Oakley v. PR Trading - Complaint

Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 1 of 80
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Michael K. Friedland (SBN 157,217)

michael.friedland@knobbe.com
Ali S. Razai (SBN 246922)
ali.razai@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
Telephone: (949) 760-0404
Facsimile: (949) 760-9502
Attorneys for Plaintiff Oakley, Inc.
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IN THE UNITED STATES DISTRICT COURT
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FOR THE SOUTHERN DISTRICT OF CALIFORNIA
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OAKLEY, INC., a Washington

corporation,
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Plaintiff,
v.
PR TRADING COMPANY, INC. D/B/A
PR SUNGLASSES, a Texas corporation,
Defendant.
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Civil Action No. '16CV1147 AJB NLS

COMPLAINT FOR
PATENT INFRINGEMENT,
TRADEMARK
INFRINGEMENT, TRADE
DRESS INFRINGEMENT,
FALSE DESIGNATION OF
ORIGIN AND UNFAIR
COMPETITION
DEMAND FOR JURY TRIAL
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COMPLAINT
Plaintiff Oakley, Inc. (Oakley) hereby complains of Defendant PR
Trading Company, Inc. d/b/a PR Sunglasses (Defendant) and alleges as
follows:
I. JURISDICTION
1.
This Court has original subject matter jurisdiction over the claims
in this action that relate to patent infringement, trademark infringement, trade
dress infringement, false designation of origin, and federal unfair competition
pursuant to 35 U.S.C. 271 and 281, 28 U.S.C. 1331 and 1338, and 15
U.S.C. 1116(a), 1121(a), and 1125(a), as these claims arise under the laws of
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the United States. The Court has supplemental jurisdiction over the claims in
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this Complaint which arise under state law pursuant to 28 U.S.C. 1367(a)
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because the state law claims are so related to the federal claims that they form
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part of the same case or controversy and derive from a common nucleus of
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operative facts.
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2.
This Court has personal jurisdiction over Defendant because
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Defendant has a continuous, systematic, and substantial presence within this
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judicial district including by selling and offering for sale infringing products in
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this judicial district, and by committing acts of patent infringement in this
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judicial district, including but not limited to selling infringing eyewear directly
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to consumers and/or retailers in this district and selling into the stream of
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commerce knowing such products would be sold in California and this district,
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which acts form a substantial part of the events or omissions giving rise to
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Oakleys claim.
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3.
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and (d).
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///
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///
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Venue is proper in this judicial district under 28 U.S.C. 1391(b)
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COMPLAINT
II. THE PARTIES

4.
Oakley is a corporation organized and existing under the laws of
the State of Washington, having its principal place of business at One Icon,
Foothill Ranch, California 92610.

5.
Oakley is informed and believes, and thereon alleges, that
Defendant PR Trading Company, Inc. d/b/a PR Sunglasses is a corporation
organized and existing under the laws of the State of Texas, having its principal
place of business at 7596 Harwin Drive, Houston, Texas 77036.

6.
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Defendant has committed the acts alleged herein within this judicial district.
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III. GENERAL ALLEGATIONS

7.
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Oakley is one of the worlds most iconic brands. The company and
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its products, particularly in the realm of eyewear, are instantly and universally
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recognized for their innovative technology and distinctive style.
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founding, Oakleys engineers and designers have worked continuously to bring
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new technology and breakthrough designs to the market.

8.
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Since its
Oakley has been actively engaged in the manufacture and sale of
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high quality eyewear since at least 1985.
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retailer of several lines of eyewear that have enjoyed substantial success and are
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protected by various intellectual property rights owned by Oakley.

9.
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Oakley is the manufacturer and
On November 25, 2008, the United States Patent and Trademark
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Office (USPTO) duly and lawfully issued United States Design Patent No.
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D581,443 (the D443 Patent), titled EYEGLASSES COMPONENTS.
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Oakley is the owner by assignment of all right, title, and interest in the D443
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Patent. A true and correct copy of the D443 Patent is attached hereto as Exhibit
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1.
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COMPLAINT
10.
On July 31, 2007, the USPTO duly and lawfully issued United
States
EYEGLASSES. Oakley is the owner by assignment of all right, title, and
interest in the D794 Patent. A true and correct copy of the D794 Patent is
attached hereto as Exhibit 2.
Design
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Patent
No.
D547,794
(the
D794
Patent),
titled
On November 6, 2007, the USPTO duly and lawfully issued United
States Design Patent No. D554,689 (the D689 Patent), titled EYEGLASS
FRAME. Oakley is the owner by assignment of all right, title, and interest in
the D689 Patent. A true and correct copy of the D689 Patent is attached hereto
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as Exhibit 3.
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On December 4, 2007, the USPTO duly and lawfully issued United
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COMPONENTS. Oakley is the owner by assignment of all right, title, and
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interest in the D818 Patent. A true and correct copy of the D818 Patent is
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attached hereto as Exhibit 4.
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13.
On February 5, 2013, the USPTO duly and lawfully issued United
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States Design Patent No. D675,664 (the D664 Patent), titled EYEGLASS.
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Oakley is the owner by assignment of all right, title, and interest in the D664
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Patent.
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Exhibit 5.
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14.
A true and correct copy of the D664 Patent is attached hereto as
On January 28, 2003, the USPTO duly and lawfully issued United
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FRONT. Oakley is the owner by assignment of all right, title, and interest in
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the D458 Patent. A true and correct copy of the D458 Patent is attached hereto
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as Exhibit 6.
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15.
On December 29, 2009, the USPTO duly and lawfully issued
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United States Design Patent No. D607,039 (the D039 Patent), titled
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EYEGLASS AND EYEGLASS COMPONENT. Oakley is the owner by

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COMPLAINT
assignment of all right, title, and interest in the D039 Patent. A true and correct
copy of the D039 Patent is attached hereto as Exhibit 7.
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Oakley has provided the public with constructive notice of its
patent rights pursuant to 35 U.S.C. 287.

17.
Defendant manufactures, uses, sells, offers for sale, and/or imports
into the United States eyewear that infringe the D443 Patent, D794 Patent, D689
Patent, D818 Patent, D664 Patent, D458 Patent and D039 Patent (Asserted
Patents),
www.prsunglasses.com.
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including
offering
products
for
sale
on
the
website
In order to protect Oakleys investment in the development of its
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proprietary technology, Oakley has obtained numerous trademark registrations,
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including Trademark Registration Nos. 2,146,295 and 1,984,501 (Oakley
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Marks).
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19.
Oakley is the owner of Trademark Registration No. 2,146,295.
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Trademark Registration No. 2,146,295 was registered with the USPTO on
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March 24, 1998 on the Principal Register.
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2,146,295 is associated with the following goods: protective and/or anti-glare
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eyewear, namely, sunglasses, goggles, spectacles and their parts and
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accessories, namely, replacement lenses, earstems, frames, nose pieces and
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foam strips; cases specially adapted for protective and/or anti-glare eyewear and
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their parts and accessories.
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registration of Trademark Registration No. 2,146,295 is attached hereto as
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Exhibit 8.
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20.
Trademark Registration No.
A true and correct copy of the certificate of
Oakley is the owner of Trademark Registration No. 1,984,501.
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Trademark Registration No. 1,984,501 was registered with the USPTO on July
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2, 1996 on the Principal Register. Trademark Registration No. 1,984,501 is
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associated with the following goods: protective and/or anti-glare eyewear,
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namely sunglasses, goggles, spectacles and their parts and accessories, namely
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COMPLAINT
replacement lenses, earstems, frames, nose pieces and foam strips; cases
specially adapted for protective and/or anti-glare eyewear and their parts and
accessories.
Trademark Registration No. 1,984,501 is attached hereto as Exhibit 9.
21.
A true and correct copy of the certificate of registration of
Without permission or consent from Oakley, Defendant is offering
for sale, distributing, marketing, and/or selling eyewear bearing the Oakley
Marks.
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Infringing Mark
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Oakley is informed, and on that basis alleges, that Defendant did
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not begin using its infringing mark in connection with eyewear until long after
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Oakley began using the Oakley Marks.
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Oakley is informed and believes, and on that basis alleges, that
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Defendants unauthorized use of its infringing mark is intended to trade upon
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the goodwill and substantial recognition associated with Oakley and the Oakley
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Marks.
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24.
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Defendant is using its infringing mark in an attempt to associate its eyewear
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products with Oakley and the Oakley Marks, to cause mistake or deception as to
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the source of Defendants eyewear products, and/or to otherwise trade upon
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Oakleys valuable reputation and customer goodwill in the Oakley Marks.

