Nike, Inc. et al v. QiLoo International Limited

Filing 15

AMENDED COMPLAINT with Jury Demand against QiLoo International Limited, filed by Nike, Inc., Converse, Inc.. No changes to parties. Proof of service due by 6/7/2012. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V, # 23 Exhibit W, # 24 Exhibit X, # 25 Exhibit Y, # 26 Exhibit Z, # 27 Exhibit AA, # 28 Exhibit BB, # 29 Exhibit CC, # 30 Exhibit DD, # 31 Exhibit EE, # 32 Exhibit FF, # 33 Exhibit GG, # 34 Exhibit HH, # 35 Exhibit II, # 36 Exhibit JJ, # 37 Exhibit KK, # 38 Exhibit LL, # 39 Exhibit MM, # 40 Exhibit NN, # 41 Exhibit OO, # 42 Exhibit PP, # 43 Exhibit QQ, # 44 Exhibit RR, # 45 Exhibit SS, # 46 Exhibit TT, # 47 Exhibit UU, # 48 Exhibit VV, # 49 Exhibit WW, # 50 Exhibit XX, # 51 Exhibit YY, # 52 Exhibit ZZ, # 53 Exhibit AAA, # 54 Exhibit BBB, # 55 Exhibit CCC, # 56 Exhibit DDD, # 57 Exhibit EEE, # 58 Exhibit FFF, # 59 Exhibit GGG) (Fountain, Jonathan)

1 Michael J. McCue (Nevada Bar #6055)
[e-mail]

2 Jonathan W. Fountain (Nevada Bar #10351)
[e-mail]

3 Lewis and Roca LLP
3993 Howard Hughes Parkway, Suite 600

4 Las Vegas, Nevada 89109
Telephone: [phone]

5 Facsimile: [phone]
6 Christopher J. Renk
Erik S. Maurer

7 Michael J. Harris
Azuka C. Dike

8 Banner & Witcoff, Ltd.
10 South Wacker Drive, Suite 3000

9 Chicago, Illinois 60606
Telephone: [phone]

10 Facsimile: [phone]
(Pro Hac Vice to be Submitted)

11
12 Attorneys for Plaintiffs, NIKE, Inc. and Converse Inc.
13
UNITED STATES DISTRICT COURT

14
DISTRICT OF NEVADA

15
NIKE, INC.

)
)
)
)
)
)
)
)
)
)
)
)

16
and

17
CONVERSE INC.,

18
Plaintiffs,

19
vs.

20
QILOO INTERNATIONAL LIMITED

21

Case No. 2:12-cv-00191-GMN-GWF
FIRST AMENDED COMPLAINT

Jury Trial Demanded

Defendant.

22
23
24

Plaintiffs, NIKE, Inc. and Converse Inc., for their First Amended Complaint against
Defendant, QiLoo International Limited, state as follows:

25

I. PARTIES

26
27
28

1.

NIKE, Inc. is a corporation organized under the laws of the State of Oregon and

has a principal place of business at One Bowerman Drive, Beaverton, Oregon 97005.

1

1

2.

Converse Inc. is a wholly owned subsidiary of NIKE and has a principal place of

2 business at One High Street #6, Andover, Massachusetts 01845.
3

3.

Defendant QILOO International Limited (“QiLoo”) is a Chinese company with a

4
principal place of business at 2-2303 (2-2358), No. 2 Bldg., Fuxin Garden Castle, Fengze Street,
5
6

QuanZhou, 362000, Fujian, China.
II. JURISDICTION & VENUE

7
8

4.

This is an action for patent and trademark infringement arising under 35 U.S.C. §

9 1, et seq. and 15 U.S.C. §1501, et seq.
10
11

5.

This Court has jurisdiction over this action under 15 U.S.C. §§ 1119 and 1121 and

28 U.S.C. §§ 1331, 1338, and 1367.

12
6.

This Court may exercise personal jurisdiction over QiLoo based upon QiLoo’s

13
14

contacts with this forum, including QiLoo’s regularly and intentionally doing business here and

15 having committed acts of infringement within this forum by promoting, distributing, offering to
16 sell and selling products covered by Plaintiffs’ design patents and trademarks, at least at the
17 twice annual World Shoe Association (“WSA”) trade shows in Las Vegas, Nevada.
18
19

7.

Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), (c), (d),

and 1400(b), because QiLoo does business, has committed acts of infringement, and is subject to

20
21

personal jurisdiction here.
III. GENERAL ALLEGATIONS

22
23

A.

NIKE’s Design Patents

24

8.

For many years, NIKE has continuously engaged in the development,

25 manufacture, and sale of a wide array of athletic and fashion footwear, apparel, and sports
26

equipment.

27
9.

Over the years, NIKE has taken steps to protect its innovative footwear designs.

28
2

1 For example, NIKE is the owner of various United States design patents relating to its footwear
2 designs. In particular, NIKE is and has been the owner of all right, title, and interest to each of
3

the United States design patents identified in Table 1 (hereafter, the “NIKE Design Patents”)

4
since the date each patent duly and legally issued to NIKE. A copy of each NIKE Design Patent
5
6

is attached to this Complaint as indicated in Table 1.

