
17 not only received numerous complaints from customers who mistakenly purchased
18 knock-off products, but also is experiencing price erosion, loss of goodwill as a brand
19 leader among distributors of authentic GELISH products, and damage to its reputation
20 due to Defendant’s confusingly similar products. See Tingler Decl., ¶¶ 28-31, 36-37,
21 49-54. Based on U.S. Amazon sales, alone, Defendant has generated over $4.8
22 million in gross revenues trading off and injuring the goodwill and reputation of the
23 GELISH brand trade dress and bottle with cheap, inferior product. Id. ¶¶ 45, 55.
24
7
Irreparable harm is harm that an award of monetary damages cannot adequately compensate.
25 Celsis in Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922, 930 (Fed. Cir. 2012); Ariz. Dream Act
Coalition v. Brewer, 757 F.3d 1053, 1068 (9th Cir. 2014). Evidence of intangible injuries, such as
26 damage to reputation or goodwill, is proof of irreparable harm. See Rent-A-Car, Inc. v. Canyon
Television and Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991). Similarly, price erosion,
27 loss of customers from diverted sales, and loss of distributors or business opportunities are all valid
grounds for a court to find irreparable harm. See Celsis in Vitro, 664 F.3d at 930.
28
163113.00103/128821394v.1 22
#:141
1 C. The Injury to Plaintiffs Outweighs Any Harm to Defendants

2 In balancing the harms between Plaintiffs and Defendants, this Court applies a
3 sliding scale. “[T]he more net harm an injunction can prevent, the weaker a plaintiff’s
4 claim on the merits can be while still supporting some preliminary relief.” Reilly v.
5 City of Harrisburg, 858 F.3d 173, 178 (3d Cir. 2017). Here, the balance of harms tips
6 decidedly in Plaintiffs’ favor. Absent a restraining order, Defendants would continue
7 to attract consumers browsing the web by mimicking the GELISH trade dress and
8 bottle, thereby acquiring goodwill that belongs to Plaintiffs. In contrast, any potential
9 harm to Defendants would be purely economic, consisting of a loss of ill-gotten gains
10 from infringing products, and ameliorated by the posting of a bond.
11 D. The Public Interest Is Best Served By Enjoining Counterfeiting
12 “As a practical matter, if a plaintiff demonstrates both a likelihood of success
13 on the merits and irreparable injury, it will almost always be the case that the public
14 interest will favor the plaintiff.” AT&T Co. v. Winback and Conserve Program, Inc.
15 42 F.3d 1421, 1427 n.8 (3d Cir. 1994). “In a trademark case, the public interest is
16 most often a synonym for the right of the public not to be deceived or confused.” S &
17 R Corp. v. Jiffy Lube Intern., Inc., 968 F.2d 371, 379 (3d Cir. 1992). Here, consumers
18 in this Judicial District and around the country are being deceived and confused and
19 potentially exposed to hazardous materials by Defendants’ sales of spurious imitations
20 of GELISH brand product. Accordingly, the public interest is served by issuing a
21 TRO and a preliminary injunction to enjoin the such infringing activity.
22 V. BOND AMOUNT
23 The posting of security upon issuance of a TRO or preliminary injunction is
24 vested in the Court’s sound discretion. Rathmann Grp. v. Tanenbaum, 889 F.2d 787,
25 789 (8th Cir. 1989). Because of the strong nature of Plaintiffs’ evidence of
26 infringement and unfair competition, Plaintiffs respectfully request that the Court
27 require a minimal bond less than ten thousand dollars ($10,000.00). See, e.g., Deckers
28
163113.00103/128821394v.1 23
#:142
1 Outdoor Corporation v. The Partnerships, et al., No. 15-cv-3249 (N.D. Ill. April 4,
2 2015) ($10,000 bond).
3 VI. CONCLUSION
4 Based on the foregoing, Plaintiffs respectfully request this Court grant the
5 following orders on an ex parte basis: (a) interim injunctive relief pending service
6 through the Hague and (b) an order to show cause why a preliminary injunction
7 should not issue.
8 Dated: May 18, 2022 Respectfully submitted,
9
10 /s/ Todd M. Malynn

Todd M. Malynn
11 BLANK ROME LLP
2029 CENTURY PARK EAST, 6TH FLOOR
12 LOS ANGELES, CA 90067
EMAIL:TODD.MALYNN@BLANKROME.COM
13
Jonathan W.S. England
14 BLANK ROME LLP
1825 Eye Street, SW
16
Attorneys for Plaintiffs Nail Alliance,
17 LLC and Nail Alliance – North America,
Inc.
18
19
20
21
22
23
24
25
26
27
28
163113.00103/128821394v.1 24
#:152
#:153
#:154
#:155
#:156
#:157
#:158
#:159
#:160
#:161
#:162
#:163
Exhibit 1
#:173
#:174
#:175
#:176
#:177
Exhibit 2
Exhibit 3
#:194
#:195
#:196
#:197
#:198
#:199
#:200
#:201
#:202
#:203
Exhibit 4
#:213
#:214
#:215
#:216
#:217
#:218
#:219
#:220
#:221
#:222
#:223
Exhibit 5
#:233
#:234
#:235
#:236
#:237
Exhibit 6
Exhibit 7
Exhibit 8
Case 8:22-cv-00937-DOC-DFM
Case 3:21-cv-01576-ADC
Document
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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO
NAIL ALLIANCE, LLC, a Delaware Civil No. 21-1576 (ADC)

limited liability company, NAIL
ALLIANCE – NORTH AMERICA, INC.,
a California corporation, Trademark Infringement; Trademark
Counterfeiting; Trade Dress Infringement;
False Designation of Origin; Unfair
Plaintiffs, Competition; Dilution and Tarnishment;
Request for Temporary Restraining Order;
v.
Seizure Order; Preliminary and Permanent
YEA YEA VN NAILS SUPPLY a/k/a YEA Injunction; and Damages
YEA NAILS & BEAUTY SUPPLY, an
entity of unknown origin, DONG THI
NGUYEN, an individual, and DOES 1-10, FILED UNDER SEAL PURSUANT TO
inclusive. 15 U.S.C. § 1116 (d)(8) AND STANDING
ORDER NO. 9
Defendants.
JURY DEMAND
PRELIMINARY INJUNCTION ORDER
Upon consideration of Plaintiffs’ Nail Alliance, LLC and Nail Alliance – North America,
Inc. (collectively, “Plaintiffs” or “Nail Alliance”) Complaint, Ex Parte Motion for Temporary
Restraining Order, Seizure Order, and Order to Show Cause, as well as the exhibits, declaration, and
supporting memoranda submitted therewith, and the provisions of Fed. R. Civ. P. 65 and 15 U.S.C.
§1116(d), on December 14, 2021, this Court issued a Temporary Restraining Order, Seizure Order,
and Order to Show Cause against Defendants Yea Yea VN Nails Supply a/k/a Yea Yea Nails &
Beauty Supply and Dong Thi Nguyen (“Defendants”) as to why a Preliminary Injunction should not
be issued, pursuant to Fed. R. Civ. P. 65, enjoining the Defendants, among others, from
manufacturing, producing, importing, distributing, circulating, selling, offering for sale, advertising,
promoting or displaying any product that is a simulation, reproduction, counterfeit, copy, or colorable
imitation of products bearing the GELISH marks, as defined below. The hearing on the Order to
Show Cause was scheduled for December 27, 2021, at 9:30 AM.
1
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Prior to the hearing and based upon the record evidence, the Parties, through their respective
counsel, discussed Plaintiffs’ request for Preliminary Injunction and Defendants consented to the
issuance of this Preliminary Injunction Order. Accordingly, this Court finds that:
1. This Court has federal-question subject matter jurisdiction over the claims arising
under the Lanham Act, 15 U.S.C. § 1051 et seq., and supplemental jurisdiction over Plaintiffs’
claims arising under Puerto Rico law.
2. This Court has personal jurisdiction over the Defendants.
3. Venue is proper in this Court under 28 U.S.C. § 1391(b).
4. The GELISH mark is protected by multiple federal trademark registrations,
including United States Trademark Registration Nos. 4,096,115 (standard character mark) and
3,857,946 (design plus words) for use in nail care preparations. (See Compl., Exs. 1-2.)
5. The GELISH design, which includes a unique three-dimensional configuration and
scrollwork pattern, is also protected by United States Trademark Registration Nos. 4,473,557 and
4,473,558. (See Compl., Exs. 3-4.)
6. Plaintiffs further distinguish their products with artistic and attractive bottle designs
and ornamentation (the “GELISH brand bottle”). The GELISH brand bottle has clean lines and
distinctive scroll artwork on a white background and features the dominant GELISH marks as
illustrated below. These unique and inherently distinctive features of the GELISH brand bottle
are protected as trade dress under both state and federal law. (Declaration of GariDawn Tingler
(“Tingler Decl.”) ¶¶ 13-15.)
7. Nail Alliance has the exclusive worldwide license from Nail Alliance
8. Pursuant to a license agreement with Nail Alliance, LLC, Nail Alliance – North
America, Inc. has exclusive worldwide rights to the GELISH mark, design, and trade dress
2
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(collectively, the “GELISH marks”). Nail Alliance, LLC and Nail Alliance – North America, Inc.
have never abandoned the GELISH marks. (Tingler Decl. ¶¶ 10, 15.)
9. None of the Defendants is an authorized distributor of Nail Alliance’s GELISH
brand products. (Tingler Decl. ¶ 11.)
10. Plaintiffs have established a substantial likelihood of success on the merits of their
causes of action for violations of the Lanham Act, including for trademark infringement,
counterfeiting, and unfair competition since the exclusive rights holder has not authorized
Defendants to use any of the GELISH marks.
11. Plaintiffs have demonstrated they are suffering immediate and irreparable injury
as a result of Defendants’ manufacture, importation, distribution, display, sale, and offer for sale
of spurious or counterfeit products bearing imitation GELISH marks and that they will continue
to suffer irreparable harm and injury should a Preliminary Injunction not issue promptly.
13. Good cause exists for entry of an order prohibiting Defendants, their agents,
servants, employees, assigns, and attorneys, and any and all persons in active concert or
participation with any of them, including but not limited to Linda Gel Nails and Alibaba.com, Inc.,
from manufacturing, importing, distributing, displaying, selling, and offering for sale spurious or
counterfeit products bearing imitation GELISH marks, as well as destroying counterfeit and
infringing products and related materials, and concealing assets, computer, and business records
and other evidence regarding the same.
14. The balance of potential harm to Defendants in restraining their trading in GELISH
goods is outweighed by the ongoing risk of harm to Plaintiffs and to their reputation and goodwill
as a manufacturer of high-quality products if such relief is not granted.
3
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15. The public interest and the balance of equities favor issuance of the TRO and
seizure order in order to protect Plaintiffs’ trademark interests, to protect the public from fraud and
confusion regarding counterfeit goods, and to protect consumers of mislabeled and potentially
harmful products.
PRELIMINARY INJUNCTION
In accordance with the foregoing findings of fact and conclusions of law, it is therefore
ORDERED that Defendants, their respective officers, directors, employees, agents, attorneys,
subsidiaries, and distributors, and any and all persons in active concert or participation with any
of them, including but not limited to financial institutions, financial service providers, and/or
mobile payments/processing companies and/or platforms (e.g., eBay, PayPal, Venmo), as well as
Linda Gel Nails and Alibaba.com, Inc., who receive actual notice of this Order by personal, e-mail
or online service or otherwise, are enjoined from:
a. directly or indirectly manufacturing, purchasing, importing, advertising,
promoting, offering to sell, selling, distributing, transferring, concealing,
or otherwise disposing of any products bearing any of the GELISH marks,
or imitations of the same, other than those which Plaintiffs confirm in
writing are actually manufactured or distributed by Plaintiffs; and
b. secreting, concealing, destroying, selling off, transferring, or otherwise
moving or disposing of: (i) any products or promotional materials, not
manufactured or distributed by Plaintiffs, bearing any of the GELISH
marks, or any confusingly similar marks, trade dress or bottle design; (ii)
any evidence relating to the manufacture, purchasing, importation,
advertising, promotion, distribution, sale, offer for sale, or transfer of any
4
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products bearing any GELISH mark or confusingly similar mark or bottle
design; and (iii) financial income or assets relating to any account used in
connection with the sale of any “GELISH” brand products, including but
not limited accounts held at, or maintained with, financial institutions,
financial service providers, and/or mobile payments/processing companies
and/or platforms (e.g., eBay, PayPal, Venmo).
c. Instructing, assisting, aiding or abetting any other person or entity in
engaging in or performing any of the activities referred to in subparagraphs
(a) and (b) above.
This Preliminary Injunction Order shall remain in effect until modified by the Court or
superseded by a final judgment or other resolution of this matter. The Parties are encouraged to
resolve all pending matters via settlement. See Candelario del Moral v. UBS Fin. Servs., 699 F.3d
93, 107 (1st Cir. 2012) (“we do not think that we are crossing any lines in ‘suggesting that this is a
case best resolved by settlement.’”) (quoting Bos. Edison Co. v. Fed. Energy Regulatory Comm’n,
233 F.3d 60, 69 (1st Cir. 2000)).
IT IS SO ORDERED.
In San Juan, Puerto Rico, this 27th day of December 2021.
/s/ AIDA M. DELGADO-COLON