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COMPLAINT
25.
Defendants use of its infringing mark is designed to cause confusion, mistake,
or deception.
26.
By virtue of the acts complained of herein, Defendant has created a
likelihood of injury to Oakleys business reputation, caused a strong likelihood
of consumer confusion, mistake, and deception as to the source of or origin or
relationship of Oakleys and Defendants goods, has caused actual confusion,
and has otherwise competed unfairly with Oakley by unlawfully trading on and
using the Oakley Marks without Oakleys permission or consent.

27.
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Oakley manufactures and sells sunglasses under the mark HALF
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JACKET bearing distinctive trade dress in the overall design of the sunglasses
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(HALF JACKET Trade Dress). The HALF JACKET Trade Dress is not
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functional. An example of an Oakley product bearing the distinctive HALF
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JACKET Trade Dress is depicted in the image attached as Exhibit 10.

28.
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As a result of Oakleys widespread use and display of the HALF
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JACKET Trade Dress in association with its eyewear, (a) the public has come
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to recognize and identify eyewear bearing the HALF JACKET Trade Dress as
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emanating from Oakley, (b) the public recognizes that products bearing the
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HALF JACKET Trade Dress constitute high quality products that conform to
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the specifications created by Oakley, and (c) the HALF JACKET Trade Dress
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has established strong secondary meaning and extensive goodwill.

29.
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Oakley manufactures and sells sunglasses under the mark
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STRAIGHT JACKET bearing distinctive trade dress in the overall design of
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the sunglasses (STRAIGHT JACKET Trade Dress).
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JACKET Trade Dress is not functional. An example of an Oakley product
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bearing the distinctive STRAIGHT JACKET Trade Dress is depicted in the
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image attached as Exhibit 11.
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The STRAIGHT
COMPLAINT
30.
As a result of Oakleys widespread use and display of the
STRAIGHT JACKET Trade Dress in association with its eyewear, (a) the
public has come to recognize and identify eyewear bearing the STRAIGHT
JACKET Trade Dress as emanating from Oakley, (b) the public recognizes
that products bearing the STRAIGHT JACKET Trade Dress constitute high
quality products that conform to the specifications created by Oakley, and (c)
the STRAIGHT JACKET Trade Dress has established strong secondary
meaning and extensive goodwill.

31.
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Defendants acts complained of herein are willful and deliberate.
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32.
Defendants acts complained of herein have caused Oakley to
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suffer irreparable injury to its business. Oakley will suffer substantial loss of
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goodwill and reputation unless and until Defendant is preliminarily and
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permanently enjoined from its wrongful actions complained of herein.
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IV. FIRST CLAIM FOR RELIEF
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(Patent Infringement)
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(35 U.S.C. 271)
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33.
Oakley repeats and re-alleges the allegations of paragraphs 132 of
this Complaint as if set forth fully herein.
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34.
This is a claim for patent infringement under 35 U.S.C. 271.
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35.
Defendant, through its agents, employees, and servants has, and
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continues to, knowingly, intentionally, and willfully directly infringe the D443
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Patent by making, using, selling, offering for sale, and/or importing eyewear
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having a design that would appear to an ordinary observer to be substantially
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similar to the claim of the D443 Patent, including for example, Defendants
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eyewear model 5173 as shown below.
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COMPLAINT
Accused Product
Oakleys Patent
5173
U.S. Patent No. D581,443
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Defendants acts of infringement of the D443 Patent were
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undertaken without permission or license from Oakley. Upon information and
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belief, Defendant had actual knowledge of Oakleys rights in the design claimed
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in the D443 Patent. Oakley and its iconic designs are well-known throughout
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the eyewear industry, and Defendants eyewear model 5173 is a nearly identical
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copy of Oakleys design. Accordingly, Defendants actions constitute willful
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and intentional infringement of the D443 Patent. Defendant infringed the D443
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Patent with reckless disregard of Oakleys patent rights. Defendant knew, or it
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was so obvious that Defendant should have known, that its actions constituted
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infringement of the D443 Patent. Defendants acts of infringement of the D443
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Patent were not consistent with the standards of commerce for its industry.
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37.
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Patent, the D689 Patent, and the D818 Patent by making, using, selling, offering
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for sale, and/or importing eyewear having a design that would appear to an
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ordinary observer to be substantially similar to the respective claims of the
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D794 Patent, the D689 Patent, and the D818 Patent, including for example,
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Defendants eyewear models 6608 and 6053 as shown below.
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COMPLAINT
Accused Product
Oakleys Patent
6608
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6053
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COMPLAINT
Accused Product
Oakleys Patent
6133
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39.
Defendants acts of infringement of the D794 Patent, the D689
Patent, and the D818 Patent were undertaken without permission or license from
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Oakley.
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Oakleys rights in the designs claimed in the D794 Patent, the D689 Patent, and
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the D818 Patent. Oakley and its iconic designs are well-known throughout the
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eyewear industry, and Defendants eyewear models 6608, 6053 and 6133 are
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nearly identical copies of Oakleys designs. Accordingly, Defendants actions
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constitute willful and intentional infringement of the D794 Patent, the D689
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Patent, and the D818 Patent. Defendant infringed the D794 Patent, the D689
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Patent, and the D818 Patent with reckless disregard of Oakleys patent rights.
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Defendant knew, or it was so obvious that Defendant should have known, that
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its actions constituted infringement of the D794 Patent, the D689 Patent, and the
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D818 Patent. Defendants acts of infringement of the D794 Patent, the D689
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Patent, and the D818 Patent were not consistent with the standards of commerce
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for its industry.
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40.
Upon information and belief, Defendant had actual knowledge of
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COMPLAINT
Accused Product
Oakleys Patent
5121
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the eyewear industry, and Defendants eyewear model 5121 is a nearly identical
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copy of Oakleys design. Accordingly, Defendants actions constitute willful
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and intentional infringement of the D664 Patent. Defendant infringed the D664
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infringement of the D664 Patent.
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D664Patent were not consistent with the standards of commerce for its industry.
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42.
Defendants acts of infringement of the
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COMPLAINT
eyewear models 7223, 7260, 7261, CH228, CH11, CH422, and CH433 as
shown below.
Accused Product
Oakleys Patent
7223
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7260
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7261
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CH228
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CH11
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COMPLAINT
CH422
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CH433
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the eyewear industry, and Defendants eyewear model eyewear models 7223,
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7260, 7261, CH228, CH11, CH422, and CH433 are nearly identical copies of
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Oakleys design.
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intentional infringement of the D458 Patent. Defendant infringed the D458
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infringement of the D458 Patent. Defendants acts of infringement of the D458
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Patent were not consistent with the standards of commerce for its industry.
44.
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Accordingly, Defendants actions constitute willful and
As a direct and proximate result of Defendants patent
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infringement, Defendant has derived and received gains, profits, and advantages
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in an amount not presently known to Oakley.
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COMPLAINT
45.
Pursuant to 35 U.S.C. 284, Oakley is entitled to damages for
Defendants infringing acts and treble damages together with interests and costs
as fixed by this Court.
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46.
Pursuant to 35 U.S.C. 289, Oakley is entitled to Defendants total
profits from the sale of eyewear that infringe Oakleys design patent rights.
47.
Pursuant to 35 U.S.C. 285, Oakley is entitled to reasonable
attorneys fees for the necessity of bringing this claim.