7

TABLE 1: NIKE DESIGN PATENTS
United States
Design Patent No.

Issue Date of Patent

Complaint
Exhibit

D361,884

September 5, 1995

A

D429,877

August 29, 2000

B

12

D462,830

September 17, 2002

C

13

D475,523

June 10, 2003

D

14

D494,353

August 17, 2004

E

D499,247

December 7, 2004

F

D500,585

January 11, 2005

G

D500,917

January 18, 2005

H

19

D523,618

June 27, 2006

I

20

D524,028

July 4, 2006

J

21

D524,529

July 11, 2006

K

D532,600

November 28, 2006

L

D546,541

July 17, 2007

M

25

D547,541

July 31, 2007

N

26

D555,332

November 20, 2007

O

27

D573,338

July 22, 2008

P

8
9
10
11

15
16
17
18

22
23
24

28
3

1

TABLE 1: NIKE DESIGN PATENTS

2

Issue Date of Patent

3

United States
Design Patent No.

Complaint
Exhibit

4

D573,339

July 22, 2008

Q

5

D575,046

August 19, 2008

R

6

D578,294

October 14, 2008

S

7

D579,186

October 28, 2008

T

D580,636

November 18, 2008

U

D580,646

November 18, 2008

V

11

D586,548

February 17, 2009

W

12

D641,968

July 26, 2011

FFF

13

D642,369

August 2, 2011

GGG

8
9
10

14
15

B.

Plaintiffs’ Asserted Trademarks

16

10.

As a result of continuous and long-standing promotion, substantial sales, and

17

consumer recognition of certain of their footwear designs, Plaintiffs have developed trademark

18
19
20

rights in the ornamental appearance of those designs. Specifically, Converse and NIKE own
common law and registered trademark rights in the appearance of the footwear designs identified

21 in Table 2 (hereafter, the “Converse and NIKE Trademarks”). A copy of the registration
22 certificates for each of the Converse and NIKE Trademarks is attached to this Complaint as
23 indicated in Table 2.
24
Table 2: CONVERSE AND NIKE TRADEMARKS
25
26
27
28

United States
Trademark
Reg. No.
Registration No.
1,588,960

Trademark

Trademark
Registration Date

Complaint
Exhibit

Chuck Taylor
Outsole Design

March 27, 1990

X

4

1
2

Table 2: CONVERSE AND NIKE TRADEMARKS
Trademark

Trademark
Registration Date

Complaint
Exhibit

Chuck Taylor
Outsole Design
Air Force One
Low Design
Chuck Taylor
Low Design
Chuck Taylor
High Design

July 3, 2007

Y

June 24, 2008

Z

November 29, 2011

AA

8

United States
Trademark
Reg. No.
Registration No.
3,258,103
Registration No.
3,451,905
Registration No.
4,062,112
Registration No.
4,065,482

December 6, 2011

BB

9

Registration No.
1,998,884

Jack Purcell
Toe Smile

September 10, 1996

EEE

3
4
5
6
7

10
11

C.
11.

12

QiLoo’s Infringing Activities
Without Plaintiffs’ authorization, QiLoo has made, used, offered to sell,

13
promoted, distributed, sold, and/or imported into the United States numerous shoes, including
14
15

shoes having designs that are substantially the same as the designs covered by the NIKE Design

16 Patents and that are counterfeits of the Converse and NIKE Trademarks (hereafter, the
17 “Infringing Shoes”).
18

12.

On information and belief, Defendant imports Infringing Shoes into the United

19 States, and promotes, distributes, offers to sell, and sells the Infringing Shoes at the WSA show
20

in Las Vegas, Nevada. According to the WSA’s website, the WSA “is the most comprehensive

21
footwear and accessories show in the world.

The twice-yearly event gathers exhibitors

22
23

showcasing, thousands of brands, attracting category leaders, industry newsmakers, top

24 designers, as well as retailers from every market segment, retail and distribution channel.”
25 (Compl. Ex. MM, http://www.wsashow.com/media_information/landing, last visited February 3,
26 2012).
27

13.

Plaintiffs’ representatives visit the WSA trade shows in Las Vegas and have

28
5

1 observed QiLoo promoting and offering to sell Infringing Shoes. Pursuant to 35 U.S.C. § 287,
2 Plaintiffs notified QiLoo that it is infringing Plaintiffs’ rights by promoting and offering to sell
3

Infringing Shoes, including shoes identified by QiLoo Model Numbers: QL-20756, QL-21126,

4
QL-21193, QL-21212, QL-21533, QL-21784, QL-21810, QL-23416, QL-23548, QL-23550, QL5
6

23832, QL-23860, QL-24108, QL-24213, QL-24297, QL-24715, QL-25322, QL-25470, QL-

7 25472, QL-25216, QL-25733, QL-26294, QL-27141, QL-27188, QL-28504, QL-28529, QL8 28607, and QL-28608. Many of the infringing models are shown in the QiLoo catalog excerpts
9 attached as Complaint Exhibits JJ, KK, and LL, and specific examples of Infringing Shoes are
10 compared to NIKE Patents and Converse and NIKE Trademarks in Table 3 below. Notably,
11

however, because QiLoo does not provide identifying indicia on all of its Infringing Shoes and

12
because Plaintiffs have not been able to secure an image of each Infringing Shoe, Table 3 does
13
14

not set forth all of QiLoo’s infringements.