AIDA M. DELGADO-COLON
United States District Judge
5
Exhibit 9
Case
5/16/22, 8:22-cv-00937-DOC-DFM
11:29 AM Document 11-11 - Filed
Amazon.com 05/18/22 Page 2 of 2 Page ID #:250
Order 111-3982687-9178607
Final Details for Order #111-3982687-9178607
Print this page for your records.
Order Placed:
May 11, 2022
Amazon.com order number:
111-3982687-9178607
Order Total:
$17.22

Shipped on May 12, 2022

Items Ordered Price
1
of:
Vishine 15ml No Wipe Top Coat Base Coat Gel Nail Polish Soak off UV LED Drying Long Lasting Shiny Nail Varnish Set $8.99
Sold by: Mocobelle (seller profile)
Condition: New

Shipping Address:
AMY MACGREGOR
732 ARBOLADO DR
FULLERTON, CA 92835-1808
United States

Shipping Speed:
FREE Prime Delivery
Shipped on May 12, 2022

Items Ordered Price
1
of:
Vishine Gelpolish Professional Manicure Salon UV LED Soak Off Gel Nail Polish Varnish Color (1361) $6.99
Sold by: Mocobelle (seller profile)
Condition: New

Shipping Address:
AMY MACGREGOR
732 ARBOLADO DR
United States

Shipping Speed:
FREE Prime Delivery
Payment information
Payment Method: Item(s) Subtotal: $15.98
Amazon.com Visa Signature
| Last digits: 8932
Shipping & Handling: $0.00

-----
Billing address Total before tax: $15.98
AMY MACGREGOR
Estimated tax to be collected: $1.24
732 ARBOLADO DR
-----
Grand Total:$17.22
United States
Credit Card transactions Visa ending in 8932: May 12, 2022: $17.22
To view the status of your order, return to Order Summary.
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© 1996-2022, Amazon.com, Inc. or its affiliates
https://www.amazon.com/gp/css/summary/print.html/ref=ppx_yo_dt_b_invoice_o04?ie=UTF8&orderID=111-3982687-9178607 1/1
1 BLANK ROME LLP

Telephone: 424.239.3400
4 Facsimile: 424.239.3434
6 BLANK ROME LLP
1825 Eye Street, SW
Telephone: 202.420.2200
8 Facsimile: 202.420.2201
NAIL ALLIANCE, LLC AND
10 NAIL ALLIANCE - NORTH AMERICA, INC.
11
12
UNITED STATES DISTRICT COURT
13
CENTRAL DISTRICT OF CALIFORNIA – SOUTHERN DIVISION
14
15
NAIL ALLIANCE, LLC AND NAIL Case No. 8:22-cv-00937-ADS
16 ALLIANCE - NORTH AMERICA INC.,
DECLARATION OF TODD M.
17 Plaintiff, MALYNN IN SUPPORT OF EX
PARTE APPLICATION FOR (A)
18 vs. INTERIM INJUNCTIVE RELIEF
AGAINST DEFENDANT
19 VISHINE ENTERPRISE LIMITED, and [PEDNING SERVICE THROUGH
DOES 1 through 10, inclusive, THE HAGUE CONVENTION AND
20 (B) ORDER TO SHOW CAUSE
Defendants. WHY A PRELIMINARY
21 INJUNCTION SHOULD NOT
ISSUE
22
Complaint Filed: May 9, 2022
23
24
25 I, Todd M. Malynn, declare:

26 1. I am a partner of Blank Rome LLP, counsel for plaintiffs Nail Alliance,
27 LLC and Nail Alliance – North America, Inc. (collectively, “Plaintiffs” or “Nail
28 Alliance”). I have practiced intellectual property law for over twenty-five years.
163113.00103/128821414v.1
1 During this time I have counseled on and brought multiple enforcement actions
2 against foreign nationals residing in China in an effort to, among other things, enjoin
3 the sales of counterfeit products as well as cheap, knock-off products violating the
4 intellectual property rights of U.S. companies. I have personal knowledge of the facts
5 contained in this Declaration. If called as a witness, I would competently testify to
6 these facts based on my own personal knowledge.
7 2. Pursuant to Rule 65(b)(2) of the Federal Rules of Civil Procedure, in an
8 effort to give notice to defendant Vishine Enterprise Limited (“Defendant” or
9 “Vishine”) of Plaintiffs’ ex parte application for interim injunctive relief pending
10 service of process through the Hague Convention and for an order to show cause why
11 a preliminary injunction should not issue, I caused the documents listed below in
12 paragraph 6 to be sent via electronic mail and Federal Express delivery to the
13 following addresses:
14 Vishine Enterprise Limited
heyanguk@hotmail.com
15 Unit B, Neich Tower,
128 Gloucester Rd.,
16 Wanchai, Hong Kong 999077
17 3. Both the email and physical addresses for Defendant were obtained via a
18 search of public records conducted by Blank Rome LLP’s library services at my
19 request and verified by Blank Rome LLP’s office in Shanghai, which was also done at
20 my request. My legal assistant sent a cease-and-desist letter to Defendant to the above
21 email and physical addresses notifying Defendant of Plaintiffs’ registered patent and
22 trademark rights in the United States. We verified that the email was not returned but
23 was opened although no response was received. Attached as Exhibit 1 is a copy of the
24 cease-and-desist letter and email correspondence to Defendant.
25 4. On behalf of Nail Alliance, I have sent multiple cease-and-desist letters
26 to companies like Defendant’s company selling accused products over the Internet
27 using the same process I used to obtain an email and a physical address for Defendant.
28 Two companies that were also selling accused products responded to my letters and
163113.00103/128821414v.1 1
1 settled with Nail Alliance. Defendant is among the parties selling accused products
2 who did not respond to my correspondence, which is normal in cases involving
3 infringing products from China. For the reasons below and set out in the ex parte
4 application, further efforts to notify Defendant of this proceeding should not be
5 required other than service of process through the Hague Convention.
6 5. Nail Alliance has retained a brand protection service, called Red Points,
7 to conduct and who has conducted on-line take-down requests, including on
8 Amazon.com. I have assisted Red Point’s representative in the take-down process,
9 including with respect to listings selling Defendant’s look-a-like gel polish,
10 foundation and topcoat products in the accused bottle mimicking the GELISH trade
11 dress. Take-down requests on platforms like Amazon.com take time to process.
12 During such time the challenged listings remain up diverting sales from genuine
13 product. Once a take-down request is approved and the accused listing is taken down,
14 it generally provides only temporary relief because, rather than contest the take down,
15 the seller or the seller’s agents or representatives simply put up a new listing using the
16 same images, which is not prevented by Internet platforms. This “whack-a-mole”
17 process has occurred numerous times with Defendant’s listings. Thus the take-down
18 process is not only time consuming and expensive, but also largely futile.
19 6. Because Nail Alliance was unable to get Defendant to voluntarily stop
20 selling the accused products over the Internet via direct correspondence or though
21 take-down requests, Nail Alliance has commenced this action. Nail Alliance seeks
22 injunctive relief that will enjoin, among other things, the listing and offering to sell
23 Defendant’s look-a-like gel polish, foundation and topcoat in California and in other
24 states, including over Internet platforms and marketplaces, pending a preliminary
25 injunction hearing after service of process under the Hague Convention.
26 7. On May 18, 2022, AJ Cruickshank, at my direction, sent to Defendant at
27 the above email and physical addresses the following documents—translations of
28 which Plaintiffs are prepared to obtain and serve in accordance with the Hague
163113.00103/128821414v.1 2
1 Convention. I will also direct a colleague in Blank Rome LLP’s office in Shanghai to
2 confirm the issuance of any Order on the ex parte application as well:
3 • Issued Summons and Complaint with exhibits
4 • Civil Case Cover Sheet
5 • NEF Notification of case assignment
6 • Ex Parte Application for (a) Interim Injunctive Relief Pending
Service Through the Hague Convention and (b) Order to Show
7
Cause Why a Preliminary Injunction Should Not Issue
8
• Memorandum of Points and Authorities
9
• Declaration of GariDawn Tingler
10
• Declaration of Todd M. Malynn
11
• Proposed Order Granting (a) Interim Injunctive Relief Pending
12
Service Through the Hague Convention and (b) Order to Show
13
Cause Why a Preliminary Injunction Should Not Issue
14
15
16 8. I have previously served documents on foreign defendants in China

