Emoji Co. - Motion For TRO
Emoji Co. - Motion For TRO
Plaintiff, EMOJI COMPANY GmbH, submits this Memorandum in support of its Ex Parte
Motion for Entry of a Temporary Restraining Order, including a temporary injunction, expedited
discovery, and service of process by email and electronic publication (the “Ex Parte Motion”).
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TABLE OF CONTENTS
Claim 18
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TABLE OF AUTHORITIES
Cases
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Ford Motor Co. v. Lapertosa, 126 F.Supp. 2d 463 (E.D. Mich. , 2001)………………………………. 23
G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc.,
873 F.2d 985, 999 (7th Cir. 1989) .................................................................................................. 15
Gillespie v. Civiletti,
629 F.2d 637, 642 (9th Cir. 1980) .................................................................................................. 25
Michael Kors, L.L.C. v. The Partnerships and Unincorporated Associations Identified on Schedule
“A”,
No. 13-cv-8612 (N.D. Ill. Dec. 5, 2013) (unpublished).............................................................. 3, 22
Promatek Industries, Ltd. Equitrac Corp., 300 F.3d 808, 813(7th Cir. 2002)………………………… 19
v
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Vance v. Rumsfeld,
No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) ........................................... 25
Statutes
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Other Authorities
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MEMORANDUM OF LAW
Plaintiff brings this action against the defendants identified in Amended Schedule A to
the Amended Complaint (collectively, the “Defendants”) for federal trademark infringement and
counterfeiting (Count I), false designation of origin (Count II), and violation of the Illinois
Uniform Deceptive Trade Practices Act (Count III). As alleged in the Amended Complaint,
Defendants are promoting, advertising, marketing, distributing, offering for sale, and selling
counterfeit products in connection with Plaintiff’s federally registered trademarks, Reg. Nos.
4,868,832; 5,202,078 and 5,415,510 (collectively, the “Counterfeit EMOJI Products”), through
various fully interactive commercial Internet websites operating under at least the Defendant
Domain Names and Online Marketplace Accounts listed in Amended Schedule A to the
Amended Complaint (collectively, the “Defendant Internet Stores”). In short, Defendants run a
The Defendants create numerous Defendant Internet Stores with an intent to have them
appear to be selling genuine products, while actually selling unauthorized and unlicensed
Counterfeit EMOJI Products to unknowing consumers. The Defendant Internet Stores share
unique identifiers, such as design elements and similarities of the counterfeit products offered for
sale, establishing a logical relationship between them and suggesting that Defendants’
counterfeiting operation arises out of the same transaction, occurrence, or series of transactions
or occurrences. Defendants attempt to avoid liability by concealing both their identities and the
full scope and interworking of their counterfeiting operation. Plaintiff has filed this action to
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as to protect unknowing consumers from purchasing Counterfeit EMOJI Products over the
Internet.
This Court has personal jurisdiction over Defendants because each Defendant targets
Illinois residents and has offered to sell, and on information and belief, has sold and continues to
sell Counterfeit EMOJI Products to consumers within the United States, including the State of
Illinois. Specifically, Defendants are reaching out to do business with Illinois residents by
operating one or more commercial, interactive Internet Stores through which Illinois residents
can purchase products being sold in connection with Plaintiff’s EMOJI Trademarks. Defendants
directly target unlawful business activities toward consumers in Illinois, cause harm to Plaintiff’s
business within this Judicial District, and have caused and will continue to cause irreparable
injury to Plaintiff. Defendants deceive the public by trading upon Plaintiff’s reputation and
goodwill by using their commercial, interactive Internet Stores to sell and/or offer for sale
requests that this Court issue an ex parte a Temporary Restraining Order. Specifically, Plaintiff
distribution, offering for sale, and sale of Counterfeit EMOJI Products; and (2) temporarily
to and as part of the TRO, Plaintiff respectfully requests that this Court authorize expedited
discovery allowing Plaintiff to inspect and copy Defendants’ records relating to the manufacture,
distribution, offering for sale, and sale of Counterfeit EMOJI Products and Defendants’ financial
accounts; and authorize service by electronic mail and electronic publication at the Defendant
Domain Names.
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In light of the covert nature of offshore counterfeiting activities and the vital need to
establish an economic disincentive for trademark infringement, courts regularly issue such
orders. See, e.g., Michael Kors, L.L.C. v. The Partnerships, et al., No. 13-cv-8612 (N.D. Ill. Dec.
Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv-8186 (N.D. Ill. Nov. 19, 2013)
(unpublished) (same); Manolo Blahnik Int’l Ltd. v. The Partnerships, et al., No. 13-cv-7810
(N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA Properties, Inc., et al. v. The Partnerships,
et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) (unpublished) (same); Beats Electronics, LLC v.