15 ///
16 ///
17 ///
18 ///
19 ///
20 ///
21 ///
22 ///
23 ///
24 ///
25 ///
26 ///
27 ///
28
6

1
2
3

Table 3: QILOO’S INFRINGEMENTS
Plaintiffs’ Asserted Patent/Trademark

QiLoo’s Infringing Shoes

D429,877

QL-21810

4
5
6
7
8
9

QL-21810 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.19).

See Compl. Ex. B

10
11
12
13
14
15
16

QL-21533

D462,830
See Compl. Ex. C

QL-21553 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.30).

17
18
19
20
21
22

QL-21810

D475,523
23
See Compl. Ex. D

QL-21810 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.19).

24
25
26
27
28
7

1

Table 3: QILOO’S INFRINGEMENTS

2
Plaintiffs’ Asserted Patent/Trademark

QiLoo’s Infringing Shoes

8

D494,353

QL-21193

9

See Compl. Ex. E

QL-21193 was first noticed of infringement on
February 2, 2007, and has appeared in QiLoo
catalogs during at least the August 2007 WSA
show. (See Compl. Exs. CC and JJ at p.13).

3
4
5
6
7

10
11
12
13
14
15
16

QL-21712

17

D499,247

18

See Compl. Ex. F

QL-21712 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.36).

19
20
21
22
23
24
25
26

QL-21712
D500,585

QL-21712 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.36).

See Compl. Ex. G

27
28
8

1

Table 3: QILOO’S INFRINGEMENTS

2
Plaintiffs’ Asserted Patent/Trademark

3

QiLoo’s Infringing Shoes

4
5
6
7
8

QL-21712

D532,600

9

QL-21712 has appeared in QiLoo catalogs
during at least the August 2007 WSA show.
(See Compl. Ex. JJ, at p.36).

See Ex. L

10
11
12
.
13
14
15

QL-24715
16

D555,332

17

See Compl. Ex. O

QL-24715 has appeared in QiLoo catalogs
during at least the Feb. 2010 WSA show (See
Compl. Ex. KK, at p.23); and July 2011 WSA
show. (See Compl. Ex. LL, at p.23).

18
19
20
21
22
23
24

QL-26294

D586,548

25
26

QL-26294 has appeared in QiLoo catalogs
during at least the Feb. 2010 WSA show (See
Compl. Ex. KK, at p.1); and July 2011 WSA
show. (See Compl. Ex. LL, at p.1).

See Compl. Ex. W

27
28
9

1

Table 3: QILOO’S INFRINGEMENTS

2
3

Plaintiffs’ Asserted Patent/Trademark

QiLoo’s Infringing Shoes

4
5
6
7
8

TM Reg. No. 1,588,960

9

See Compl. Ex. X

QL-25472; QL-27141; QL-27188; QL-23860

10
QiLoo models QL-27188, QL-25472, QL27141, and QL-23860 have appeared in QiLoo
catalogs during at least the Feb. 2010 WSA
show (See Compl. Ex. KK, at p.23-24); and
July 2011 WSA show. (See Compl. Ex. LL, at
p.23-24).

11
12
13
14
15
16

TM Reg. No. 3,258,103
See Compl. Ex. Y

17
18
19
20
21
22

QL-23416

23

TM Reg. No. 3,451,905

24

See Compl. Ex. Z

25

QL-23416 has appeared in QiLoo catalogs
during at least the Feb. 2010 WSA show (See
Compl. Ex. KK, at p.20); and July 2011 WSA
show (See Compl. Ex. LL, at p.20).

26
27
28
10

1

Table 3: QILOO’S INFRINGEMENTS

2
3

Plaintiffs’ Asserted Patent/Trademark

QiLoo’s Infringing Shoes

4
5
6
7
8

QL-25216; QL-25472; QL-27188; QL-27141

9

TM Reg. No. 4,062,112

10

See Compl. Ex. AA

11

QiLoo models QL-25472, QL-25216, QL7188, and QL-27141 have appeared in QiLoo
catalogs during at least the Feb. 2010 WSA
show (See Compl. Ex. KK, at p.23-25); and
July 2011 WSA show. (See Compl. Ex. LL, at
p.23-25).

12
13
14
15
16
17
18
19

QL-23860

TM Reg. No. 4,065,482

20

See Compl. Ex. BB

21
22

QL-23860 has appeared in QiLoo catalogs
during at least the Feb. 2010 WSA show (See
Compl. Ex. KK, at p.23); and July 2011 WSA
show. (See Compl. Ex. LL, at p.23).

23
24
25
26

14.

A detailed history of Plaintiffs’ infringement notices to QiLoo follows.