17 through the Hague Convention, including in the following cases: Hand & Nail
18 Harmony, Inc. v. Lenguyen, USDC Central District of California, Case No. 8:13-cv-
19 01021; St. Jude Medical, Inc. v. Nervicon Ltd., Los Angeles Superior Court, Case No.
20 BC424443; and Oomph Innovations, Inc. v. Shenzhien Bolsesic Electronic Co. LTD,
21 et al, USDC Central District of California, Case No. 3:18-cv-05561.
22 9. In the first two above-listed cases, the defendants were eventually served
23 but did not appear to defend the actions and judgments were entered against them. In
24 both of those cases I recall it took more than nine months to complete service through
25 the Hague Convention. In both cases the defendants in China simply stopped doing
26 business, at least under their former names.
27 10. It now takes longer to affect service through the Hague Convention due
28 to changes made in the process in China, not to mention possible delays due to the
163113.00103/128821414v.1 3
1 COVID-19 pandemic. Thus, in the third case, because service was not completed
2 after six month, the district court entered a default judgment against the defendant
3 pursuant to provisions in the Hague Convention, which now permits such resolution
4 of cases if a signature country fails to complete and return service within six month.
5 11. In my experience, ISP providers and Internet marketplaces (such as
6 Amazon, eBay and Alibaba) do not effectively police patent or trademark
7 infringement absent a court order. In fact, it is my understanding that they prefer
8 being served with court orders rather than being asked to make judgment calls as to
9 whether an accused product reads on a patent or infringes a trademark or trade dress.
10 Having possession of a court order covering an accused product also helps to avoid,
11 and can be the only effective way to avoid, re-occurring efforts by defendants to sell
12 infringing products over their marketplaces, which is not an uncommon practice by
13 sellers in China to overcome take-down requests. Given the amount of time it takes to
14 affect service through the Hague Convention on defendants in China selling cheap,
15 knock-off products over the Internet to U.S. consumers, obtaining a court order
16 enforcing a registered patent or trademark that can then be served on ISP providers
17 and Internet marketplaces as parties acting in concert or participation with defendants
18 in the stream of commence selling the accused products is often the only real remedy
19 available to registered patent and trademark holders in the United States.
20 12. I have reviewed U.S. Patent 8,528,739 (“the ‘739 Patent”) and the related
21 correspondence between Nail Alliance and the United States Patent and Trademark
22 Office (“USPTO”) during prosecution of the application. I have also reviewed the
23 Amazon invoice for Defendant’s gel polish, foundation and topcoat products
24 purchased off Amazon as described in paragraph 46 of the Declaration of GariDawn
25 Tingler, and had the bottles physically inspected including by me and others at Nail
26 Alliance. As can be seen from the images below, the bottles are glass and treated with
27 a coating to protect the contents from ultraviolet light—except where the gel polish
28 bottle has a clear translucent window as claimed in the ‘729 Patent showing the color
163113.00103/128821414v.1 4
1 of the gel polish. Each bottle has a screen print mimicking the GELISH trade dress,
2 including a label that explicitly states, “MUST use with UV/LED LAMP.” Hence, as
3 shown in the figures and verified through visual inspection, the bottles are transparent,
4 treated with a powdered coating except as claimed and indicated, and contain within
5 them a UV/LED lamp curable gel polish, foundation or topcoat. In other words,
6 Defendant’s products are containers for containing a gel polish that is photocurable by
7 a UV/LED lamp. See Complaint, Ex. D at pp. 1-3 (“6PCS Colors Gel Polish”) (“Step
8 4: Apply the color gel polish, then cure with the nail dryer.”).
9
10
11
12
13
14
15
16
17 I declare under penalty of perjury under the laws of the United States of
18 America that the foregoing is true and correct.
19 Executed this 18th day of May, 2022 in Los Angeles, California.
20
21
22
Todd M. Malynn
23
24
25
26
27
28
163113.00103/128821414v.1 5
#:257
Exhibit 1
#:258
2029 Century Park East | 6th Floor | Los Angeles, CA 90067
Phone: (424) 239-3469
Fax: (424) 389-7610
Email: todd.malynn@BlankRome.com
March 30, 2022
VIA FEDERAL EXPRESS & E-MAIL:
Cong He
Owner, Vishine Trademark No. 4,877,267
1204 Bldg B2,
Nan Jing Xin Cun MinZhi Street
Longhua New District,
Shenzhen, China 518000
Yang He
Oakridge PO 27563
Vancouver, BC Canada V5Z4M4
heyanguk@hotmail.com
Vishine Enterprise Limited

Unit B, Neich Tower,
128 Gloucester Rd.,
Wanchai, Hong Kong
RE: Notice of Infringement of Intellectual Property Rights of Nail Alliance, LLC
Dear Messrs. He:
We represent Nail Alliance, LLC (“Nail Alliance”) in connection with intellectual

property matters. We have been consulted regarding your unauthorized and infringing use of
Nail Alliance’s valuable trademark, trade dress, and patent rights.
As you are no doubt aware, Nail Alliance is a global leader in nail care products industry
with millions of customers in countries around the world. Nail Alliance takes great pride in its
products and takes seriously the protection of its intellectual property rights.
Nail Alliance is the exclusive owner of, and has made continuous and extensive use of,
the renowned GELISH® mark in connection with nail care solutions. In the United States, Nail
Alliance has maintained priority rights in the GELISH® mark for such goods since at least as
early as 2009 and is the exclusive owner of U.S. Registration No. 4,096,115 for GELISH® and
®
No. 3,857,936 for , among many other GELISH-formative registrations worldwide. Nail
Alliance has also maintained priority rights in the POLYGEL® mark for nail care solutions and is
163113.00103/128594390v.1
#:259
Cong He
Yang He
March 30, 2022
Page 2
the exclusive owner of U.S. Registration No. 5,238,109. Copies of the U.S. Certificates of
Registration for these marks are attached as Exhibit A.
In addition, Nail Alliance has invested considerable time and money in its trade dress
rights for its product packaging, specifically, its bottle bearing a solid background with a scroll
work pattern thereon, as registered under United States Trademark Registration Nos. 4,473,557
and 4,473,558 and depicted in Exhibit B. As a result of our client’s continuous and extensive
marketing, promotion, and sale of nail care preparations and related products under its marks and
trade dress, Nail Alliance’s marks and trade dress are well known and have acquired
considerable and extremely valuable goodwill. Further, Nail Alliance owns United States Patent
Nos. D651,515 and D656,824 to a Bottle with Transparent Window, and United States Patent
No. US 8,528,739 B2 titled “Package for Colored Products,” which protect both the design of the
bottle as well as the function of the translucent window as a feature of our client’s proprietary
bottle. Copies of the foregoing patents are attached as Exhibit C.
It has come to our attention that, among other things, Nail Alliance’s trade dress and
patent rights in its bottle have been and are being infringed by your competing VISHINE gel
polish, foundation and top-coat products. You are engaged in, or facilitating, the unauthorized
manufacture and sale of infringing product in the United States in violation of our client’s
intellectual property rights. You are selling product that mimics Nail Alliance’s GELISH®
trademark, trade dress, bottle design and function. You are also using our client’s POLYGEL®
trademark to sell a competing hybrid nail enhancement. Your illicit and intentional use of Nail
Alliance’s intellectual property is a deceptive attempt to capitalize on the goodwill associated
with Nail Alliance’s brands and products, constitutes willful trademark, trade dress, and patent
infringement, and is causing or is likely to cause irreparable injury to Nail Alliance. Such actions
subject you to significant liability for infringement, passing off, dilution and unfair competition
under the Lanham (Federal) Trademark Act and state law, among other violations.
Nail Alliance regards your infringement of its trademarks, trade dress, and patents as a
very serious matter, and will take action to prevent you from continuing to trade off its goodwill,
or any unauthorized or implied association or affiliation between its products and the goods and
services of others. Accordingly, as we consider the range of legal remedies available, to
safeguard our client’s valuable marks and patents from infringement, dilution, wrongful
appropriation, passing off, and unfair competition, we hereby make formal demand upon you on
behalf of Nail Alliance to:
Blank Rome LLP | blankrome.com
www.BlankRome.com
163113.00103/128594390v.1
#:260
Cong He
Yang He
March 30, 2022
Page 3
1. Cease and desist immediately from any further use of or plans to use any mark,
name, logo, key search word, domain name, or other indicia of source that is
identical or confusingly similar to or premised in whole or in part upon
GELISH®, POLYGEL®, or any other Nail Alliance mark, including without
limitation on Amazon.com and any other internet and social media platforms;
2. Cease and desist immediately from any further use of or plans to use any product
packaging that is in any way similar to Nail Alliance’s trade dress and/or design
patents, and/or that violates our client’s rights therein or in U.S. Patent
No. US 8,528,739 B2;
3. Provide written assurances by no later than Wednesday, April 13, 2022, that you
have complied with (1) and (2) above and will permanently refrain from further
infringement of Nail Alliance’s intellectual property rights; and
4. Contact the undersigned to discuss settlement options.
We look forward to receiving a prompt and compliant response from you by Wednesday,
April 13, 2022 concerning this matter. While we would prefer an amicable resolution, if we do
not receive the cooperation sought, we will consider such actions to be willful, and we will
explore all legal avenues available to enforce and protect our client’s valuable intellectual
property rights.
Please contact the undersigned if you have any questions.
Regards,
TODD M. MALYNN
TMM:aj
Attachments
www.BlankRome.com
163113.00103/128594390v.1
#:261
Exhibit A
#:262
#:263
#:264
#:265
Reg. No. 5,238,109 Nail Alliance, LLC (DELAWARE LIMITED LIABILITY COMPANY)
6840 North Oak Trafficway
Registered Jul. 04, 2017 Gladstone, MO 64118
CLASS 3: Cosmetics; Non-medicated nail and skin care preparations; Beauty supplies,
Int. Cl.: 3 namely, nail care kits composed primarily of cuticle oil, UV top coat, nail primer, nail
dehydrator, and also containing assorted nail files and nail buffers, acrylic nail sculpting
Trademark forms, acrylic sculpting nail brush and instruction booklet; Hand and body lotion; Skin scrub;
Nail enamel
Principal Register
FIRST USE 3-1-2017; IN COMMERCE 3-1-2017
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

PARTICULAR FONT STYLE, SIZE OR COLOR
SER. NO. 87-038,043, FILED 05-16-2016

SUSAN ANN RICHARDS, EXAMINING ATTORNEY
#:266
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 # 5238109
#:267
Exhibit B
#:268
#:269
#:270
#:271
#:272
Exhibit C
#:273
US008528739B2
(12) United States Patent (10) Patent No.: US 8,528,739 B2

Haile (45) Date of Patent: Sep. 10, 2013
(54) PACKAGE FOR COLORED PRODUCTS D651,515 S 1/2012 Haile
D651,521 S 1/2012 Haile
D656,824 S 4/2012 Haile
(76) Inventor: Danny Lee Haile, La Mirada, CA (US) 2003,0196914 A1 10, 2003 Tzou et al.
ck
(*) Notice: Subject to any disclaimer, the term of this 587-835.