48.
Due to the aforesaid infringing acts, Oakley has suffered great and
irreparable injury, for which Oakley has no adequate remedy at law.

49.
Defendant will continue to directly and/or indirectly infringe
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Oakleys patent rights to the great and irreparable injury of Oakley, unless
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enjoined by this Court.
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V. SECOND CLAIM FOR RELIEF
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(Federal Trademark Infringement)
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(15 U.S.C. 1114)
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50.
Oakley repeats and re-alleges the allegations of paragraphs 1-32 of

51.
This is a claim for trademark infringement arising under 15 U.S.C.
1114.
52.
Upon information and belief, Defendant is involved in the
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manufacture, sale, offer for sale, distribution, import and/or export of sunglasses
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that bear one or more of the Oakley Marks without Oakleys consent.
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53.
Upon information and belief, long after Oakleys adoption and use
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of each of the Oakley Marks, after the federal registration of each of the Oakley
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Marks, and after each of the Oakley Marks had become famous, Defendant has
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affixed and used one or more of the Oakley Marks without Oakleys consent in
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a manner that infringes upon Oakleys rights in the Oakley Marks in violation of
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15 U.S.C. 1114.
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COMPLAINT
54.
Without Oakleys consent, Defendant uses in commerce marks that
are confusingly similar to the Oakley Marks in connection with the sale,
offering for sale, distribution, or advertising of goods in a manner which is
likely to cause confusion, or to cause mistake, or to deceive.
55.
Defendant did so with the intent to unfairly compete with Oakley, to trade upon
Oakleys reputation and goodwill by causing confusion and mistake among
customers and the public, and to deceive the public into believing that
Defendants products are associated with, sponsored by, originate from, or are
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approved by Oakley, when they are not.

56.
Defendants
activities
constitute
willful
and
intentional
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infringement of the Oakley Marks in total disregard of Oakleys proprietary
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rights, and were done despite Defendants knowledge that the use of the Oakley
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Marks was and is in direct contravention of Oakleys rights.
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57.
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Defendant has derived and received, and will continue to derive and receive,
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gains, profits, and advantages from the use of the Oakley Marks in an amount
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that is not presently known to Oakley. By reason of Defendants actions,
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constituting unauthorized use of the Oakley Marks, Oakley has been damaged
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and is entitled to monetary relief in an amount to be determined at trial.
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58.
Due to Defendants actions, constituting unauthorized use of the
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Oakley Marks, Oakley has suffered and continues to suffer great and irreparable
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injury, for which Oakley has no adequate remedy at law.
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VI. THIRD CLAIM FOR RELIEF
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(Federal Trade Dress Infringement)
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(15 U.S.C. 1125(a))
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59.
Oakley repeats and re-alleges the allegations of paragraphs 1-32 of

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COMPLAINT
60.
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This is a claim for trade dress infringement under 15 U.S.C.
1125(a).
61.
As a result of the widespread use and display of Oakleys HALF
JACKET Trade Dress, the trade dress has acquired secondary meaning to
potential purchasers, in that potential purchasers have come to associate
sunglasses bearing the design of the HALF JACKET Trade Dress with
Oakley.
62.
Subsequent to Oakleys use and adoption of the HALF JACKET
Trade Dress, Defendant has developed, advertised, and sold sunglasses that use
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trade dress that is confusingly similar to the HALF JACKET trade dress. For
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example, the frame of Defendants eyewear model CAMO11 uses trade dress
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that is confusingly similar to Oakleys HALF JACKET Trade Dress.

63.
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As a result of the widespread use and display of Oakleys
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STRAIGHT JACKET Trade Dress, the trade dress has acquired secondary
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meaning to potential purchasers, in that potential purchasers have come to
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associate sunglasses bearing the design of the STRAIGHT JACKET Trade
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Dress with Oakley.

64.
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Subsequent to Oakleys use and adoption of the STRAIGHT
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JACKET Trade Dress, Defendant has developed, advertised, and sold
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sunglasses that use trade dress that is confusingly similar to the STRAIGHT
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JACKET trade dress. For example, the stems of Defendants eyewear model
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CAMO11 uses trade dress that is confusingly similar to Oakleys STRAIGHT
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JACKET Trade Dress.

65.
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Upon information and belief, Defendants acts of trade dress
25
infringement were undertaken willfully with full knowledge and with the
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express intent to cause confusion, and to mislead and deceive the purchasing
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public.
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COMPLAINT
66.
gains, profits and advantages from Defendants trade dress infringement in an
amount that is not presently known to Oakley.
actions, constituting trade dress infringement, Oakley has been damaged and is
entitled to monetary relief in an amount to be determined at trial.

67.
By reason of Defendants
Due to Defendants actions, constituting trade dress infringement,
Oakley has suffered and continues to suffer great and irreparable injury, for
which Oakley has no adequate remedy at law.
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VII. FOURTH CLAIM FOR RELIEF
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(False Designation of Origin and Federal Unfair Competition)
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(15 U.S.C. 1125(a))

68.
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and 51-67 of this Complaint as if set forth fully herein.

69.
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Oakley repeats and re-alleges the allegations of paragraphs 1-32
This is a claim for false designation of origin and unfair
competition and arising under 15 U.S.C. 1125(a).

70.
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Defendants use of Oakleys trademarks and Oakleys trade dress
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without Oakleys consent constitutes a false designation of origin, false or
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misleading description of fact, or false or misleading representation of fact,
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which is likely to cause confusion, or to cause mistake, or to deceive as to the
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affiliation, connection, or association of such person with another person, or as
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to the origin, sponsorship, or approval of his or her goods or commercial
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activities by another person in violation of 15 U.S.C. 1125(a).