On

February 2, 2007, NIKE hand delivered a first notice letter to QiLoo representatives at the QiLoo
booth at the WSA Show in Las Vegas, Nevada, and sent a copy of the letter to QiLoo’s business

27
28

address in China. The letter attached as Complaint Exhibit CC, gave the Defendant notice under
11

1 35 U.S.C. § 287 that various shoes the Defendant promoted, offered to sell, and was selling at the
2 WSA trade show, including model numbers QL-21212, QL-20756, QL-21784, QL-21193, QL3

21533, and QL-21810 infringe one or more of NIKE’s U.S. Pat Nos. D532,599; D532,600;

4
D500,585; D499,247; D500,917; D361,884; D494,353; D475,523; D429,877; D524,529;
5
6
7

D523,618; and D462,830.
15.

On July 30, 2008, NIKE hand delivered a second notice letter to QiLoo

8 representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of
9 the letter to QiLoo’s business address in China. The letter attached as Complaint Exhibit DD,
10 gave the Defendant notice under 35 U.S.C. § 287 that various shoes the Defendant promoted,
11

offered to sell and was selling at the WSA trade show, including model numbers QL-23832, QL-

12
25733, QL-24108, and QL-25322 infringe one or more of NIKE’s U.S. Pat Nos. D499,247;
13
14
15

D500,585; D546,541; and D547,541.
16.

On August 1, 2009, NIKE hand delivered a third notice letter to QiLoo

16 representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of
17 the letter to QiLoo’s business address in China. The letter attached as Complaint Exhibit EE,
18
19

gave the Defendant notice under 35 U.S.C. § 287 that various shoes the Defendant promoted,
offered to sell and was selling at the WSA trade show, including model numbers QL-25322 and

20
21
22

QL-26294 infringe one or more of NIKE’s U.S. Pat Nos. D578,294; D586,548; and D579,186.
This letter also notified QiLoo as to NIKE’s ownership of U.S. Trademark Registrations for the

23 appearance of its Air Force 1 shoes, including Air Force 1 “low” shoe design (U.S. Reg. No.
24 3,451,905).
25
26

17.

On February 3, 2010, NIKE hand delivered a fourth notice letter to QiLoo

representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of

27
the letter to QiLoo’s business address in China. The letter attached as Complaint Exhibit FF,
28
12

1 gave the Defendant notice under 35 U.S.C. § 287 that various shoes the Defendant promoted,
2 offered to sell and was selling at the WSA trade show, including model number QL-26294
3

infringe one or more of NIKE’s U.S. Pat Nos. D573,338; D573,339; D575,046; D580,636;

4
D580,646; D586,548; and D575,045. This letter also notified QiLoo that its model number QL5
6

23416 bears a confusingly similar design to Plaintiffs’ U.S. Trademark Reg. No. 3,451,905

7 relating to the Air Force 1 “low” shoe design.
8

18.

On August 11, 2010, NIKE hand delivered a fifth notice letter to QiLoo

9 representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of
10 the letter to QiLoo’s business address in China. The letter attached as Complaint Exhibit GG,
11

gave the Defendant notice under 35 U.S.C. § 287 that various shoes the Defendant promoted,

12
offered to sell and was selling at the WSA trade show, including model numbers QL-24715 and
13
14

QL-26294 infringe one or more of NIKE’s U.S. Pat Nos. D555,332 and D586,548. This letter

15 also notified QiLoo that its model numbers QL-27141, QL-27188, QL-23860, QL-25472, QL16 23416 bear a confusingly similar design to Plaintiffs’ U.S. Trademark Reg. Nos. 1,588,960,
17 3,258,103, and 3,451,905, directed to the Chuck Taylor All Star outsole tread designs and Air
18
19

Force 1 “low” design.
19.

On February 9, 2011, NIKE hand delivered a sixth notice letter to QiLoo

20
21
22

representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of
the letter to QiLoo’s business address in China. The letter attached as Complaint Exhibit HH,

23 gave Defendant notice under 35 U.S.C. § 287 that various shoes Defendant promoted, offered to
24 sell and was selling at the WSA trade show infringe NIKE’s U.S. Pat. No. D524,028 and
25 Converse’s common law trademark rights and U.S. Trademark Reg. Nos. 1,588,960, 3,258,103,
26

directed to the Chuck Taylor All Star outsole tread designs.

27
20.

On July 28, 2011, NIKE hand delivered a seventh notice letter to QiLoo

28
13

1 representatives at the QiLoo booth at the WSA Show in Las Vegas, Nevada, and sent a copy of
2 the letter to QiLoo’s business in China. The letter attached as Complaint Exhibit II, gave QiLoo
3

notice that it was infringing the Converse and NIKE Trademarks.

4
21.

On information and belief, QiLoo ignored Plaintiffs’ repeated warnings and

5
6

continued to import into the United States, promote, distribute, offer to sell, and sell Infringing

7 Shoes.
8

22.

QiLoo’s knowing and repeated infringements of the NIKE Design Patents and the

9 Converse and NIKE Trademarks has been and continues to be intentional and willful.
10
11

23.