patent is extended or adjusted under 35
A 3.58 ENE"...O.... IG
2010/0326867 A1* 12/2010 Fresnel ....... 206,459.5
U.S.C. 154(b) by 90 days. 2011/0180510 A1* 7, 2011 Julien et al. ................... 215,379
(21) Appl. No.: 12/951,605 FOREIGN PATENT DOCUMENTS
y x- - - 9 DE 19629392 8, 1997
1-1. JP 1202886 4/2004
(22) Filed: Nov. 22, 2010 KR 30-0266534 9, 2000
WO 2007/052226 5/2007
(65) Prior Publication Data WO 2011/066262 6, 2011
US 2011 FO120907 A1 May 26, 2011 OTHER PUBLICATIONS
O O Pdf file of Nalgene Labware Model 2019 Square Media Bottle, from
Related U.S. Application Data www.nalgenelabware.com website. Prior 2005.*
(60) Provisional application No. 61/264,490, filed on Nov. International Search23,Report
057756 filed Nov. 2010. mailed Mar. 15, 2011 for PCT/US2010/
25, 2009. Written Opinion of the International Searching Authority mailed
Mar. 15, 2011 for PCT/US2010/057756 filed Nov. 23, 2010.
(51) Int. Cl. International Preliminary Report on Patentability issued May 30,
B65D 25/54 (2006.01) 2012 for PCT/US2010/057756 filed Nov. 23, 2010.
(52) U.S. Cl. k .
USPC ............................ 206/776; 220/662; 427/282 cited by examiner
(58) Field of Classification Search - - - - - -
USPC ................. 20,4776,777. ss. 220.663, Primary Examiner David Fidei
53/1311 Gale, PA.
See application file for complete search history. (57) ABSTRACT
(56) References Cited Disclosed are packages including transparent containers such
as bottles and jars comprising a coating that reduces trans
U.S. PATENT DOCUMENTS mission of light through the container. The containers further
2,294,574. A * 9, 1942 Ravenscroft et al. ........ 215/12.1 comprise a product viewing area or window through which
3,547.294. A * 12/1970 Williams ..................... 215, 12.2 the product is visible to a consumer or purchaser. The con
3,896,014 A 7/1975 Rosenberg tainers are disclosed as being useful for protecting photo
4,569,869 A * 2/1986 Kushida et al. .............. 428, 35.7 sensitive products while allowing the color of those products
6,082,777 A * 7/2000 Grosskopfet al. .............. 283,81
D429,154 S 8/2000 Chang to be displayed to the user.
7,010,877 B2 * 3/2006 Geary ............................. 40,310
7,703,226 B2 * 4/2010 Schnuckle ...................... 40,310 20 Claims, 4 Drawing Sheets
#:274
U.S. Patent Sep. 10, 2013 Sheet 1 of 4 US 8,528,739 B2