71.
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Defendants use of Oakleys trademarks and Oakleys trade dress
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without Oakleys consent constitutes a false designation of origin, false or
26
misleading description of fact, or false or misleading representation of fact,
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which in commercial advertising or promotion, misrepresents the nature,
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COMPLAINT
characteristics, qualities, or geographic origin of his or her or another persons
goods or commercial activities in violation of 15 U.S.C. 1125(a).
72.
Such conduct by Defendant is likely to confuse, mislead, and
deceive Defendants customers, purchasers, and members of the public as to the
origin of the Oakleys trademarks and trade dress or cause said persons to
believe that Defendant and/or its products have been sponsored, approved,
authorized, or licensed by Oakley or are in some way affiliated or connected
with Oakley, all in violation of 15 U.S.C. 1125(a).
73.
Upon information and belief, Defendants actions were undertaken
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willfully with full knowledge of the falsity of such designation of origin and
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false descriptions or representations.
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74.
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gains, profits, and advantages from Defendants false designation of origin, false
15
or misleading statements, descriptions of fact, or false or misleading
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representations of fact in an amount that is not presently known to Oakley. By
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reason of Defendants actions, constituting false designation of origin, false or
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misleading statements, false or misleading descriptions of fact, or false or
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misleading representations of fact, Oakley has been damaged and is entitled to
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monetary relief in an amount to be determined at trial.
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75.
Due to Defendants actions, constituting false designation of origin,
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false or misleading statements, false or misleading description of fact, or false or
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misleading representations of fact, Oakley has suffered and continues to suffer
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great and irreparable injury, for which Oakley has no adequate remedy at law.
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VIII. SIXTH CLAIM FOR RELIEF
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(California Unfair Competition)
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76.
Oakley repeats and re-alleges the allegations of paragraphs 1-32
and 51-75 of this Complaint as if set forth fully herein.

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COMPLAINT
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77.
This is a claim for unfair competition, arising under California
Business & Professions Code 17200, et seq.

78.
Defendants
acts
of
trademark
infringement,
trade
dress
infringement, and false designation of origin complained of herein constitute
unfair competition with Oakley under the laws of the State of California,
particularly California Business & Professions Code 17200 et seq.
79.
gains, profits and advantages from Defendants unfair competition in an amount
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that is not presently known to Oakley. By reason of Defendants wrongful acts
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as alleged in this Complaint, Oakley has been damaged and is entitled to
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restitution.
13
80.
By its actions, Defendant has injured and violated the rights of
14
Oakley and has irreparably injured Oakley, and such irreparable injury will
15
continue unless Defendant is enjoined by this Court.
16
17
18
19
20
WHEREFORE, Oakley prays for judgment in its favor against

Defendant for the following relief:
A.
An Order adjudging Defendant to have willfully infringed the
Asserted Patents under 35 U.S.C. 271.

B.
A preliminary and permanent injunction enjoining Defendant, its
21
respective officers, directors, agents, servants, employees, and attorneys, and
22
those persons in active concert or participation with Defendant, from infringing
23
the Asserted Patents in violation of 35 U.S.C. 271.
24
C.
That Defendant accounts for all gains, profits, and advantages
25
derived by Defendants infringement of the Asserted Patents in violation of
26
35 U.S.C. 271, and that Defendant pays to Oakley all damages suffered by
27
Oakley and/or Defendants total profit from such infringement pursuant to 35
28
U.S.C. 289.
- 19 -
COMPLAINT
1
2
3
4
D.
An Order for a trebling of damages and/or exemplary damages
because of Defendants willful conduct pursuant to 35 U.S.C. 284.

E.
An award to Oakley of the attorney fees, expenses, and costs
incurred by Oakley in connection with this action pursuant to 35 U.S.C. 285.
F.
An Order adjudging that this is an exceptional case.
G.
An Order adjudging Defendant to have willfully infringed each of
7
8
9
10
11
12
13
the Oakley Marks under 15 U.S.C. 1114.

H.
An Order adjudging Defendant to have willfully infringed each of
Oakleys HALF JACKET Trade Dress and Oakleys STRAIGHT JACKET

Trade Dress under 15 U.S.C. 1125.
I.
An Order adjudging Defendant to have falsely designated the
origin of its goods under 15 U.S.C. 1125.

J.
An Order adjudging Defendant to have unfairly competed with
14
Oakley under 15 U.S.C. 1125 and California Business & Professions Code
15
17200, et seq.
16
K.
That Defendant accounts for all gains, profits, and advantages
17
derived by Defendants infringement of the Oakley Marks, Oakleys HALF
18
JACKET Trade Dress and Oakleys STRAIGHT JACKET, false designation
19
of origin, and federal unfair competition and that Defendant pays to Oakley all
20
damages suffered by Oakley and/or Defendants total profit from such
21
infringement pursuant to 15 U.S.C. 1117.
22
23
24
L.
An Order for a trebling of damages and/or exemplary damages
because of Defendants willful conduct pursuant to 15 U.S.C. 1117.

M.
A preliminary and permanent injunction against Defendant, its
25
officers, agents, servants, employees, representatives, successors, and assigns,
26
and all persons, firms, or corporations in active concert or participation with
27
Defendant, enjoining them from engaging in the following activities and from
28
- 20 -
COMPLAINT
assisting or inducing, directly or indirectly, others to engage in the following
activities:
1. using any of the Oakley Marks, or any other mark, symbol, or
logo that is confusingly similar to any of the Oakley Marks on
or in connection with any goods, including but not limited to,
eyewear and replacement parts;
2. using Oakleys HALF JACKET Trade Dress, Oakleys
STRAIGHT JACKET Trade Dress, or any other trade dress
that is confusingly similar to either Oakleys HALF JACKET
10
Trade Dress or Oakleys STRAIGHT JACKET Trade Dress;
11
3. manufacturing, using, displaying, distributing, or selling any
12
goods that infringe any of the Oakley Marks, Oakleys HALF
13
JACKET Trade Dress or Oakleys STRAIGHT JACKET
14
Trade Dress.
15
4. falsely designating the origin of Defendants goods;
16
5. unfairly competing with Oakley in any manner whatsoever;
17
6. making false or misleading statements, descriptions of fact, or

false or misleading representations of fact; and
18
7. causing a likelihood of confusion or injuries to Oakleys
19
business reputation.
20
21
N.
That Defendant be required to account to Oakley for any and all
22
profits derived by its acts of trademark infringement, trade dress infringement,
23
false designation of origin and unfair competition complained of in this
24
Complaint.
25
O.
That Defendants acts of trademark infringement, trade dress
26
infringement, false designation of origin and unfair competition complained of
27
in this Complaint be deemed willful, that this be deemed an exceptional case,
28
and that Oakley be entitled to enhanced damages.

- 21 -
COMPLAINT
1
2
3
4
5
6
P.
That Oakley have and recover the costs of this civil action,
including reasonable attorneys fees.