The Partnerships, et al., No. 13-cv-6724 (N.D. Ill. Sept. 25, 2014) (unpublished) (same);
Lululemon Athletica Canada Inc. v. The Partnerships, et al., No. 13-cv-6297 (N.D. Ill. Sept. 10,
2013) (unpublished) (same); Chrome Hearts LLC v. The Partnerships, et al., No. 13-cv-4784
(N.D. Ill. July 10, 2013) (unpublished) (same); Luxottica USA LLC v. The Partnerships, et al.,
No. 13-cv-4429 (N.D. Ill. June 20, 2013) (unpublished) (same); Oakley, Inc. v. Does 1-100, No.
12-cv-9864 (N.D. Ill. Dec. 14, 2012) (unpublished) (same); True Religion Apparel, Inc. v. Does
1-100, No. 12-cv-9894 (N.D. Ill. Dec. 20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong
Feng, et al., No. 1:12-cv09066 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al.
v. Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers
Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)
(same); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla.
June 6, 2012) (unpublished) (same); Tory Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No.
Fils, S.A., 606 F.2d 1 (2d Cir. 1979) (holding that ex parte temporary restraining orders are
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indispensable to the commencement of an action when they are the sole method of preserving a
state of affairs in which the court can provide effective final relief).
Plaintiff’s well-pleaded factual allegations, which must be accepted as true, and evidence
submitted through declarations, establishes that issuing a temporary restraining order against
Defendants is necessary and proper. Plaintiff can demonstrate a strong likelihood of success on
the merits. Plaintiff is the owner of trademark registration Nos. 4,868,832; 5,202,078 and
diminished goodwill and damage to Plaintiff’s reputation. Monetary damages are inadequate to
Plaintiff for these damages. This makes injunctive relief particularly appropriate in this matter.
Issuance of an injunction is also in the public interest because it will prevent confusion
among the public and prevent unknowing consumers from being deceived into purchasing
In addition, under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power
to bind any third parties, such as domain name registries and financial institutions, who are in
active concert with the Defendants or who aid and abet Defendants and are given actual notice of
the order. Similarly, a prejudgment asset freeze is also proper since Plaintiff seeks an equitable
order authorizing service of process by email and electronic publication is proper since as a
result of Defendants’ intentional efforts to conceal their identities and operate their business
online. Serving Defendants electronically is the best method for notifying them of this action and
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Plaintiff is in the business of developing, marketing, selling and distributing the EMOJI
brand of products. See Declaration of José Santiago (the “Santiago Declaration”) at ¶ 4. Plaintiff
has expended substantial time, money and other resources promoting the EMOJI brand products. Id.
at ¶ 8.
Plaintiff is the owner of the EMOJI Trademarks. Id. at ⁋ 5. The U.S. registrations for the
EMOJI Trademarks are valid, subsisting, and in full force and effect. Id. at ¶ 5. True and correct
copies of the federal trademark registration certificates for the EMOJI Trademarks are attached to
The EMOJI Trademarks are distinctive and identify the merchandise as goods from
Plaintiff. Id. at ¶ 6. The registrations for the EMOJI Trademarks constitute prima facie evidence of
their validity and of Plaintiff’s exclusive right to use the EMOJI Trademarks pursuant to 15 U.S.C.
§ 1057(b). The EMOJI Trademarks qualify as famous marks, as that term is used in 15 U.S.C. §
1125(c)(1), and have been continuously used and never abandoned. Id. at ¶ 7. Plaintiff has
expended substantial time, money, and other resources in developing, advertising, and otherwise
promoting the EMOJI Trademarks. Id. at ¶ 8. As a result, products bearing the EMOJI Trademarks
are widely recognized and exclusively associated by consumers, the public, and the trade as being
The success of the EMOJI brand has resulted in those products being counterfeited. Id. at
¶ 9. Plaintiff has identified numerous domain names linked to fully interactive websites and
marketplace listings on platforms such as iOffer, Etsy, Redbubble, Teepublic and Printerval,
including the Defendants’ Internet Stores, which were offering for sale, selling, and importing
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Counterfeit EMOJI Products to consumers in this Judicial District and throughout the United
States. See Declaration of Anna K. Reiter (the “Reiter Declaration”) at ¶ 3. Internet websites like
the Defendants Internet Stores are estimated to receive tens of millions of visits per year and to
generate over $135 billion in annual online sales. Declaration of Michael A. Hierl (the “Hierl”
by Homeland Security, the manufacturer’s suggested retail price (MSRP) of goods seized by the
U.S. government during 2017 exceeded $1.2 billion. Id. at ¶ 3. Internet websites like the
Defendants’ Internet Stores are also estimated to contribute to tens of thousands of lost jobs for
legitimate businesses and broader economic damages such as lost tax revenue every year. Id. at ¶
4.