#:275
s
#:276
s
SU/
s
#:277
s S.
CD
5 S.
OO
CD
s S.
#:278
US 8,528,739 B2
1. 2
PACKAGE FOR COLORED PRODUCTS parent container having a coating thereon. The coating is
adapted to Substantially reduce transmission of light of at
CROSS REFERENCE TO RELATED least one wavelength that can pass through the otherwise
APPLICATION transparent container, e.g., to the contents thereof. The coated
container has at least one Substantially transparent product
This application claims priority to U.S. Provisional Appli viewing area that allows a consumer to observe the color of
cation Ser. No. 61/264,490, filed Nov. 25, 2009, and to Japa the product. Preferably, the container is a glass bottle, the
nese National Application 2010-0 12837, filed May 25, 2010, coating is a baked-on powder coating, and the product is a
the entire disclosures of which are hereby incorporated herein cosmetic product, Such as a product for nails, e.g. polish, gel.
by reference in their entireties. 10 or the like. Also, preferably the product is light-curable and/or
sensitive to light, such as UV light, particularly UV light of
FIELD OF THE INVENTION one or more wavelengths that can pass through the transpar
ent container in the absence of the coating.
This relates to packages for cosmetic products, and in In a second of its several aspects, provided are cosmetic
particular packages for light-sensitive, or photo-curable col 15 containers comprising a transparent bottle orjar Substantially
ored cosmetic products. covered with a coating. The containers comprise at least one
transparent product viewing area adapted to allow the product
BACKGROUND OF THE INVENTION to show therethrough or be readily observed by a consumer or
prospective purchaser. The coating Substantially reduces
Certain products intended for the consumer market have a transmission of at least one wavelength of light that would
color attribute that is important as a selection factor for con otherwise pass through the bottle orjar to the contents. In one
Sumer purchase. For example, cosmetic products, such as embodiment, the bottle or jar is used for cosmetic products,
skin care products, eye care products, lip care products, and Such as nail products, including nail polish, nail gels, or
nail products are frequently selected for purchase by consum combinations thereof, whose color is an important attribute
ers based at least in part on their color. For certain other 25 for a consumer or purchaser.
products, such as many paints, stains, and/or colorants of In yet another of its several aspects, the invention provides
various types, color is among the primary considerations of a methods of reducing undesired curing of a photo-curable
purchaser or user. Thus, it may be important for a consumerto product comprising the steps of:
see the actual color of the product in its container, rather than providing a transparent bottle in which to store the product;
merely to see a “representative sample of that color, for 30 masking at least one surface area of the bottle with a mask
example, on a label. ing material;
However, some colored products are sensitive to one or coating the masked bottle with a coating material that
more wavelengths of light, for example, ultraviolet (“UV) blocks at least one wavelength of light that would oth
light. The products may bleach, polymerize, oxidize, or oth erwise pass through the bottle, and that can cause the
erwise be deleteriously affected by significant exposure to 35 photo-curable product to cure;
such wavelengths. Still other products are specifically removing the mask to produce a product viewing area;
designed to be “activated' or “cured by a particular type or filling the bottle with the photo-curable product; and
wavelength of light, e.g. one or more wavelengths of UV storing the product such that a thin film of cured product
light. For example, certain products are designed to gel or forms behind the product viewing area and that no Sub
polymerize upon exposure to UV light, or certain LEDs. 40 stantial further curing occurs in the product.
The invention disclosed herein provides improved packag Preferably, the photo-curable product is colored and the
ing for protecting light-sensitive or light-curable products, color of the product is thus fully observable to a consumer or
particularly cosmetic products, from potentially damaging prospective purchaser, i.e., through the product viewing area.
effects of environmental light exposure that, e.g. may occur In yet another of its aspects, provided herein are “kits' for
during storage or while being merchandised, while allowing 45 reducing undesired curing of a photo-curable product, the kits
the color or colors of the product to be readily visible to generally comprise:
consumers prior to purchase. a) a transparent bottle Substantially covered with a coating
and having at least one transparent product viewing area
SUMMARY OF THE INVENTION adapted to allow a photo-curable product contained in the
50 bottle to show therethrough; wherein the coating substan
The inventor has surprisingly discovered that a light-sen tially reduces transmission of at least one wavelength of UV
sitive or light-activated product can be stored and merchan light that would otherwise pass through the bottle to the
dised in a transparent container coated with a coating that photo-curable product contained therein;
restricts the transmission of light that would otherwise pass b) a removable cap, lid, or applicator for adapted for
therethrough, and by the inclusion of a small transparent 55 removably sealing the bottle; and optionally,
product viewing area, the products color can be observed. c) a UV-curable product for storing therein.
This is particularly useful for products whose color is an These and other aspects of this disclosure will be more
important determinant or criterion for consumer selection and fully described, along with further details of how to make and
purchase. The coating is preferably opaque, or Substantially use them, with reference to the drawings and detailed descrip
opaque. The viewing area, or window, is preferably less than 60 tion that follows.
about 25% of the surface area of the container, which is
preferably a bottle. BRIEF DESCRIPTION OF THE DRAWINGS
In a first aspect of the invention, provided is a packaging
system for use with a consumer product, particularly a col FIG. 1 depicts a perspective view of a nail polish-type
ored consumer product, wherein the color attribute is impor 65 bottle as an embodiment of the packaging system of the
tant to a prospective purchaser of the consumer product. The present invention. The containershown is a transparent cylin
packaging system generally comprises a Substantially trans drical bottle covered with a coating, and featuring a substan
#:279
US 8,528,739 B2
3 4
tially circularly configured transparent product viewing area. remaining bulk product from further or more extensive poten
The coating is a powder coating that is Substantially opaque. tially undesirable light exposure.
Also depicted is an optional cap. Thus, in one aspect of the invention, provided are packag
FIG. 2 depicts a front view of a nail polish-type bottle as an ing systems for use with consumer products having color as a
embodiment of the packaging system of the present inven significant attribute, for example as a purchasing criterion.
tion. The system comprises a Substantially transparent container
FIG.3 depicts a side view of a nail polish-type bottle as an having a coating that Substantially reduces transmission of
embodiment of the packaging system of the present inven light that would pass through said container in the absence of
tion. the coating. The coating need not reduce the transmission of
FIGS. 4, 5, and 6 each depict a front view of a nail polish 10 all light, nor even light of all wavelengths, rather the coating
bottle having a different product viewing window as an alter need only reduce the transmission of at least one wavelength
native embodiment of the packaging system of the present of light. The coated container has at least one Substantially
invention. Each figure depicts an alternative configuration for transparent product viewing area. The viewing area is adapted
the transparent window for viewing the bottle's contained to allow a consumer to observe the color of the product in the
product, such as two hearts (FIG. 4), a square (FIG. 5), or oval 15 container.
(FIG. 6). To produce a product viewing area such as for FIG. In preferred embodiments of the packaging system, the
4 (two hearts), multiple areas may be separately masked-off container is a bottle or jar. While any type of container can be
prior to/during the coating process. used, presently preferred containers for use herein are prima
FIGS. 7, 8, and 9 each depict a front view of a nail polish rily glass containers, such as bottles, jars, and the like. For
bottle having a different product viewing window as an alter example, when the product is a nail polish or gel-type prod
native embodiment of the packaging system of the present uct, any of the wide range of commercially available nail
invention. Each figure depicts an alternative configuration for polish bottle shapes may be employed and coated as describe
the transparent window for viewing the bottle's contained herein.
product, such as diamond (FIG. 7), clover leaf (FIG. 8) and The coating can comprise any type of coating that is com
feather (FIG.9). To produce a product viewing area for FIGS. 25 patible with the container, and can be applied by any means
7, 8, and/or 9, multiple areas may be separately masked-off known in the art. In one embodiment, the coating is a powder
prior to/during the coating process. coating, a metalized coating, a painted coating, or an over
wrap. Where the coating is a powder coating, a painted coat
DETAILED DESCRIPTION OF THE PREFERRED ing, or a metalized coating, or the like, the product viewing
EMBODIMENTS 30 area can be conveniently formed by applying a removable
masking material on the container prior to the coating, and
Disclosed herein are packages for protecting a colored, subsequently removing said masking material after the coat
light-sensitive product from damaging light exposure, while ing process. The coating process in various embodiments
simultaneously allowing the product to be seen by a potential may involve one or more steps of heating the container and
purchaser by the use of one or more discreet viewing windows 35 thus is preferably conducted before the container is filled with
that allow the colored product to show through. The packages product, however, other embodiments may be practiced
are generally packages Such as bottles or jars that normally before, during, or after a filling operation.
are clear, i.e., transparent to most forms of light, including In one embodiment, the product is photo-curable orphoto
various wavelengths of UV light. The packages disclosed sensitive, and the coating Substantially reduces the transmis
herein are modified in one of several ways so as to be sub 40 sion of at least one wavelength of visible or UV light (in one
stantially less transparent or even opaque. However, to allow or more of the UV-A, UV-B, or UV-C ranges). In the absence
the product to be observed by the purchaser, the package of the coating, the light would otherwise pass through the
features a viewing window that is substantially transparent to container to the product, and cause a detrimental effect on the
allow the consumer or purchaser to observe the color of the product during Storage, display/merchandising, or Subse
product. 45 quent use.
Surprisingly, the inventor has discovered that the inclusion By “substantially reducing it is generally intended that at
of a product viewing area or window in a coated package that least a 20% reduction of light transmission of at least one
substantially precludes light that would otherwise pass wavelength of light occurs; more preferably at least 30, 40, or
through the package does not result in significant curing, 50% or more of one or more wavelengths of light. In one
hardening, spoilage, or the like, of the product. This is par 50 presently preferred embodiment, the coating is a generally
ticularly useful for products that cure, harden, polymerize, opaque coating, reducing transmission of visible light that
set, or gel, or whose desirable properties are otherwise altered would otherwise pass through to the package contents by at
by exposure to the light that would pass through the package least 80%, 90%, or even more.
in the absence of the coating. Rather, while the color can be In various embodiments, the packaging system further
observed through the product viewing area, the exposure of 55 comprises a cap, a lid, a top, or an applicator. Such caps,
the product to the reduced amount of light passing through the including applicator caps are known in the art and commonly
product viewing area of the coated transparent container, e.g., used with color products, including cosmetics, paint (e.g.
bottle, orjar, does not result in complete curing of the product. touch-up paint), etc.
Instead, only a small amount is affected. Such as a thin-film of In a presently preferred embodiment, the consumer prod
cured or hardened product that forms in the vicinity of the 60 uct is a cosmetic product. Examples of products for which the
product viewing area or window. Without being bound to any packages described herein are particularly useful include nail
one theory of operation, it is presently believed that by not products, including nail polish, nail gel, or combinations
exceeding a certain amount of light exposure, certain prod and/or modifications thereof.
ucts, such as photo-curable cosmetic products, will not be In a second aspect, the invention provides cosmetic con
substantially impacted adversely by the exposure to the light 65 tainers comprising a transparent bottle or jar. The container,
passing through the product viewing area. Moreover, it e.g. bottle, is Substantially covered with a coating that Sub
appears that the thin film that forms serves to help protect the stantially reduces the amount of at least one wavelength of
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US 8,528,739 B2
5 6
light that would otherwise pass through the bottle to the It should be noted that the relative dimensions of the vari
contents. The container features at least one transparent prod ous components of the packaging system, containers, bottles,
uct viewing area that is adapted to allow the product to show jars, etc disclosed herein can vary according to need.
through the viewing area/window. And as discussed above, the overall shape of the container
In various embodiments, the coating for the container is a 5 can also vary according to design preferences. For example,
powder coating, a painted coating, a metalized coating, or an various types of bottles have become recognized as industry
overwrap. For applications where the coating is a powder 'standards' and may be conveniently used in connection with
coating, a painted coating, or a metalized coating, the viewing this disclosure. Alternatively, any shaped container, including
area or window can be formed by applying masking material 10
unique or custom shapes can be adapted with a coating and
prior to and during the coating process, and Subsequently product viewing area as disclosed.
removing the masking material to uncover a transparent With further reference to the figures, FIG. 4 depicts another
viewing area in the shape of the mask. Techniques for mask embodiment of the packaging system 10 showing a container
ing and unmasking in connection with the application of 20 of similar overall shape, and featuring a product viewing
paints, coatings and the like are known in the art. The masks 15 area 40 of different shape/style.
can comprise one or multiple portions such that when With yet further reference to the figures, FIGS. 5 & 6 each
removed the viewing area may comprise a single area in the depict an embodiment of a cosmetic container 100 useful for
shape of the mask, or may comprise multiple areas. nail polish, gel, or the like. As with the packaging system
Where a single viewing area is used it is desirable to have above, the bottle 120 is covered with a coating 130. The
the area appear attractive to the consumer. Any shape can be bottles 120 each have a transparent product viewing area 140.
used including geometric shapes (circles, ellipses, ovals, tri Optional caps 150 are also shown and may be applicator caps.
angles, squares, rectangles, and other polygons of any num The embodiments of the cosmetic container 100 in FIGS. 5
ber of sides or shape). In addition the viewing area can be a and 6 show different product viewing area configurations
free-form shape, or could comprise logo, design, or the like. with FIGS. 5 and 6 showing a single viewing area, and FIG. 4
Viewing areas in the shape of objects of nature (e.g. flowers, 25 showing a viewing area with multiple discreet sections that
petals, bouquets, plants, trees, feathers, etc.), symbols (e.g. are not connected. To produce this product viewing area,
hearts), people or body parts (e.g. eyes, hands, face), or other multiple areas can be separately masked-off priortofor during
real world object may also be useful for the overall shape of a the coating process.
viewing area Such that the product and its color can be With yet further reference to the figures, FIGS. 7, 8, and 9
observed. Where the viewing area comprises multiple areas, 30
show several different configurations of the cosmetic con
the shape of Such areas is limited only by the human imagi tainer 100 embodied as nail polish bottles of different types
nation and includes such designs as floral designs, free-flow commonly known in the art. Each container 120 depicts one
ing forms and curves, balloons, fireworks combinations of or more product viewing areas 140 of different design to
any of the aforementioned, for example multiple Smaller allow the product (not shown) to be observed therethrough
circles, flowers, etc. are also contemplated for use herein. 35
In various embodiments, the product viewing area com while enhancing the appeal of the container or bottle 120.
prises less than about 25% of the surface area of the bottle. Optional caps 150 are shown for each bottle 120.
Preferably the product viewing area is less than about 20% of In another aspect of the invention, methods of reducing
the bottle. In some embodiments, less than 15, 12, or even undesired curing of a photo-curable product while allowing
10% of the Surface remains as a transparent viewing area. The 40 the product to be seen in its container, the method comprising
inventor has found that generally for light-sensitive products, the steps of:
and particularly for those that are designed to be photo-cured, providing a transparent container in which to store the
a viewing area in excess of about 25% of the surface area product;
normally exposed to light will not provide the thin film behind masking at least one Surface area of the container with a
the viewing window, but rather will result in light-induced 45 masking material;
changes to the bulk of the product, and thus the product will coating the masked container with a coating material that
be rendered substantially useless for its intended purpose. blocks at least one wavelength of light that would otherwise
In preferred embodiments herein, the product is nail polish pass through the container, and which can cause the photo
or nail gel, or a combination or modification thereof. Jars or curable product to cure;
bottles for use with colored cosmetics are known in the art, 50 removing the mask to produce a product viewing area; and
and presently preferred bottles for nail products include filling the coated container with the photo-curable product
cylindrical bottles (for example, in 15 ml, or 0.5 oz size). whereby the product can be seen through the product viewing
Other shapes are also useful and many are commercially aca.
available under a variety of trade names. Preferably the container is a bottle, such as a glass bottle. In
Further description of the packages will be facilitated by 55 one embodiment, the photo-curable product is colored and
reference to the Figures. FIGS. 1, 2, and 3 depict several the color is observable to a consumer through the product
views of an embodiment of the present invention. FIG. 2 viewing area, when the product is in the container. In another
depicts a front view of an embodiment of the packaging embodiment, the photo-curable product is a cosmetic product
system 10. The container 20 shown is a transparent cylindri for use on, e.g. nails.
cal bottle 20 covered with a coating 30, and featuring a trans 60 In one embodiment, the photo-curable product can be
parent product viewing area 40. The coating 30 is a powder cured by exposure to UV light or an LED light source of a
coating that is Substantially opaque. Also depicted is an particular wavelength that is effective to cure the photo-cur
optional cap 50. The cap 50 can be of any type or style that is able product, and the coating blocks out at least that wave
compatible with the product for which the packaging system length of light. In other embodiments, a thin film of the cured
10 is intended. In cosmetic applications, applicator caps are 65 product forms on the inside of the container in the vicinity of
known and typically used for nail products such as polishes the product viewing area, and further curing is substantially
and gels. curtailed, thereby extending the life and utility of the product.
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In yet another aspect of the present invention, a kit for systems, cosmetic containers, bottles, jars, and the like, along
reducing undesired curing of a UV-curable product compris with methods for making and using those packages, as well as
ing together, in one or more packages: kits and systems comprising the packages. The specific
a transparent container Substantially covered with a coat embodiments provided were primarily selected to illustrate
ing and having at least one transparent product viewing area 5 the features of the packages to the understanding of the skilled
adapted to allow a UV-curable product contained in the bottle artisan. Such a skilled artisan will appreciate that various
to show therethrough; wherein the coating Substantially modifications and alterations can be made to the specific
reduces the amount of at least one wavelength of UV light that embodiments exemplified, and that such modification and
would otherwise pass through the container to the UV-curable alterations are within the intended scope of the invention as
product contained therein; 10 defined in the appended claims.
a removable cap, lid, or applicator for adapted for remov What is claimed is:
ably sealing the container; and optionally, 1. A packaging system for use with a photo-curable con
a UV-curable product for storing in the container. Sumer product having a colorattribute, the system comprising
The product viewing area generally comprises less than a substantially transparent container having a coating thereon
about 20% of the surface area of the container, which is 15 adapted to Substantially reduce the transmission of light of at
preferably a bottle. least one wavelength capable of photo-curing said consumer
In one presently preferred embodiment, the product is a product that would pass through said container in the absence
cosmetic product for use with nails. The color of the product of the coating, said coated container having at least one Sub
can be readily observed through the product viewing area. stantially-transparent product viewing area thereon wherein
The kits can optionally include instructions for use of the 20 said viewing area is adapted to allow a consumer to observe
product or instructions for avoiding undesired or premature the color attribute of the product therethrough; and wherein
curing of the product. said viewing area substantially lacks said coating;
The foregoing has described several embodiments of the wherein said consumer product is a nail polish, nail gel, or
packages including the packaging Systems, cosmetic contain a combination or modification thereof.
ers, bottles, jars, and the like provided herein, as well as 25 2. The packaging system of claim 1 wherein the container
methods of making and using those packages, and kits com is a bottle or jar.
prising them. These and other aspects of the invention will 3. The packaging system of claim 1 wherein the coating is
become clearer through the examples provided below. a powder coating, a metalized coating, a painted coating, oran
overwrap.
Example 30 4. The packaging system of claim 3, wherein said product
viewing area is made by a process comprising the steps of:
There are recognized difficulties in storing and displaying providing a transparent container in which to store said
UV-sensitive product in a manner that both protects them product;
from substantial UV exposure and/or the effects thereof, and applying removable masking material onto the container
so that a consumer can see the attributes of the product, for 35 prior to its coating;
example, an appealing color. Further, it was believed that the coating said container with a powder coating, a painted
UV-curable products could not be stored and/or displayed in coating, or a metalized coating:
a package that allowed any UV light to pass through to the and
contents. In accordance with the disclosure, Surprisingly, the Subsequently removing said masking material from said
inventor has discovered that if a transparent container, such as 40 coated container to provide the product viewing area;
a glass bottle, is coated with a coating that restricts light wherein said viewing area allows a consumer to observe
transmission therethrough, a small transparent viewing win the color attribute of the product therethrough.
dow can be left through which the product color can be 5. The packaging system of claim 1 wherein the coating
observed. The window is preferably less than about 25% of Substantially reduces the transmission of at least wavelength
the surface area of the bottle. 45 of UV light in the UV-A, UV-B, or UV-C range.
Glass bottles are provided and, in preparation for a powder 6. The packaging system of claim 1 wherein the coating is
coating step, each is cleaned and inspected for blemishes. A opaque.
Small area comprising less than about 20% of the Surface area 7. The packaging system of claim 1 further comprising a
of each bottle is masked offusing materials that do not accept cap, a lid, a top, or an applicator.
the powder coating and which are easily removed after coat- 50 8. A cosmetic container for containing a colored photo
ing. Powder for the coating is applied and cured according to curable cosmetic product, said container comprising a trans
the manufacturer's recommendations. The masking material parent bottle Substantially covered with a coating and having
is removed to reveal a product viewing “window'. The bottles at least one transparent product viewing area adapted to allow
are examined for coverage and quality then packed for cus the product to show therethrough; wherein the coating Sub
tomer delivery. The bottles are later filled, and adapted with a 55 stantially reduces transmission of at least one wavelength of
cap. Such as an applicator cap. The product in the bottle is light capable of photo-curing said colored cosmetic product
generally colored and photo-sensitive and preferably photo that would otherwise pass through the bottle to the contained
curable, and the color of the product can be readily seen colored cosmetic product;
through the Substantially transparent product viewing area. wherein said viewing area Substantially lacks said coating:
Upon later analysis, it will be found that a bulk of the 60 and
product remains in good useful condition despite the on wherein said colored cosmetic product is a nail polish, nail
going exposure to light through the product viewing area. In gel, or a combination or modification thereof.
Some cases, it is found that a thin film of cured product on the 9. The cosmetic container of claim 8 wherein the coating is
inside of the bottle has formed on/in the vicinity of the prod a powder coating, a painted coating, a metalized coating, oran
uct viewing window. 65 overwrap.
There have been described and exemplified herein a num 10. The cosmetic container of claim 9, wherein said prod
ber of embodiments of packages including the packaging uct viewing area is made by a process comprising the steps of
#:282
US 8,528,739 B2
10
providing a transparent container in which to store said wherein said photo-curable product is a nail polish, nail
product; gel, or a combination or modification thereof.
applying removable masking material onto the container 16. The kit of claim 15 wherein the product viewing area
prior to its coating: comprises less than about 20% of the surface area of the
coating said container with a powder coating, a painted 5 bottle.
coating, or a metalized coating: 17. The kit of claim 15 said coated bottle contains a colored
and photo-curable cosmetic product for use with nails, and
Subsequently removing said masking material from said wherein the color of the product can be observed through the
coated container to provide the product viewing area; product viewing area.
wherein said viewing area allows a consumer to observe the 10
18. The kit of claim 15 further comprising instructions for
color attribute of the product therethrough. use of the product.
11. The cosmetic container of claim 8 wherein the product 19. A packaging system for use with a consumer product
viewing area comprises less than 20% of the surface area of having a colorattribute, the system comprising a substantially
the bottle.
12. A method of reducing undesired curing of a photo 15 transparent container having a coating thereon adapted to
curable product comprising the steps of Substantially reduce the transmission of light of at least one
providing a transparent bottle in which to store the product; wavelength that would pass through said container in the
masking at least one surface area of the bottle with a mask absence of the coating, said coated container having at least
ing material; one Substantially-transparent product viewing area thereon
coating the masked bottle with a coating material that wherein said viewing area is adapted to allow a consumer to
blocks transmission of at least one wavelength of light observe the color attribute of the product therethrough:
capable of photo-curing the product that would other wherein said consumer product is a nail polish, nail gel, or
wise pass through the bottle: a combination or modification thereof.
removing the mask to produce a product viewing area; and 20. A process for preparing a packaging system for use
filling the bottle with the photo-curable product, and cap 25 with a photo-curable consumer product having a color
ping said bottle; attribute, said process comprising:
wherein said photo-curable product is a nail polish, nail providing a container which is transparent to light of at
gel, or a combination or modification thereof. least one wavelength capable of photo-curing said con
13. The method of claim 12 wherein the photo-curable Sumer product;
product is colored and wherein the product’s color is observ 30
applying removable masking material onto a portion of the
able to a consumer through the product viewing area. container surface prior to its coating:
14. The method of claim 12 wherein the photo-curable coating said container with a powder coating, a painted
product can be cured by exposure to UV light oran LED light coating, or a metalized coating; and
Source emitting at least one wavelength of light effective to Subsequently removing said masking material from said
photo-cure the product. 35
15. A kit for reducing undesired curing of a photo-curable coated container Surface; to provide said packaging sys
product comprising: tem with a transparent viewing area for use with a con
a transparent bottle Substantially covered with a coating Sumer product having a color attribute;
and having at least one transparent product viewing area wherein said coating Substantially reduces the transmis
adapted to allow a photo-curable product contained in 40 sion of light of at least one wavelength capable of
the bottle to show therethrough; wherein the coating photo-curing said consumer product;
Substantially reduces transmission of at least one wave wherein said product viewing area is transparent to said
length of light capable of photo-curing the product that wavelength of light and allows a consumer to observe
would otherwise pass through the bottle to the photo said color attribute of the product therethrough; and
curable product contained therein; 45 wherein said consumer product is a nail polish, nail gel,
or a combination or modification thereof.
a removable cap, lid, or applicator adapted for removably
sealing the bottle; k k k k k
#:283
USOOD651515S
(12) United States Design Patent (10) Patent No.: US D651,515S