Q.
An award of pre-judgment and post-judgment interest and costs of
this action against Defendant.

R.
Such other and further relief as this Court may deem just and
proper.
Respectfully submitted,
9
10
13
By: /s/ Ali S. Razai

Michael K. Friedland
Ali S. Razai
14
11
12
Dated: May 12, 2016
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- 22 -
COMPLAINT
DEMAND FOR JURY TRIAL

Plaintiff Oakley, Inc. hereby demands a trial by jury on all issues so
2
3
triable.
Respectfully submitted,
6
7
Dated: May 12, 2016
8
9
10
11
By: /s/ Ali S. Razai

Michael K. Friedland
Ali S. Razai
23303966
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- 23 -
COMPLAINT
TABLE OF EXHIBITS
Page #
Exhibit 1................................................................................................................ 1
Exhibit 2................................................................................................................ 5
Exhibit 3.............................................................................................................. 10
Exhibit 4.............................................................................................................. 15
Exhibit 5.............................................................................................................. 21
Exhibit 6.............................................................................................................. 26
Exhibit 7.............................................................................................................. 31
10
Exhibit 8.............................................................................................................. 41
11
Exhibit 9.............................................................................................................. 42
12
Exhibit 10............................................................................................................ 43
13
Exhibit 11............................................................................................................ 44
14
15
16
17
18
23322119
19
20
21
22
23
24
25
26
27
28
TABLE OF EXHIBITS
EXHIBIT 1

USO0D581443 S
(12) United States Design Patent (10) Patent N0.:

Jannard et a].
(54)
EYEGLASSES COMPONENTS
5,610,668 A
D384,364
5,760,868
D399,519
D399,866
D401,607
D410,484
6,233,342
(75) Inventors: James H. Jannard, Spieden Island, WA

(US); Lek Thixton, Orcas, WA (US);
Colin Baden, Irvine, CA (US); Peter
Yee, Irvine, CA (US)
(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US)

(**)
Term:
D452,522 S
(62) Division of application No. 29/266,547, ?led on Sep.

22, 2006, noW Pat. No. Des. 569,412.
LOC (8) Cl.
US. Cl.
Yee
Jannard et a1.
Yee
Yee
Miniutti
Jannard et a1.
Fernandez
12/2001
Chiou
..................... .. D16/330
4/2003 Thixton et a1.

*
9/2006
Matera .................... .. D16/315
OTHER PUBLICATIONS
Mar. 21, 2008
Related US. Application Data
(51)
(52)
(58)
9/1997
6/1998
10/1998
10/1998
11/1998
6/1999
5/2001
6/2002 Soper
D473,892 S
(21) Appl. No.: 29/301,902

Filed:
D458,624 S
14 Years
*1, Nov. 25, 2008
3/1997 Mage
S
A
S
S
S
S
B1
D529,066 S
(22)
US D581,443 S
(45) Date of Patent:
Field of Classi?cation Search .............. ..
No.
No.
No.
No.
29/266,547,
29/288,604,
29/288,605,
29/288,606,
?led Sep.
?led Jun.
?led Jun.
?led Jun.
22, 2006.
15,2007.
15,2007.
15,2007.
* cited by examiner
................................................ ..
................................................... ..
U.S. Appl.
US. Appl.
U.S. Appl.
U.S. Appl.
16-06
D16/314
D16/ 101,
D16/3004342; D29/1094110; D24/110.2;

351/41, 44, 51452, 62, 158, 92, 1034123,
351/140, 153; 2/4264432, 4474449, 441,
2/4344437
Primary ExamineriRaphael Barkai

(74) Attorney, Agent, or Firm4Gregory K. Nelson
(57)
CLAIM
The ornamental design for eyeglass components, as shoWn

and described.
See application ?le for complete search history.
DESCRIPTION
References Cited
FIG. 1 is a front perspective vieW of the eyeglass components
(56)
of the present invention;
U.S. PATENT DOCUMENTS
D150,924 S
D176,316 S
D178,178 S
9/1948 Blight
12/1955 Fleming
7/1956 Fleming
D293,450
D323,333
D324,394
D329,442
D330,035
D331,587
5,249,001
D344,742
12/1987
1/1992
3/1992
9/1992
10/1992
12/1992
9/1993
3/1994
S
S
S
S
S
S
A
S
D346,814 S
D354,501 S
5/1994
FIG. 2 is a front elevational vieW thereof;

FIG. 3 is a rear elevational vieW thereof;
FIG. 4 is a left-side elevational vieW thereof, the right-side
Jannard
Jannard et a1.
Jannard
Jannard
Jannard
Jannard et a1.
Jannard
Jannard
elevational vieW being a mirror image thereof;

FIG. 5 is a top elevational vieW thereof; and,
FIG. 6 is a bottom plan vieW thereof.
Phantom lining, Where utilized, is for illustrative purposes

only and is not intended to limit the claimed design to the
features shoWn in phantom.
Iida ......................... .. D16/314
1 Claim, 3 Drawing Sheets
1/1995 Jannard
EXHIBIT 1
Page 1
US. Patent
Nov. 25, 2008
Sheet 1 of3
EXHIBIT 1
Page 2
US D581,443 S
US. Patent
Nov. 25, 2008
Sheet 2 of3
EXHIBIT 1
Page 3
US D581,443 S
US. Patent
Nov. 25, 2008
Sheet 3 of3
EXHIBIT 1
Page 4
US D581,443 S
EXHIBIT 2

USO0D547794S

Jannard et al.
(54)
EYEGLASSES
D4l4,796 S
Inventors: James
(US); Hans
H. Jannard,
Karsten
_
Spieden
Moritz,
Island,
Foothill
~ WA
4*
Jul. 31, 2007
10/1999 Arnette
D420,035 S
(75)
US D547,794 S
2/2000
Hartman .................. .. Dl6/325
13449541
,
25 i* 10/2001 gage
Arnette
age ..
:1%UhSA(US)Chn Baden Imne
D518,847 s *
4/2006 Teng .... ..
D532,033 S * 11/2006 Mangum

.
D534,572
1/2007
Teng
.... ..
(73)
**
Ass1gnee: Oakley, Inc., Footh1ll Ranch, CA (US)
D536,028
13534573 S *
1/2007
V2007 Paulson
Mage ..
Tenn?
D537,467 s *
2/2007 Teng ....................... .. D16/326
14 Years
(21) APP1-NO-129/227J19
OTHER PUBLICATIONS
(22)
Filed:
Apr. 13, 2005
Sunglass Hut, P~ 5, 2002*
(51)
LOC (8) Cl.
(52)
US. Cl. ................................................... .. D16/326
(58)
Field of Classi?cation Search ..... .. Dl6/300i330,
(74) Attorney, Agenl, 01 FirmiGregory K- Nelson
............................................... .. 16-06
Dl6/l0l,332i338; D29/l09*ll0; D24/110.2;

351/41, 44, 51452, 62, 158, 92, 1034111,
351/156, 61, 1144119, 1214123; 2/4264432,
2/447i449 441, 436, 434*437

(56)
* Cited by examiner
(57)
CLAIM
_
The ornamental deslgn for an eyeglasses, as shown and
descnbed'
References Cited
DESCRIPTION

D192,885 S
Dl93,028
D199,150
D202,658
D209,862
S
S
S
S
5/1962
6/1962
9/1964
10/1965
l/l968
3/1968
FIG. 1 is a front perspective vieW of the eyeglasses of the
Petitto ..................... .. D16/329
FIG. 2 is a left-side elevational vieW of the eyeglasses, the
Petitto
Carmichael
Petitto
McCracken
D210,418 S
D218,569 S
9/1970 McCracken ..
D264,094 S
4/1982
right side elevational vieW being a mirror image thereof;
Bloch ...................... .. D16/326

Morris
present invention;
D16/325
.................... .. D16/325

FIG. 5 is a top plan vieW thereof; and,
D268,683 S
4/1983 Tenny
D285,020
D372,726
D390,589
D397,351
8/1986
8/1996
2/1998
8/1998