On February 7, 2012, pursuant to this Court’s Emergency Ex Parte Temporary

Restraining Order and Seizure Order (CM/ECF Dckt. No. 12), Plaintiffs’ counsel identified

12
“Additional Infringing Shoes” that QiLoo was promoting and offering to sell at its Booth No.
13
14

12736 at the WSA Trade Show in Las Vegas, NV. Specifically, QiLoo was promoting and

15 offering to sell the following:
16

a. Models QL-21103274A, QL-21103630A, and QL-21104050A bearing upper

17

designs that are substantially identical to Converse’s Chuck Taylor All Star high

18
19

design shown in U.S. Trademark Reg. No. 4,065,482;
b. Models QL-21103472A and QL-21103929A bearing upper designs that are

20
21
22

substantially identical to Converse’s Chuck Taylor All Star low design shown in
U.S. Trademark Reg. No. 4,062,112;

23

c. Models QL-21103274A, QL-21103631A, QL-21103631B, and QL-21104050A

24

bearing outsole designs that are substantially identical to Converse’s Chuck

25

Taylor All Star outsole designs shown in U.S. Trademark Reg. Nos. 1,588,960

26

and 3,258,103;

27
d. Models QL-21103631A and QL-21103631B bearing toe cap designs that are
28
14

1

substantially identical to Converse’s Jack Purcell “Toe Smile” cap design that is

2

shown in incontestable U.S. Trademark Reg. No. 1,998,884 owned by Converse;

3

Converse has used its Toe Smile design trademark in connection with its

4
promotion, distribution, offers to sell, and sales of millions of pairs of Jack Purcell
5
shoe designs throughout the United States since the 1930s; and

6
7

e. Model QL-21103107A bearing an upper design that is substantially identical to

8

the upper designs claimed in NIKE’s U.S. Design Patent Numbers D641,968 and

9

D642,369 that are owned by NIKE and that are presumed valid and enforceable

10
11

since their issuance in 2011.
24.

Example images of the Additional Infringing Shoes and relevant Converse

12
Trademarks and NIKE Design Patents are shown in Table 4 below. Images of the Additional
13
14

Infringing Shoes, their hang tags (where available), and the relevant Converse Trademarks and

15 NIKE Design Patents are appended to this First Amended Complaint as indicated in Table 4.
16
Table 4: QILOO’s ADDITIONAL INFRINGING SHOES
17
18

Additional Alleged Infringing Product and
Model Number(s)

Asserted Converse/NIKE
Trademarks/Patents

QL-21103274A and QL-21104050A,
Compl. Exs. NN-SS

U.S. Reg. No.
4,065,482,
Compl. Ex. BB

19
20
21
22
23
24
25
26
27
28
15

1
2
3

Table 4: QILOO’s ADDITIONAL INFRINGING SHOES
Additional Alleged Infringing Product and
Model Number(s)

Asserted Converse/NIKE
Trademarks/Patents

4
5
6
7
8
9
10
11
U.S. Reg. No.
4,065,482,
Compl. Ex. BB

12
13
14
15

QL-21103630A, Compl. Exs. TT-UU

16
17
18
19
20
21
22

QL-21103472A, Compl. Exs. VV-WW

23
24
25
26
27
28
16

U.S. Reg. No.
4,062,112,
Compl. Ex. AA

1
2
3

Table 4: QILOO’s ADDITIONAL INFRINGING SHOES
Additional Alleged Infringing Product and
Model Number(s)

Asserted Converse/NIKE
Trademarks/Patents

QL-21103929A, Compl. Exs. XX-YY

U.S. Reg. No.
4,062,112,
Compl. Ex. AA

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23

QL-21103274A; QL-21103631A; QL-21103631B; and
QL-21104050A, Compl. Ex. QQ

24
25
26
27
28
17

U.S. Reg. No. 1,588,960,
Compl. Ex. X; U.S. Reg. No.
3,258,103, Compl. Ex. Y

1
2
3

Table 4: QILOO’s ADDITIONAL INFRINGING SHOES
Additional Alleged Infringing Product and
Model Number(s)

Asserted Converse/NIKE
Trademarks/Patents

4
5
6
7
8
9
U.S. Reg. No. 1,998,884,
Compl. Ex. EEE

10
11
12
13

QL-21103631A and QL-21103631B,
Compl. Exs. ZZ-BBB

14
15
16
17
U.S. Pat. D641,968,
Compl. Ex. FFF

18
19
20
21
22

U.S. Pat. D642,369,
Compl. Ex. GGG

23
24

QL-21103107A, Compl. Exs. CCC and DDD

25
26
27
28
18

1

COUNT I:
PATENT INFRINGEMENT

2
3

25.

Plaintiffs re-allege each and every allegation set forth in paragraphs 1 through 24

4 above, inclusive, and incorporate them by reference herein.
5

26.

Defendant has made, used, offered to sell, sold, and/or imported into the United

6 States, and still is making, using, offering to sell, selling, and/or importing into the United States,
7

shoes having designs that infringe NIKE Design Patents without NIKE’s authorization.

8
27.

Upon information and belief, Defendant has been and still is inducing others to

9
10
11

infringe the NIKE Design Patents.
28.

Defendant’s infringements have been intentional and willful, making this an

12 exceptional case.
13
14

29.

NIKE has been and will continue to be irreparably harmed by Defendant’s

infringements of the NIKE Design Patents.

15
16
17
18

COUNT II:
TRADEMARK INFRINGEMENT UNDER SECTION 32(1) OF THE LANHAM ACT
30.

Plaintiffs re-allege each and every allegation set forth in paragraphs 1 through 29

19 above, inclusive, and incorporate them by reference herein.
20

31.