Haile (45) Date of Patent: ... Jan. 3, 2012
(54) BOTTLE WITH TRANSPARENT WINDOW D333,428 S 2, 1993 Gobe
D363,375 S * 10/1995 Arntsen ......................... D4,116
D365,751 S 1, 1996 H
(76) Inventor: Danny Lee Haile, La Mirada, CA (US) D399.658 S 10, 1998 Noella
D422.219 S 4/2000 Gobe
(**) Term: 14 Years D429,154 S * 8/2000 Chang ............................ D9,503
D431,779 S 10/2000 NoSella
(21) Appl. No. 29/379,634 D449,228 S * 10/2001 Nosella .......................... D9,500
D476,901 S * 7/2003 Crawford ....................... D9,557
D477,066 S 7/2003 Lonczak et al.
(22) Filed: Nov. 22, 2010 D479,134 S. 9/2003 Murata
(51) LOC (9) Cl. .................................................. O9-O1 D487,703 S 3/2004 Orsomando
D488,064 S * 4/2004 Crawford ....................... D9.5O2
(52) U.S. Cl. .......................................... D9/503; D9/553 D538.479 S 3/2007 Martinez
(58) Field of Classification Search ................... D9/418, D543,113 S 5/2007 Mongeon et al.
D9/434, 500, 502-505, 516,549–550, 558, D543,114 S 5/2007 Mongeon et al.
D9/574575, 715, 718 719,553,566; D4/116; D556,040 S 11/2007 Kawashima et al.
D28/4, 7, 76 77,99; 206/15.2, 15.3: 401/129; (Continued)
215/379,381-382: 220/660, 669, 675
See application file for complete search history. FOREIGN PATENT DOCUMENTS
JP 1202886 4/2004
(56) References Cited (Continued)
U.S. PATENT DOCUMENTS Primary Examiner — Ian Simmons
D28,240 S 2f1898 Wellhouse Assistant Examiner — Dana L. Sipos
D68,779 S 11/1925 Gibson
D69,493 S 2f1926 Ciardi (74) Attorney, Agent, or Firm — Feldman Gale, P.A.; Walter
D73,190 S 8, 1927 Mezitis C. Frank
D76,350 S 9, 1928 Love et al.
D78,110 S 3, 1929 Lancet (57) CLAM
D121927 S 8/1940 Miller, Jr. I claim the ornamental design for a bottle with transparent
2.249,832 A 7, 1941 Hubschman window, as shown and described.
D157,414 S 2f1950 Parentice
2,532,857 A * 12/1950 Ricciardi ...................... 220.662 DESCRIPTION
D162,721 S 4, 1951 Ferraro
D168,416 S 12/1952 McGinnis
3,337,901 A 8, 1967 Schefer et al. FIG. 1 is a front elevation view of a bottle with transparent
3,361,304. A 1/1968 Thompson window showing my new design;
3,362.587 A 1, 1968 Postel FIG. 2 is a rear elevation view thereof;
D214,159 S * 5/1969 Hart et al. ...................... D9,503 FIG. 3 is a right side elevation view thereof; and,
D249,870 S * 10/1978 Tillander . D9,607 FIG. 4 is a top plan view thereof; and FIG. 5 is a bottom plan
D259,252 S * 5/1981 Acker ............................ D4,116 view thereof.
D298,514 S 11, 1988 Dole et al.
D330,859 S 11/1992 Schaeffer
D332,919 S * 2/1993 Turnbullet al. ............... D9,500 1 Claim, 2 Drawing Sheets
#:284
US D651,515S
Page 2
U.S. PATENT DOCUMENTS D600,134 S 9, 2009 Black

D556,043 S 11/2007 Rabie R2 s 388 E. et al.
D560,508 S 1/2008 Lepoitevin D617206 S 6, 2010 Shaw etal
D563,798 S 3/2008 Gibson et al.
D568,753 S 5, 2008 Woolf FOREIGN PATENT DOCUMENTS
D569,734 S * 5/2008 Imperato et al. ............... D9,560
D595,125 S * 6/2009 Doyle ............................ D9/418 KR 30-0266534 11, 2000
D598,289 S 8/2009 Taylor * cited by examiner
#:285
U.S. Patent Jan. 3, 2012 Sheet 1 of 2 US D651,515S
s
#:286
U.S. Patent Jan. 3, 2012 Sheet 2 of 2 US D651,515S

#:287
USOOD656824S
(12) United States Design Patent (10) Patent No.: US D656,824 S

Haile (45) Date of Patent: . * Apr. 3, 2012
(54) BOTTLE WITH TRANSPARENT WINDOW D168,416 S 12/1952 McGinnis
3,337,901 A 8, 1967 Schefer et al.
(76) Inventor: Danny Lee Haile, La Mirada, CA (US) 3,361,304. A 1/1968 Thompson
3,362.587 A 1, 1968 Postel
D214,159 S * 5/1969 Hart et al. ...................... D9,503
(*) Notice: This patent is subject to a terminal dis D259,252 S * 5/1981 Acker ............................ D4,116
claimer. D298,514 S 11/1988 Dole et al.
D326,339 S * 5/1992 Sherman et al. ............... D2866
(**) Term: 14 Years D330,859 S 11/1992 Schaeffer
D332,919 S * 2/1993 Turnbullet al. ............... D9,500
D333,428 S 2, 1993 Gobe
(21) Appl. No. 29/379,630 D363,375 S * 10/1995 Arntsen ......................... D4,116
D365,751 S 1, 1996 HSu
(22) Filed: Nov. 22, 2010 D399.658 S 10, 1998 NoSella
D422.219 S 4/2000 Gobe
Related U.S. Application Data D429,154 S * 8/2000 Chang ............................ D9,503
D431,779 S 10/2000 NoSella
(63) Continuation-in-part of application No. 29/350.948, D449,228 S * 10/2001 Nosella .......................... D9,500
filed on Nov. 25, 2009, now abandoned. D449,531 S * 10/2001 Cooley ... D9,500
D476,237 S * 6/2003 Canepa ... D9,545
(30) Foreign Application Priority Data D476,901 S * 7/2003 Crawford ....................... D9,557
D477,066 S 7/2003 Lonczak et al.
D479,134 S 9, 2003 Murata
May 25, 2010 (JP) ................................. 2010-0 12837 D487,703 S 3/2004 Orsomando
(51) LOC (9) Cl. .................................................. O9-O1 D488,064 S * 4/2004 Crawford ....................... D9.5O2
(52) U.S. Cl. .......................................... D9/503; D9/551 (Continued)
(58) Field of Classification Search ................... D9/418, Primary Examiner — Ian Simmons
D9/434, 500, 502-505, 516,549–550, 558,
D9/571, 574575, 715, 718 719, 551, 564: Assistant Examiner — Dana L. Sipos
D4/116; D28/4, 7, 76 77,99; 206/15.2, (74) Attorney, Agent, or Firm — Feldman Gale, P.A.; Walter
206/15.3: 401/129; 215/379,381-382: 220/660, C. Frank
220/669,675
See application file for complete search history. (57) CLAM
The ornamental design for a “bottle with transparent win
(56) References Cited dow, as shown and described.
U.S. PATENT DOCUMENTS DESCRIPTION
D28,240 S 2f1898 Wellhouse
D68,779 S 11/1925 Gibson FIG. 1 is a front elevation view of a bottle with transparent
D69,493 S 2f1926 Ciardi window showing my new design;
D73,190 S 8, 1927 Mezitis FIG. 2 is a rear elevation view thereof;
D76,350 S 9, 1928 Love et al. FIG. 3 is a right side elevation view thereof;
D78,110 S 3, 1929 Lancet
D121927 S 8/1940 Miller, Jr. FIG. 4 is a top plan view thereof; and,
2.249,832 A 7, 1941 Hubschman FIG. 5 is a bottom plan view thereof.
D157,414 S 2f1950 Parentice
D162,721 S 4, 1951 Ferraro 1 Claim, 2 Drawing Sheets
:
#:288
US D656,824 S
Page 2
U.S. PATENT DOCUMENTS D563,798 S 3/2008 Gibson et al.