S
S
S
S
D399,238 S
D407,099 S
10/1998
Schmidthaler
Simioni
Simioni
Simioni
Simioni ................... .. D16/326
3/1999 Wang
EXHIBIT 2
Page 5
U.S. Patent
Jul. 31, 2007
Sheet 1 of4
EXHIBIT 2
Page 6
US D547,794 S
EXHIBIT 2
Page 7
U.S. Patent
Jul. 31 2007
Sheet 3 of4
EXHIBIT 2
Page 8
U.S. Patent
Jul. 31, 2007
Sheet 4 of4
FIG. 6
EXHIBIT 2
Page 9
US D547,794 S
EXHIBIT 3

USO0D554689S
(12) United States Design Patent (10) Patent N0.2

Jannard et a].
(54)
EYEGLASS FRAME
D399,238 S
10/1998
D407,099 S
(75)
Inventors: James H. Jannard, Spieden Island, WA
(73)
13414396 5
2
221E265 ms) Coll Baden Imne
D488,499 s
D500,781 S
D518,847
Assignee. Oakley, Inc., Foothill Ranch, CA (US)
Tenn?
Appl. No.: 29/272,776
(22)
Filed:
. . . . .. Dl6/326
1/2005
Mage ..
.... .. D16/326
4/2006
Teng
. ... ..
......
. . . . ..
D16/326
____ __ B16626
1/2007
Teng
D534,573
1/2007
Mage
.....
. . . . .. Dl6/326
. . . . ..
D16/326
D536,028 S
1/2007
Paulson ..
.... .. D16/326
2/2007 Teng ....................... .. D16/326
OTHER PUBLICATIONS
_
Sunglass Hut, p. 5, 2002*
US. Appl. N0. 29/227,719, ?led Apr. 13, 2005, Jannard, Pending
(62) Division of application No. 29/227,719, ?led on Apr.

13, 2005.
apphcanon'
* cited by examiner
(51)
LOC (s) C].
(52)
us. Cl. ................................................... .. 1)16/326
(58)
............................................... .. 16-06
D16/101,332*338; D29/l09ill0; D24/110.2;

351/41 44 51452 62 158 92 1034111
351/156, 61, 1144119, 1214123, 2/4264432,

2/4474449, 441, 436, 4344437

(74)A0r"@y~4g@10rFirm*Greg1'Y K- Nelson
(57)
(56)
References Cited
The ornamental design for an eyeglass frame, as shown and
described
S
S
S
S
5/1962
6/1962
9/1964
10/1965
1/1968
FIG. 1 is a front perspective vieW of the eyeglass frame of

Petitto ..................... .. D16/329
Petitto
Carmichael
Petitto
McCracken

D210,418 S
3/1968
D218,569 S
9/1970 McCracken ..
D264,094 S
4/1982
DESCRIPTION
the present invention;
US. PATENT DOCUMENTS

*
CLAIM
-
Bloch ...................... .. D16/326

Morris
D268,683 S
4/1983 Tenny
D285,020
D372,726
D390,589
D397,351
8/1986
8/1996
2/1998
8/1998
S
S
S
S
....
~~~~ ..~~
Mage . . . . .
D537,467 s *
Related U-S- APPIICatIOII Data
D193,028
D199,150
D202,658
D209,862
21mg
ne e
4/2004
D534,572
Feb. 15,2007
D192,885 S
Simioni ................... .. D16/326
1353293 S * 11/2006 Mangum
14 Years
(21)
Nov. 6, 2007
10/ 1999 Afnette
4*
3/1999 Wang
(US); Hans Karsten

_
Moritz,
Foothill
~
**
US D554,689 S
D16/325
.................... .. D16/325
Schmidthaler
Simioni
Simioni
Simioni
FIG. 5 is a top elevational vieW thereof; and,


EXHIBIT 3
Page 10
U.S. Patent
Nov. 6, 2007
Sheet 1 of4
EXHIBIT 3
Page 11
US D554,689 S
U.S. Patent
Nov. 6, 2007
Sheet 2 of4
EXHIBIT 3
Page 12
US D554,689 S
U.S. Patent
Nov. 6, 2007
Sheet 3 of4
FIG. 5
EXHIBIT 3
Page 13
US D554,689 S
U.S. Patent
Nov. 6, 2007
Sheet 4 of4
FIG. 6
EXHIBIT 3
Page 14
US D554,689 S
EXHIBIT 4

USO0D556818S

Jannard et a].
(54)
(75)
EYEGLASS COMPONENTS
Inventors: James H. Jannard, Spieden Island, WA
D481,063 S
10/2003
D500,781 S
1/2005
13534572 5 *
(US); Hans Karsten

_
Moritz,
Foothill
~
221E265 ms) Coll Baden Imne
Term:
14 Years
(21)
Appl. No.: 29/272,777
(22) Filed;
Dec. 4, 2007
Lane ....................... .. D16/326

Mage ..
1/2007 Teng
(Ting
uang
~ ~ ~ ~ ..
~~
1/2007 Bruck
D537,467 S
2/2007
.... .. D16/335
~~~~ ~~ 1316/337
~ ~ ~ ~ ..
....
~~
.... .. D16/326
Teng ....................... .. D16/326
OTHER PUBLICATIONS
Pending U.S. Appl. No. 29/227,719, ?led Apr. 13, 2005, Jannard.
* cited by examiner
_
Primary ExammeriRaphael Barkai
Feb 15, 2007
(74) Attorney, Agent, or FirmiGregory K. Nelson
Related US. Application Data

(62)
4*
D536,026 s *

(**)
US D556,818 S
(57)
CLAIM
Division OfaPPliCatiOn NO- 29/227,719, ?led On AP1
The ornamental design for an eyeglass components, as
13,
Shown and described_
HOW Pat. NO. Des.
(51)
LOC (8) Cl.
(52)
(58)
US. Cl. ................................... .. D16/326; D16/335

............................................... .. 16-06
D16/101,332*338; D29/l09ill0; D24/110.2;

351/41, 44, 51452, 62, 158, 92, 1034111,
351/156, 61 114E119 121E123; 2/426i432

2/447i449, 441, 436, 4344437
See application ?le for Complete Search history.
(56)
References Cited
DESCRIPTION
FIG 1 is a from perspective View of the eyeglass COmpO_

Helm of the present invention;
FIG 21S a ers ective View thereof

'
FIG. 3 15 a front elevational VleW thereof;

FIG. 4 is a lateral left-side elevational View thereof, the
lateral right-side elevational View being a mirror image
thereof;
FIG. 5 is a medial left-side elevational View thereof, the

D193,028
D199,150
D202,658
D209,862
S
S
S
S
6/1962
9/1964
10/1965
1/1968
Petitto
Carmichael
Petitto
McCracken
medial right-side elevational View being a mirror image
thereof;
FIG. 6 is a rear elevational View thereof;
FIG. 7 is a bottom plan View thereof; and,
D268,683 S
4/1983 Tenny
FIG. 8 is a top elevational View thereof.
D285,020
D372,726
D390,589
D397,351
8/1986
8/1996
2/1998
8/1998