Defendant has knowingly used and continues to use in commerce the Converse

21 and NIKE Trademarks, including counterfeits, reproductions, copies, or colorable imitations
22

thereof, in connection with shoes Defendant manufactures, advertises, promotes, and sells in the

23
United States. Defendant has used the Converse and NIKE Trademarks with the knowledge of,
24
25

and the intent to call to mind and create a likelihood of confusion with regard to, and/or trade off

26 Plaintiffs’ fame and the registered Converse and NIKE Trademarks.
27

32.

Plaintiffs have given notice of its registrations and claimed trademark rights

28 pursuant to section 29 of the Lanham Act, 15 U.S.C. § 1111. Nevertheless, Defendant continues
19

1 to use the Converse and NIKE Trademarks.
2
3

33.

Defendant’s use of the Converse and NIKE Trademarks (A) constitutes trademark

counterfeiting, (B) is likely to confuse, mislead, or deceive customers, purchasers, and members

4
of the general public as to the origin, source, sponsorship, or affiliation of Defendant and
5
6

Plaintiffs and/or Defendant’s products and Plaintiffs’ products, and (C) is likely to cause such

7 people to believe in error that Defendant's products have been authorized, sponsored, approved,
8 endorsed, or licensed by Plaintiffs or that the Defendant is in some way affiliated with Plaintiffs.
9

34.

Plaintiffs have no control over the nature and quality of the goods or services

10 Defendant offers, and Plaintiffs’ reputation and goodwill will be damaged – and the value of the
11

Converse and NIKE Trademarks jeopardized – by Defendant’s continued use of the Converse

12
and NIKE Trademarks and colorable imitations thereof. Because of the likelihood of confusion
13
14

between Defendant’s designs and the Converse and NIKE Trademarks, any defects, objections,

15 or faults found with Defendant’s products will negatively reflect upon and injure the reputation
16 that Plaintiffs have established for the product and services it offers in connection with the
17 Converse and NIKE Trademarks. As such, Defendant is liable to Plaintiffs for infringement of
18
19

their registered marks under 15 U.S.C. §1114.
35.

Defendant’s acts alleged above have caused, and if not enjoined will continue to

20
21
22

cause, irreparable and continuing harm to Plaintiffs’ trademarks, business, reputation, and
goodwill. Plaintiffs have no adequate remedy at law as monetary damages are inadequate to

23 compensate Plaintiffs for the injuries caused by Defendant.
24

36.

As a direct and proximate result of Defendant’s conduct, Plaintiffs have suffered

25 damages to the valuable Converse and NIKE Trademarks, and other damages in an amount to be
26

proved at trial.

27
37.

Defendant’s infringement of Plaintiffs’ registered trademarks is deliberate,

28
20

1 willful, fraudulent and without any extenuating circumstances, and constitutes a knowing use of
2 the Converse and NIKE Trademarks, and an exceptional case within the meaning of 15 U.S.C. §
3

1117(b).

4
38.

Plaintiffs are entitled to injunctive relief, a seizure order, and Plaintiffs are also

5
6

entitled to recover QiLoo’s profits, actual damages, enhanced profits and damages, costs, and

7 reasonable attorney fees under 15 U.S.C. §§ 1114, 1116, and 1117.
8
9
10
11

COUNT III:
FALSE DESIGNATION OF ORIGIN/UNFAIR COMPETITION UNDER
SECTION 43(a) OF THE LANHAM ACT
39.

Plaintiffs re-allege each and every allegation set forth in paragraphs 1 through 38

12 above, inclusive, and incorporate them by reference herein.
13
14
15

40.

QiLoo’s use, promotion, offers to sell, sale, and/or importation of Infringing

Shoes violates Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
41.

The Converse and NIKE Trademarks are federally registered, and are entitled to

16
17
18

protection under both federal and common law. The Converse and NIKE Trademarks have
distinctive appearances with unique and non-functional design. Plaintiffs have extensively and

19 continuously promoted and used the Converse and NIKE Trademarks for many decades in the
20 United States and worldwide. Through that extensive and continuous use, the Converse and
21 NIKE Trademarks have become famous and well-known indicators of the origin and quality of
22

NIKE footwear. The Converse and NIKE Trademarks have also acquired substantial secondary

23
meaning in the marketplace.
24
25

42.

QiLoo’s use of colorable imitations of the Converse and NIKE Trademarks

26 constitutes a false designation of origin that is likely to cause consumer confusion, mistake, or
27 deception as to the origin, sponsorship, or approval of the Infringing Shoes by creating the false
28 and misleading impression that the Infringing Shoes are manufactured by, authorized by, or
21

1 otherwise associated with Plaintiffs.
2
3

43.

QiLoo’s use of colorable imitations of the Converse and NIKE Trademarks has

caused, and unless enjoined, will continue to cause substantial and irreparable injury to Plaintiffs

4
for which Plaintiffs have no adequate remedy at law, including at least substantial and
5
6

irreparable injury to the goodwill and reputation for quality associated with the Converse and

7 NIKE Trademarks.
44.

8

On information and belief, QiLoo’s use of colorable imitations of the Converse

9 and NIKE Trademarks has been intentional and willful. QiLoo’s bad faith is evidenced at least
10 by the identical similarity of the Infringing Shoes to the Converse and NIKE Trademarks as well
11

as by QiLoo’s repeated refusal to acknowledge or abide by Plaintiffs’ infringement notices.