D568,753 S 5, 2008 Woolf
D499,019 S * 1 1/2004 Sagmeister et al. ........... D9,418 D569,734 S * 5/2008 Imperato et al. ............... D9,560
D510,083 S * 9/2005 Kasden ........................ D14/2O7 D598,289 S 8/2009 Taylor
D538.479 S 3/2007 Martinez D600,134 S 9, 2009 Black
D543,113 S 5/2007 Mongeon et al. D607,728 S 1/2010 Berger et al.
D543,114 S 5/2007 Mongeon et al. D613,173 S 4/2010 Bansal
D543.459 S * 5/2007 Konieczny ..................... D9/505 D617.206 S 6, 2010 Shaw etal
D556,040 S 11/2007 Kawashima et al.
D556,043 S 11, 2007 Rabie
D560,508 S 1/2008 Lepoitevin * cited by examiner
#:289
U.S. Patent Apr. 3, 2012 Sheet 1 of 2 US D656,824 S
i. w
8.
i Sex
r a a.
8.
#:290
U.S. Patent Apr. 3, 2012 Sheet 2 of 2 US D656,824 S

#:291
Cruickshank, AJ
From: Cruickshank, AJ
Sent: Tuesday, May 17, 2022 9:05 AM
To: Malynn, Todd
Subject: FW: Letter to Vishine
Attachments: Letter to Vishine.pdf
AJ Cruickshank | Professional Assistant | BLANKROME

O: 424.239.3806 | F: 424.389.7091 | aj.cruickshank@blankrome.com
From: Cruickshank, AJ
Sent: Wednesday, March 30, 2022 3:58 PM
To: heyanguk@hotmail.com
Cc: Malynn, Todd <todd.malynn@blankrome.com>
Subject: Letter to Vishine
Please see attached correspondence sent on behalf of Todd M. Malynn.
AJ Cruickshank | Professional Assistant | BLANKROME

O: 424.239.3806 | F: 424.389.7091 | aj.cruickshank@blankrome.com
1
#:292
1 BLANK ROME LLP

Telephone: 424.239.3400
4 Facsimile: 424.239.3434
6 BLANK ROME LLP
1825 Eye Street, SW
Telephone: 202.420.2200
8 Facsimile: 202.420.2201
Nail Alliance, LLC and
10 Nail Alliance – North America, Inc.
11 UNITED STATES DISTRICT COURT
12 CENTRAL DISTRICT OF CALIFORNIA
13 SOUTHERN DIVISION
14
15 NAIL ALLIANCE, LLC AND NAIL Case No. 8:22-cv-00937-ADS

ALLIANCE - NORTH AMERICA INC.,
16 [PROPOSED] ORDER
Plaintiff, GRANTING EX PARTE
17 APPLICATION FOR (A)
vs. INTERIM INJUNCTIVE RELIEF
18 AGAINST DEFENDANT
VISHINE ENTERPRISE LIMITED, and [PEDNING SERVICE THROUGH
19 DOES 1 through 10, inclusive, THE HAGUE CONVENTION AND
(B) ORDER TO SHOW CAUSE
20 Defendants. WHY A PRELIMINARY
INJUNCTION SHOULD NOT
21 ISSUE
22 Complaint Filed: May 9, 2022
23
24
25 THIS CAUSE is before the Court on an ex parte application for (a) interim
26 injunctive relief against defendant Vishine Enterprise Limited (“Defendant” or
27 “Vishine”), its officers, agents, servants, employees and attorneys, and all other
28 persons who are in active concert or participation with them, enforcing U.S.
#:293
1 Trademark Registration Nos. 4,473,557 and 4,473,558 and U.S. Patent Nos. 8,582,739
2 and D656824 and enjoining the manufacturing, importing, distributing, selling,
3 offering for sale, promoting, advertising or displaying any product that is a simulation,
4 reproduction, counterfeit, copy or colorable imitation of the GELISH brand products
5 pending service through the Hague Convention and (b) an order to show cause
6 (“OSC”) why a preliminary injunction should not issue. Having considered the ex
7 parte application and supporting memorandum and declarations filed by plaintiffs
8 Nail Alliance, LLC and Nail Alliance – North America, Inc. (collectively, “Plaintiffs”
9 or “Nail Alliance”), and GOOD CAUSE appearing therefore,
10 THE COURT HEREBY FINDS:
11 1. This Court has federal-question jurisdiction over the subject matter of
12 this action under the Lanham Act, 15 U.S.C. § 1051 et seq., and the Patent Act, 35
13 U.S.C. § 101, and pursuant to 28 U.S.C. §§ 1331 and 1338.
14 2. This Court has personal jurisdiction over Defendant under the California
15 long-arm statute, Civ. Proc. Code § 410.10 (or, alternatively, under the Federal long-
16 arm statute, Fed. R. Civ. Proc. 4(k)(2)) because Defendant has sold the alleged
17 infringing products (the “Accused Products”) to residents of California, including Nail
18 Alliance—North America, Inc, through interactive Internet websites. See Mysfyt, Inc.
19 v. Lum, Case No. 4:16-cv-03813-KAW, 2016 WL 6962954 at *3 (N.D. Cal, Nov, 29,
20 2016) (personal jurisdiction is appropriate where an entity is conducting business over
21 the Internet and has offered for sale and sold products to forum residents).
22 3. Venue lies properly within this District pursuant to 28 U.S.C. § 1391.
23 4. Plaintiffs are the owner and licensee of U.S. Trademark Registration Nos.
24 3,857,946 and 4,096,115 (the GELISH mark), U.S. Trademark Registration Nos.
25 4,473,557 and 4,473,558 (the GELISH trade dress) and U.S. Patent Nos. 8,582,739
26 and D656824 (the GELISH bottle), which cover the below registered trade dress and
27 “Bottle with Transparent Window” and “Package for Colored Products”:
28
1
#:294
8 5. Below are images of Plaintiffs’ GELISH mark and trade dress and
9 commercial embodiments of the Patents-in-Suit:
10
11
12
13
14
15
16
17
18
19 6. Below are images of the Accused Products sold by Defendant:

20
21
22
23
24
25
26
27
28
2
#:295
1 7. Plaintiffs seek interim injunctive relief enjoining the manufacturing,