S
S
S
S
Schmidthaler
Simioni
Simioni
Simioni
D407,099 S
3/1999 Wang
D414,796 S
10/1999 Arnette
EXHIBIT 4
Page 15
U.S. Patent
Dec. 4, 2007
Sheet 1 0f 5
EXHIBIT 4
Page 16
US D556,818 S
U.S. Patent
Dec. 4, 2007
Sheet 2 0f 5
EXHIBIT 4
Page 17
US D556,818 S
U.S. Patent
Dec. 4, 2007
Sheet 3 0f 5
EXHIBIT 4
Page 18
US D556,818 S
U.S. Patent
Dec. 4, 2007
Sheet 4 0f 5
FIG. 7
EXHIBIT 4
Page 19
US D556,818 S
U.S. Patent
Dec. 4, 2007
Sheet 5 0f 5
FIG. 8
EXHIBIT 4
Page 20
US D556,818 S
EXHIBIT 5

USO0D675664S

Moritz
(54)
US D675,664 S
EYEGLASS
D545,868 S
.
(75) Inventor:
Hans Moritz, Foothlll Ranch, CA (US)
Feb. 5, 2013
7/2007 Chuang
D553,173 S
10/2007 Baden et a1.
D553,177 S
10/2007
13564568 S
*9:
Ch
3/2008 Moiriltz
D564,571 S
3/2008
(73) Ass1gnee: Oakley, Inc., Foothill Ranch, CA (US)
D569,412 S
5/2008 Jannard er a1,
D575,324 S
(**)
D581,444 s
Term:
14 Years
D581,449 S
D583,851 S
(21) Appl. No.: 29/396,267
13584330 S
(22)
F1led:
(51)
(52)
LOC (9) Cl. ................................................ .. 16-06

U.S.C1. .................................... .. D16/315;D16/335
Jun. 28, 2011
(58)
Field of Classi?cation Search ............... .. D16/101,
MoritZ ...... ..
11/2008 Yee
12/2008 Lane
V2009 Chen
3/2009 Webb
D590,432 S
4/2009 Yee
D591,787 S
13600269 S
D622755 S
g *
D16/326
ll/2008 Jannard et a1. ............. .. D16/314
7,497,569 B2
Dl6/300i342, 900; D29/109*110; D24/110.2;
351/41 44 51*52 62 158 92 103*123,

351/140, 153, 45*46; 2/426i432, 447*449,
8/2008
Jannard et a1.
5/2009 Yee
90009 Masui
g/2010 Yee
?ofitZ et a1~
OntZ
B16614
"""""""""" "
2006/0238700 A1 10/2006 Del Vecchio

* cited by examiner
2/441, 434*437, 13, 15; D21/483, 659*661;

D14/372
Primary Examiner * Raphael Barkai
(74) Attorney, Agent, or Firm * Knobbe Martens Olson &
Bear, LLP
(56)
References Cited
(57)
Dl96,000
4,787,730
D398,02l
D469,459
D474,223
D476,354
D483,392
D508,5l5
D5ll,540
D5 14,613
D529,066
D539,83l
D543,572
D543,574
7,222,958
D544,020

S
8/1963 McNeill
A
ll/l988 Bristol
S
9/1998 Bolle
S
l/2003 Moritz
S
5/2003 Chen
S
6/2003 Chen
S
12/2003 Chen
S
S
S
S
S
S
S
B1
S
8/2005
ll/2005
2/2006
9/2006
4/2007
5/2007
5/2007
5/2007
6/2007
Yee et a1.
Hsu
Jannard et a1.
Matera
Hsu
Yee et a1.
Jannard et a1.
Chiou
ThiXton et a1.
CLAIM
The ornamental design for an eyeglass, as shoWn and

described.
DESCRIPTION
FIG. 1 is a front perspective vieW of an eyeglass of the present
invention;
FIG. 2 is a front elevational vieW of the eyeglass of FIG. 1;
FIG. 3 is a rear elevational vieW of the eyeglass of FIG. 1;
FIG. 4 is a left side elevational vieW of the eyeglass of FIG. 1,
the right side elevational vieW being a mirror image thereof;

FIG. 5 is a top plan vieW of the eyeglass of FIG. 1; and,
FIG. 6 is a bottom plan vieW of the eyeglass of FIG. 1.
EXHIBIT 5
Page 21
US. Patent
Feb. 5, 2013
Sheet 1 of4
EXHIBIT 5
Page 22
US D675,664 S
US. Patent
Feb. 5, 2013
Sheet 2 of4
US D675,664 S
FIG; 3
x31
EXHIBIT 5
Page 23
US. Patent
Feb. 5, 2013
Sheet 3 of4
EXHIBIT 5
Page 24
US D675,664 S
US. Patent
Feb. 5, 2013
Sheet 4 of4
EXHIBIT 5
Page 25
US D675,664 S
EXHIBIT 6
EXHIBIT 6
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EXHIBIT 6
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EXHIBIT 6
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EXHIBIT 6
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EXHIBIT 6
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EXHIBIT 7

USO0D607039S

Yee
(54)
US D607,039 S
EYEGLASS AND EYEGLASS COMPONENT
*1, Dec. 29, 2009

(74) Attorney, Agent, or Firm4Gregory K. Nelson
(75) Inventor:
Peter Yee, Irvine, CA (US)

(**)
Term:
(57)
CLAIM
The ornamental design for an eyeglass and eyeglass compo
14 Years
nent, as shoWn and described.
(21) Appl.No.: 29088585

(22) Filed:
Jun. 15, 2007
DESCRIPTION
(51)
LOC (9) Cl.
(52)
US. Cl. ................................... ..
................................................ .. 16-06
(58)
Field of Classi?cation Search .............. .. D16/101,
D16/315; D16/314
Dl6/300i342; D29/l09ill0; D24/110.2;

351/41, 44, 51452, 62, 158, 92, 1034123,
351/140, 153, 45446, 157; 2/426i432, 4474449,
2/441, 4344437, 13, 15; D21/483, 6594661
(56)
References Cited
FIG. 1 is a front perspective vieW of the eyeglass and the
eyeglass component of the present invention;


FIG. 5 is a bottom plan vieW thereof;
FIG. 6 is a top plan vieW thereof;

946,596 A
1/1910 Cook
FIG. 7 is a front perspective vieW of an alternative embodi
ment of the eyeglass and eyeglass component of the present
D135,141 S
D137,753 S
3/1943 Reynolds
4/1944 Rey
D145,288 S
7/1946 DiCicco
FIG. 8 is a front elevational vieW of the eyeglass and eyeglass
D146,538 S
D150,924 S
D168,903 S
4/1947 Gagnon
9/1948 Bright
2/1953 Neary
component of FIG. 7;
D169,724
2,709,256
2,759,394
D182,459
D200,391
6/1953
5/1955
8/1956
4/1958
2/1965
S
A
A
S
S
Bauer et al.
Baratelli
Evans
Eisler
Baratelli
D201,919 S
8/1965 Simpson
D228,026 S
3,838,914 A
7/1973 Shindler
10/1974 Fernandez
4,692,001 A
4,786,158 A
9/1987 Anger
11/1988 Barfus-Shanks et a1.
(Continued)
OTHER PUBLICATIONS
invention;
FIG. 9 is a rear elevational vieW of the eyeglass and eyeglass
component of FIG. 7;
FIG. 10 is a left-side elevational vieW of the eyeglass and
eyeglass component of FIG. 7, the right-side elevational vieW