12
45.

Plaintiffs are entitled to injunctive relief, and Plaintiffs are also entitled to recover

13
14

QiLoo’s profits, actual damages, enhanced profits and damages, costs, and reasonable attorney

15 fees under 15 U.S.C. §§ 1125(a), 1116, and 1117.
16
COUNT IV:
DILUTION UNDER SECTION 43(c) OF THE LANHAM ACT

17
18
19

46.

Plaintiffs re-allege each and every allegation set forth in paragraphs 1 through 45

above, inclusive, and incorporate them by reference herein.

20
47.

21
22

The Converse and NIKE Trademarks have become famous throughout the United

States as a result of the duration, extent, and geographical reach of advertising and publicity, the

23 amount, volume, and geographical extent of Plaintiffs’ sales and trading areas, their channels of
24 trade, their degree of recognition, and registration of the marks.
25

The Converse and NIKE Trademarks became famous before Defendant used the

49.

26

48.

Because Plaintiffs’ products bearing the Converse and NIKE Trademarks have

marks.

27
28
22

1 gained a reputation synonymous with fashion, quality, styling, and authenticity, the Converse
2 and NIKE Trademarks have gained substantial renown.
3

50.

Defendant has used and continues to use in commerce the Converse and NIKE

4
Trademarks in connection with the advertisement, promotion, and sale of Defendant’s products.
5
6

51.

Defendant’s use of the Converse and NIKE Trademarks, and colorable imitations

7 thereof, is likely to cause, has caused, and continues to cause irreparable injury to and dilution of
8 the distinctive quality of the Converse and NIKE Trademarks in violation of Plaintiffs’ rights
9 under 15 U.S.C. § 1125(c). Defendant’s wrongful use of the Converse and NIKE Trademarks is
10 likely to cause dilution by blurring and the whittling away of the distinctiveness and fame of the
11

Converse and NIKE Trademarks.

12
52.

Defendant’s acts alleged above have caused, and if not enjoined will continue to

13
14

cause, irreparable and continuing harm to Plaintiffs’ trademarks, business, reputation, and

15 goodwill. Plaintiffs have no adequate remedy at law because monetary damages are inadequate
16 to compensate for the injuries Defendant is causing.
17
18
19

53.

As a direct and proximate result of Defendant’s conduct, NIKE has suffered

damages to the valuable Converse and NIKE Trademarks, and other damages in an amount to be
proved at trial.

20
21
22

54.

Defendant’s wrongful use of the Converse and NIKE Trademarks is deliberate,

and constitutes a willful intent to trade on the recognition of the Converse and NIKE

23 Trademarks, making this an exceptional case within the meaning of 15 U.S.C. § 1117.
24

55.

Plaintiffs are entitled to injunctive relief, and Plaintiffs are also entitled to recover

25 QiLoo’s profits, actual damages, enhanced profits and damages, costs, and reasonable attorney
26

fees under 15 U.S.C. §§ 1125(c), 1116, and 1117.

27
28
23

1
2
3

COUNT V:
COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
56.

Plaintiffs re-allege each and every allegation set forth in paragraphs 1 through 55

4 above, inclusive, and incorporate them by reference herein.
5

57.

Plaintiffs were the first to use the Converse and NIKE Trademarks. As a result of

6 Plaintiffs’ continuous promotion and sales of products bearing the Converse and NIKE
7

Trademarks for many decades, the Converse and NIKE Trademarks have become widely known

8
and Plaintiffs have been identified in the public mind as the manufacturer of the products to
9
10
11

which the Converse and NIKE Trademarks are applied.
58.

As a result of the experience, care, and service of Plaintiffs in producing the

12 products to which the Converse and NIKE Trademarks are applied, these products have become
13 widely known and have acquired a worldwide reputation for fashion, quality, styling, and
14
15

authenticity. Moreover, the Converse and NIKE Trademarks have come to symbolize Plaintiffs’
reputation for quality and excellence. The Converse and NIKE Trademarks have also acquired

16
17
18

secondary meaning in the marketplace, and are non-functional.
59.

Defendant, with knowledge of and with intentional disregard of Plaintiffs’ rights,

19 continues to advertise, promote, and sell products using the Converse and NIKE Trademarks, or
20 colorable and confusing imitations thereof. Defendant’s acts are likely to cause, have caused,
21 and will continue to cause confusion as to the source and/or sponsorship of Plaintiffs’ products
22

and services.

23
60.

Defendant’s acts alleged herein and specifically, without limitation, Defendant’s

24
25

use, manufacture, promotion, offers to sell, selling, and/or importing into the United States

26 numerous products that are confusingly similar to products bearing the Converse and NIKE
27 Trademarks, infringe Plaintiffs’ exclusive trademark rights in violation of the common law.
28

61.

Defendant’s acts alleged above have caused, and if not enjoined will continue to
24

1 cause, irreparable and continuing harm to Plaintiffs’ trademarks, business, reputation, and
2 goodwill. Plaintiffs have no adequate remedy at law because monetary damages are inadequate
3

to compensate Plaintiffs for the injuries caused by Defendant.