2 purchasing, importing, inventorying, distributing, selling, offering for sale, promoting,
3 displaying or otherwise using in U.S. commerce any product that is a simulation,
4 reproduction, counterfeit, copy, or colorable imitation of nail product bottles bearing
5 the GELISH marks, trade dress or design, including the patent-protected bottle with a
6 transparent window, that runs against, not just only Defendant and its officers, agents,
7 servants, employees and attorneys, but also against all other persons who are in active
8 concert or participation with them, including any Internet service providers, platforms
9 and marketplaces (e.g., Amazon.com, eBay.com, Alibaba.com) and any mobile
10 payment or processing companies or platforms (e.g., PayPal, Venmo), who receive
11 actual notice of this Order by personal, e-mail or online service or otherwise.
12 8. The standard for injunctive relief has been met. See Am. Trucking Ass’n,
13 Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009) (plaintiff seeking
14 interim injunctive relief “must establish that he is likely to succeed on the merits, that
15 he is likely to suffer irreparable harm in the absence of preliminary relief, that the
16 balance of equities tips in his favor, and that an injunction is in the public interest.”).
17 Likelihood of Success on Merits
18 9. Plaintiffs have a substantial likelihood of success on their counts for trade
19 dress infringement and false designation of origin. Plaintiffs sell GELISH brand gel
20 polish, foundation and topcoat in distinctive bottles with artistic designs (the
21 “GELISH brand bottle”). The GELISH brand bottle has clean lines and distinctive
22 scroll artwork on a white background and features the GELISH mark as illustrated
23 above. There is evidence supporting that these unique and distinctive features of the
24 GELISH trade dress have acquired secondary meaning through extensive use and
25 promotion by Plaintiffs and are therefore protected under federal law. Declaration of
26 GariDawn Tingler (“Tingler Decl.”) ¶¶ 4-17. Under the likelihood-of-confusion
27 factors in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), there is
28 evidence supporting a finding of likelihood of confusion among consumers of
3
#:296
1 professional nail products, including post-sale confusion among patrons of nail salons,
2 who acquire Defendant’s nail products as part of a service. Tingler Decl. ¶¶ 43-48.
3 10. Plaintiffs have a substantial likelihood of success on its two counts for
4 design and utility patent infringement. The Patents-in-Suit, which are presumed valid,
5 protect both the ornamental appearance and functional utility of the transparent
6 window of the GELISH brand bottle. Plaintiffs are likely to prevail on their design
7 patent infringement claim because there is evidence that, in the eyes or an ordinary
8 observer, given such attention as a purchaser usually gives, Defendant’s bottle design
9 is substantially the same as Plaintiffs’ patented design and commercial embodiment:
10
11
12
13
14
15
16
17 11. Similarly, Plaintiffs have made a strong prima facie showing that the
18 accused gel polish bottles read on each limitation of at least claim 8 of U.S. Patent
19 Nos. 8,582,739. The accused gel polish bottles are cosmetic containers for containing
20 a gel polish that is a colored photocurable cosmetic product. See Malynn Decl. ¶ 11,
21 Compl. Ex. F at pp. 1-3 (“6PCS Colors Gel Polish”) (“Step 4: Apply the color gel
22 polish, then cure with the nail dryer.”). These transparent bottles are substantially
23 covered with a coating to prevent UV/LED transmission to the photocurable gel
24 polish, and also have a small transparent window without any coating for a user to see
25 the color of the gel polish in the containers, supporting the claim elements.
26 Irreparable Harm
27 12. Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a), provides for a
28 rebuttable presumption of irreparable harm “upon a finding of likelihood of success on
4
#:297
1 the merits for a violation identified in this subsection in the case of a motion for a
2 preliminary injunction or temporary restraining order.”
3 13. In addition to a presumption irreparable harm, there is evidence that
4 Plaintiffs will likely suffer irreparable harm if interim injunctive relief does not issue
5 pending a preliminary injunction hearing after Defendant is served through the Hague
6 Conversions. Patrons of nail salons are likely confused or misled by Defendant’s
7 look-a-like gel polish, foundation and topcoat into believing they are receiving an
8 authentic GELISH manicure when they are instead receiving a cheaper product that is
9 not subject to the same safety standards regulating nail products in California. They
10 are likely confused as to the source or origin of Defendant’s nail products, injuring or
11 risking injury to the reputation and goodwill of GELISH® products. Such confusion
12 deprives a trademark holder of the right and ability to control the use of its intellectual
13 property, which, in this case, includes the exclusive right to use the claimed bottles.
14 Evidence further supports that Defendant’s unfair competition is resulting in price
15 erosion and diverted sales, thereby harming Nail Alliance’s relationship with
16 distributors necessary for business. Tingler Decl. ¶¶ 49-55. Such harm cannot be
17 adequately compensated just by an award of monetary damages.
18 Balance of Harms
19 14. The balance of hardships weighs substantially in favor of injunctive
20 relief, including because Defendant have no apparent right to sell the Accused
21 Products in the United States, and because Plaintiffs will likely suffer irreparable harm
22 while service of process is pending.
23 Public Interest
24 15. Public interest weighs in favor of injunctive relief to avoid irreparable
25 harm pending a further hearing, especially when there is a substantial likelihood that
26 Defendant has no right to sell the Accused Products in the United States.
27 16. Plaintiffs’ counsel provided notice of this proceeding, including the
28 summons, complaint, ex parte application and supporting papers, to Defendant
5
#:298
1 through a means reasonably calculated to provide actual notice of this proceeding, and
2 by which other similarly situated foreign parties were successfully contacted.
3 Declaration of Todd M. Malynn (“Malynn Decl.”) ¶¶ 2-7.
4 17. It is in the interest of justice to extend the length of a temporary
5 injunction under Rule 65(b) beyond the 14 days and like period until a preliminary
6 injunction hearing can be held after service of process on Defendant through the
7 Hague Convention can be completed.
8 18. Accordingly, the Court issues the following Orders:
9 TEMPORARY RESTRAINING ORDER
10 19. In accordance with the foregoing findings of fact and/or conclusions of
11 law, it is therefore ORDERED that, pending further order of this Court at a specially
12 set preliminary injunction hearing, Defendant, its officers, directors, employees,
13 agents and attorneys, and any and all persons in active concert or participation with
14 any of them, including Internet platforms and marketplaces (e.g., Amazon.com,
15 eBay.com, Alibaba.com) and mobile payment and processing companies and/or
16 platforms (e.g., PayPal, Venmo) who receive actual notice of this Order by personal or
17 electronic service or otherwise, are hereby enjoined in the United States:
18 a. From directly or indirectly using, making, having made,
19 purchasing, importing, inventorying, advertising, promoting,
20 offering to sell, selling, distributing, transferring, or otherwise
21 disposing of any nail product bottles bearing any of the GELISH
22 marks, trade dress or bottle design and/or including the patent-
23 protected transparent window described herein, or any simulation,
24 reproduction, counterfeit, copy, or colorable imitation of the same,
25 other than those which Plaintiffs confirm in writing are actually
26 manufactured or distributed by Plaintiffs;
27 b. From secreting, concealing, destroying, selling off, transferring, or
28 otherwise disposing of: (i) any nail product bottles bearing any of
6
#:299
1 the GELISH marks, trade dress or bottle design and/or including

2 the patent-protected transparent window described herein, or any
3 simulation, reproduction, counterfeit, copy, or colorable imitation
4 of the same; or (ii) any evidence relating to the using, selling,
5 offering for sale, or importing of any nail product bottles bearing
6 any of the GELISH marks, trade dress or bottle design and/or
7 including the patent-protected transparent window described
8 herein, or any simulation, reproduction, counterfeit, copy, or
9 colorable imitation of the same; and
10 c. Knowingly instructing, aiding or abetting or conspiring with any
11 other person or business entity in engaging in any of the activities
12 referred to in subparagraphs (a) through (b) above.
13 20. Upon Plaintiffs’ written request, any Internet marketplace website
14 operators, administrators or service providers, or any third party providing such
15 services in connection with website listing the Accused Products, including without
16 limitation, ukliss.com, Amazon.com, Alibaba.com, and eBay.com, and ISPs, who are
17 provided with notice of the injunction, shall immediately temporarily disable service
18 to any and all listings of the Accused Products;
19 21. This Temporary Restraining Order was issued on ________ date at
20 __________ am/pm. It was issued without formal notice because Defendants are
21 foreign nationals, who allegedly reside in China, and who are being served with
22 process through the Hague Convention.
23 22. This Temporary Restraining Order shall remain in place until the
24 preliminary injunction hearing after Defendant has been served with process through
25 the Hague Convention, unless prior to that time good cause is shown as why the order
26 should be set aside. At the preliminary injunction hearing, the Court may convert the
27 Temporary Restraining Order into a Preliminary Injunction and it may thereby remain
28 in full force and effect pending trial.
7
#:300
1 ORDER TO SHOW CAUSE WHY A PRELIMINARY INJUNCTION

2 SHOULD NOT ISSUE AND ORDER OF NOTICE
3 IT IS FURTHER ORDERED:
4 23. A preliminary injunction hearing is specially, and tentatively set, for
5 _______________ pending further order of the Court.
6 24. Proof of service through the Hague Convention shall be filed ___ days
7 prior to the scheduled preliminary injunction hearing unless this date is continued by
8 further order of the Court.
9 25. Plaintiff shall provide the Court with periodic reports as to the status of
10 service of process through the Hague Convention, starting with a report ___ days prior
11 to the scheduled preliminary injunction hearing, and the Court will continue the
12 preliminary injunction hearing and date for service of process accordingly.
13 26. For the reasons set forth in the ex parte application for interim injunction
14 relief pending service through the Hague Convention and for order to show cause why
15 a preliminary injunction should not issue, Defendant is ordered to appear at the
16 scheduled preliminary injunction hearing or a subsequently scheduled hearing after
17 service through the Hague to show cause, if there be any, why an Order for a
18 Preliminary Injunction should not be granted, pursuant to FED. R. CIV. P. 65(a), to
19 prohibit further violations of the Lanham Act and Patent Act, and why the other relief
20 requested should not be granted pending trial on the merits of this action.
21 27. Any papers opposing a preliminary injunction shall be filed with the
22 Court and served by electronic mail on Plaintiff’s counsel ____ days prior to the
23 preliminary injunction hearing. Plaintiff shall file and electronically serve any reply
24 papers ____ days prior to the preliminary injunction hearing. The above dates may be
25 revised upon stipulation by all parties to a continuance or upon agreement to maintain
26 the status quo or by further order of this Court.
27 28. Plaintiffs’ counsel shall provide notice of this Order by the same means it
28 provided notice of Plaintiffs’ ex parte application and attempt to effect service of this
8
#:301
1 Order and service of the summons, complaint, ex parte application and supporting
2 papers to Defendant through the Hague Convention.
3 29. Defendant is hereby on notice that failure to appear at the show cause
4 hearing may result in the imposition of a preliminary injunction pursuant to 15 U.S.C.
5 § 1116(d) and FED. R. CIV. P. 65. Similarly, pursuant to the Hague Convention,
6 failure to appear may result in a default judgment and imposition of a permanent
7 injunction pursuant to 15 U.S.C. § 1116(d) and FED. R. CIV. P. 65.
8 IT IS SO ORDERED.
9 DATED:
10
11
_________________________________
Honorable Autumn D. Spaeth
12 United States District Court Magistrate
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Case 8:22-cv-00937-DOC-DFM Document 11 Filed 05/18/22 Page 1 of 4 Page ID #:109

1 BLANK ROME LLP

15 NAIL ALLIANCE, LLC and NAIL Case No. 8:22-cv-00937-ADS

1 attempted to provide written notice of this application and supporting papers,

1 BLANK ROME LLP

C. The Injury to Plaintiffs Outweighs Any Harm to Defendants ................. 23

1 MEMORANDUM OF POINTS AND AUTHORITIES

20 See Complaint ¶¶ 17-49, Ex. A-D, Tingler Decl. ¶ 10.

1 The infringing activity is causing substantial harm. In one quarter, alone, as a

8 Tingler Decl. ¶ 44; Malynn Decl.”) ¶¶ 2-6.

1 III. THE COURT HAS AUTHORITY TO ISSUE INJUNCTIVE RELIEF

16 b. Utility Patent Infringement

A plaintiff seeking [an] injunction shall be entitled to a rebuttable

1 C. The Injury to Plaintiffs Outweighs Any Harm to Defendants

10 /s/ Todd M. Malynn

IN THE UNITED STATES DISTRICT COURT

NAIL ALLIANCE, LLC, a Delaware Civil No. 21-1576 (ADC)

PRELIMINARY INJUNCTION ORDER

claims arising under Puerto Rico law.

2. This Court has personal jurisdiction over the Defendants.

3. Venue is proper in this Court under 28 U.S.C. § 1391(b).

4. The GELISH mark is protected by multiple federal trademark registrations,

5. The GELISH design, which includes a unique three-dimensional configuration and

4,473,558. (See Compl., Exs. 3-4.)

(“Tingler Decl.”) ¶¶ 13-15.)

9. None of the Defendants is an authorized distributor of Nail Alliance’s GELISH

brand products. (Tingler Decl. ¶ 11.)

Defendants to use any of the GELISH marks.

and other evidence regarding the same.

as a manufacturer of high-quality products if such relief is not granted.

or online service or otherwise, are enjoined from:

a. directly or indirectly manufacturing, purchasing, importing, advertising,

promoting, offering to sell, selling, distributing, transferring, concealing,

or otherwise disposing of any products bearing any of the GELISH marks,

or imitations of the same, other than those which Plaintiffs confirm in

writing are actually manufactured or distributed by Plaintiffs; and

b. secreting, concealing, destroying, selling off, transferring, or otherwise

moving or disposing of: (i) any products or promotional materials, not

manufactured or distributed by Plaintiffs, bearing any of the GELISH

any evidence relating to the manufacture, purchasing, importation,

advertising, promotion, distribution, sale, offer for sale, or transfer of any

products bearing any GELISH mark or confusingly similar mark or bottle

not limited accounts held at, or maintained with, financial institutions,

financial service providers, and/or mobile payments/processing companies

and/or platforms (e.g., eBay, PayPal, Venmo).

c. Instructing, assisting, aiding or abetting any other person or entity in

engaging in or performing any of the activities referred to in subparagraphs

(a) and (b) above.

233 F.3d 60, 69 (1st Cir. 2000)).

In San Juan, Puerto Rico, this 27th day of December 2021.

/s/ AIDA M. DELGADO-COLON

Final Details for Order #111-3982687-9178607

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