being a mirror image thereof;
FIG. 11 is a top plan vieW of the eyeglass and eyeglass
component of FIG. 7; and,
FIG. 12 is a bottom plan vieW of the eyeglass and eyeglass
component of FIG. 7.
B.B. Sol, Mode 72, 1972, p. 4 (Model 273).
(Continued)
EXHIBIT 7
Page 31
US D607,039 S
Page 2
5,963,293 A
D418,533 S
D320,402
D342,534
D342,959
D343,182
5,387,949
D356,323
D356,324
D359,302
D359,748
D359,749
D365,591
D369,377
D371,152
5,550,599
D373,781
D374,884
D375,112
D376,163
D376,381
D377,498
D383,149
5,805,261
D399,240
D399,865
S
S
S
S
A
S
S
S
S
S
S
S
S
A
S
S
S
S
S
S
S
A
S
S
10/1991
12/1993
1/1994
1/1994
2/ 1995
3/1995
3/1995
6/1995
6/1995
6/1995
12/1995
4/1996
6/1996
8/1996
9/1996
10/1996
10/1996
12/1996
12/1996
1/1997
9/ 1997
9/ 1998
10/1998
10/1998
Jannard et al.
Jannard et al.
Jannard et al.
Jannard
Tackles
Yee
Yee
Yee et al.
Yee
Yee
Jannard et al.
Brune
Simioni et al.
Jannard
Simioni et al.
Jannard
Jannard
Jannard et al.
Jannard et al.
Jannard et al.
Simioni
Houston et al.
Jannard et al.
Jannard et al.
10/1999 Jannard
*
D420,036 S
D423,035 S
D425,541 S
D437,871 S
D446,804 S
D454,905 S
1/2000
Herald et al.
............ .. D16/314
2/2000 Yee et al.

4/2000 Yee et al.
5/2000 Polland
2/2001
Tortorella ................ .. D16/314
8/2001 ThiXton et al.

*
D462,375 S
3/2002
Lueking .................. .. D16/314
9/2002 Baden et a1.
D481,059 S
D542,329 S
*
*
10/2003
5/2007
Egbert et al. ............. .. D16/315

Hester ..
D16/315
D567,839 S
*
*
4/2008
11/2008
Fuchs ...................... .. D16/315

Yee et al. ................. .. D16/320
D579,968 S
D597,123 S *
7/2009 Strecker
D601,181 S
9/2009
D16/315
Fuchs ...................... .. D16/315
OTHER PUBLICATIONS
B.B. Sol. 1971, p. 3 (Models 4412, 272, 273), p. 4 (model on bottom
ofpage), p. 7 (models 250, 256, 268), and p. 14 (model 300).

Macys Catalog, Jul. 1997.
Asia Paci?c Trading company, Inc., Asia Paci?c 1999-2000,
unknown month in 1999, p. 7, p. 11, p. 13, p. 18, p. 35.
Alpina, Ski and Sports Glasses byAlpina 96/ 97, unknown month in
1997, pp. 9, 12, and 13.
* cited by examiner
EXHIBIT 7
Page 32
US. Patent
Dec. 29, 2009
Sheet 1 of8
FIG. 1
EXHIBIT 7
Page 33
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 2 of8
EXHIBIT 7
Page 34
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 3 of8
FIG. 5
EXHIBIT 7
Page 35
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 4 of8
EXHIBIT 7
Page 36
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 5 of8
EXHIBIT 7
Page 37
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 6 of8
EXHIBIT 7
Page 38
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 7 of8
EXHIBIT 7
Page 39
US D607,039 S
US. Patent
Dec. 29, 2009
Sheet 8 of8
EXHIBIT 7
Page 40
US D607,039 S
EXHIBIT 8
EXHIBIT 8
Page 41
EXHIBIT 9
EXHIBIT 9
Page 42
EXHIBIT 10
EXHIBIT 10
EXHIBIT 10
Page 43
EXHIBIT 11
EXHIBIT 11
EXHIBIT 11
Page 44

Oakley v. PR Trading - Complaint

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Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 1 of 80

Michael K. Friedland (SBN 157,217)

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

OAKLEY, INC., a Washington

Civil Action No. '16CV1147 AJB NLS

Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 2 of 80

Plaintiff Oakley, Inc. (Oakley) hereby complains of Defendant PR

Trading Company, Inc. d/b/a PR Sunglasses (Defendant) and alleges as

in this action that relate to patent infringement, trademark infringement, trade

dress infringement, false designation of origin, and federal unfair competition

This Court has personal jurisdiction over Defendant because

Defendant has a continuous, systematic, and substantial presence within this

this judicial district, and by committing acts of patent infringement in this

Venue is proper in this judicial district under 28 U.S.C. 1391(b)

Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 3 of 80

II. THE PARTIES

Oakley is a corporation organized and existing under the laws of

Foothill Ranch, California 92610.

Oakley is informed and believes, and thereon alleges, that

Defendant PR Trading Company, Inc. d/b/a PR Sunglasses is a corporation

place of business at 7596 Harwin Drive, Houston, Texas 77036.

Oakley is informed and believes, and thereon alleges, that

III. GENERAL ALLEGATIONS

recognized for their innovative technology and distinctive style.

founding, Oakleys engineers and designers have worked continuously to bring

new technology and breakthrough designs to the market.

Oakley has been actively engaged in the manufacture and sale of

high quality eyewear since at least 1985.

protected by various intellectual property rights owned by Oakley.

Oakley is the manufacturer and

On November 25, 2008, the United States Patent and Trademark

D581,443 (the D443 Patent), titled EYEGLASSES COMPONENTS.

Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 4 of 80

EYEGLASSES. Oakley is the owner by assignment of all right, title, and

attached hereto as Exhibit 2.

On November 6, 2007, the USPTO duly and lawfully issued United

On December 4, 2007, the USPTO duly and lawfully issued United

COMPONENTS. Oakley is the owner by assignment of all right, title, and

attached hereto as Exhibit 4.

On February 5, 2013, the USPTO duly and lawfully issued United

A true and correct copy of the D664 Patent is attached hereto as

On December 29, 2009, the USPTO duly and lawfully issued

EYEGLASS AND EYEGLASS COMPONENT. Oakley is the owner by

Case 3:16-cv-01147-AJB-NLS Document 1 Filed 05/12/16 Page 5 of 80

copy of the D039 Patent is attached hereto as Exhibit 7.

Oakley has provided the public with constructive notice of its

patent rights pursuant to 35 U.S.C. 287.

Defendant manufactures, uses, sells, offers for sale, and/or imports

In order to protect Oakleys investment in the development of its

proprietary technology, Oakley has obtained numerous trademark registrations,

including Trademark Registration Nos. 2,146,295 and 1,984,501 (Oakley

Oakley is the owner of Trademark Registration No. 2,146,295.

Trademark Registration No. 2,146,295 was registered with the USPTO on

March 24, 1998 on the Principal Register.

2,146,295 is associated with the following goods: protective and/or anti-glare

eyewear, namely, sunglasses, goggles, spectacles and their parts and

accessories, namely, replacement lenses, earstems, frames, nose pieces and

their parts and accessories.

registration of Trademark Registration No. 2,146,295 is attached hereto as

Trademark Registration No.

A true and correct copy of the certificate of

Oakley is the owner of Trademark Registration No. 1,984,501.

2, 1996 on the Principal Register. Trademark Registration No. 1,984,501 is