4
62.

On information and belief, QiLoo’s use of colorable imitations of the Converse

5
6

and NIKE Trademarks has been intentional and willful. QiLoo’s bad faith is evidenced at least

7 by the similarity of the Infringing Shoes to the Converse and NIKE Trademark.
8

63.

Plaintiffs are entitled to injunctive relief, and Plaintiffs are also entitled to recover

9 QiLoo’s profits, actual damages, punitive damages, costs, and reasonable attorney fees.
10
PRAYER FOR RELIEF

11
12

WHEREFORE, Plaintiffs respectfully pray for

13

A.

14
15

Judgment that Defendant has (i) willfully infringed the NIKE Design Patents in

violation of 35 U.S.C. §§ 271 (a) and (b), (ii) willfully infringed the Converse and NIKE
Trademarks in violation of §1114 of Title 15 in the United States Code, (iii) willfully used false

16
17
18

designations of origin/unfair competition in violation of § 1125(a) of Title 15 in the United
States Code, (iv) willfully diluted the Converse and NIKE Trademarks in violation of § 1125(c)

19 of Title 15 in the United States Code, and (v) willfully violated Plaintiffs’ common law rights in
20 the Converse and NIKE Trademarks;
21
22

B.

A preliminary and permanent injunction against further infringement, direct and

indirect, of the NIKE Design Patents and colorable imitations thereof by Defendant, its officers,

23
agents, servants, employees, and attorneys, and all others in active concert or participation with
24
25
26

any of them;
C.

A preliminary and permanent injunction against further infringement, false

27 designation of origin, unfair competition, and dilution of the Converse and NIKE Trademarks by
28
25

1 QiLoo, its officers, agents, servants, employees, and attorneys, and all others in active concert or
2 participation with any of them;
3

D.

An order directing the destruction of all Infringing Shoes and Additional

4
Infringing Shoes, or any other products that use a copy, reproduction, or colorable imitation of
5
6

the Converse or NIKE Trademarks in QiLoo’s possession or control, including the destruction of

7 all advertising materials related to the Infringing Shoes and Additional Infringing Shoes in
8 QiLoo’s possession or control, including on the Internet;
9

E.

An award of damages adequate to compensate NIKE for the patent infringements

10 that have occurred pursuant to 35 U.S.C. § 284, which shall be trebled as a result of Defendant’s
11

willful patent infringement, or an award of Defendant’s profits from its infringements pursuant to

12
35 U.S.C. § 289, whichever is greater, together with prejudgment interest and costs;
13
14

F.

An assessment of costs, including reasonable attorney fees and expenses, pursuant

15 to 35 U.S.C. § 285, with prejudgment interest;
16

G.

An award of QiLoo’s profits, actual damages, enhanced profits and damages,

17 costs, and reasonable attorney fees under 15 U.S.C. §§ 1114, 1116, and 1117 for QiLoo’s
18
19

trademark infringements and dilution; and
H.

Such other and further relief as this Court deems just and proper.

20
IV. DEMAND FOR JURY TRIAL

21
22

Pursuant to Fed. R. Civ. P. 28, Plaintiffs hereby demand a trial by jury on all issues for

23 which a trial by jury may be had.
24
Dated: February 8, 2012

Respectfully submitted,

25
26
27
28

/s/
Jonathan W. Fountain
Michael J. McCue
[e-mail]
Jonathan W. Fountain (Nevada Bar #10351)
[e-mail]
Lewis and Roca, LLP
26

1
2

3993 Howard Hughes Parkway, Suite 600
Las Vegas, Nevada 89109
Telephone: [phone]
Facsimile: [phone]

3
4
5
6
7
8

Christopher J. Renk
Erik S. Maurer
Michael J. Harris
Azuka C. Dike
Banner & Witcoff, Ltd.
10 South Wacker Drive
Suite 3000
Chicago, Illinois 60606
Telephone: [phone]
Facsimile: [phone]
(Pro Hav Vice to be Submitted)

9
10

Attorneys for Plaintiffs,
NIKE, Inc. and Converse Inc.

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
27

CERTIFICATE OF SERVICE

1
2

I, Erik S. Maurer, hereby certify that on February 8, 2012, I caused a copy of the

3 foregoing document entitled FIRST AMENDED COMPLANT along with Exhibits NN, MM,
4 OO, PP, QQ, RR, SS, TT< UU, VV, WW, XX, YY, ZZ, AAA, BBB, CCC, DDD, EEE, FFF,
5 and GGG, to be served as follows:
6 By Hand Delivery To:

By International Federal Express:

7 QiLoo International Limited
World Shoe Association Tradeshow
8 Booth #12736
Sands Expo & Convention Center
9 201 Sands Avenue
Las Vegas, Nevada 89169
10
11
12
13

QiLoo International Limited
2-2303 (2-2358), No. 2 Bldg.,
Fuxin Garden Castle, Fengze Street,
QuanZhou, 362000, Fujian, China

Dated: this 8th day of February, 2012.
/s/ Erik S. Maurer
Erik S. Maurer

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
28