Upon information and belief, Defendants facilitate sales by designing the Defendants’
Internet Stores so that they appear to unknowing consumers to be authorized online retailers,
outlet stores, or wholesalers selling genuine EMOJI Products. Reiter Declaration at ¶ 5. Many of
the Defendants’ Internet Stores look sophisticated and accept payment in U.S. dollars via credit
cards and Etsy, Redbubble, Teepublic and Printerval. Id. Defendants’ Internet Stores often
include images and design elements that make it very difficult for consumers to distinguish such
counterfeit sites from an authorized website. Id. Defendants further perpetuate the illusion of
legitimacy by offering “live 24/7” customer service and using indicia of authenticity and security
that consumers have come to associate with authorized retailers, including the McAfee®
Security, VeriSign®, Visa®, MasterCard®, and Etsy, Redbubble, Teepublic and Printerval
logos. Id. Plaintiff has not licensed or authorized Defendants to use its EMOJI Trademarks, and
none of the Defendants are authorized retailers of genuine EMOJI Products. Id.
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Upon information and belief, Defendants also deceive unknowing consumers by using
the EMOJI Trademarks without authorization within the content, text, and/or meta tags of their
websites in order to attract various search engines crawling the Internet looking for websites
relevant to consumer searches for EMOJI Products. Id. at ¶ 6. Additionally, upon information
and belief, Defendants use other unauthorized search engine optimization (SEO) tactics and
social media spamming so that the Defendants’ Internet Stores listings show up at or near the top
of relevant search results and misdirect consumers searching for genuine EMOJI Products. Id.
Further, Defendants utilize similar illegitimate SEO tactics to propel new domain names to the
top of search results after others are shut down. Id. As such, Plaintiff also seeks to disable
Defendants’ Domain Names owned by Defendants that are the means by which the Defendants
iii. Defendants Use Fictitious Aliases and Common Tactics to Evade Shut Down
Defendants go to great lengths to conceal their identities and often use multiple fictitious
names and addresses to register and operate their network of Defendants Internet Stores. Id. at ¶
7. For example, many of Defendants’ names and physical addresses used to register the
Defendants’ Domain Names are incomplete, contain randomly typed letters, or fail to include
cities or states. Other Defendants’ Domain Names use privacy services that conceal the owners’
identity and contact information. Id. Upon information and belief, Defendants regularly create
new websites and online marketplace accounts on various platforms using the identities listed in
Amended Schedule A to the Amended Complaint, as well as other unknown fictitious names and
addresses. Id. Such Defendants’ Internet Store registration patterns are one of many common
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tactics used by the Defendants to conceal their identities, the full scope and interworking of their
Even though Defendants operate under multiple fictitious names, there are numerous
similarities among the Defendants’ Internet Stores. Id. at ¶ 8. For example, many of the
Defendants’ websites have virtually identical layouts, even though different aliases were used to
register the respective domain names. In addition, Counterfeit EMOJI Products for sale in the
Defendants’ Internet Stores bear similar indicia of being counterfeit to one another, suggesting
that the Counterfeit EMOJI Products were manufactured by and come from a common source
and that, upon information and belief, Defendants are interrelated. Id. The Defendants’ Internet
Stores also include other notable common features, including use of the same domain name
registration patterns, unique shopping cart platforms, accepted payment methods, check-out
methods, meta data, illegitimate SEO tactics, HTML user-defined variables, domain redirection,
lack of contact information, identically or similarly priced items and volume sales discounts, the
same incorrect grammar and misspellings, similar hosting services, similar name servers, and the
In addition to operating under multiple fictitious names, Defendants in this case and
defendants in other similar cases against online counterfeiters use a variety of other common
tactics to evade enforcement efforts. Id. at ¶ 9. For example, counterfeiters like Defendants will
often register new domain names or online marketplace accounts under new aliases once they
receive notice of a lawsuit. Id. Counterfeiters also often move website hosting to rogue servers
located outside the United States once notice of a lawsuit is received. Rogue servers are
notorious for ignoring take down demands sent by brand owners. Id. Counterfeiters also
typically ship products in small quantities via international mail to minimize detection by U.S.
Customs and Border Protection. Id. A 2017 Homeland Security report on seizure statistics
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indicated that the Internet has fueled a “sharp increase” in the number of small packages of
counterfeit goods shipped through the mail and express carriers. Hierl Declaration at ¶ 3.
merchant accounts and Etsy, Redbubble, Teepublic and Printerval accounts behind layers of
payment gateways so that they can continue operation. Reiter Declaration at ¶ 10. Upon
information and belief, Defendants maintain off-shore bank accounts and regularly move funds
from their accounts to off-shore bank accounts outside the jurisdiction of this Court. Id. See also,
Hierl Declaration at ¶ 7. Indeed, analysis of transaction logs from similar cases brought by other
trademark owners indicates that off-shore counterfeiters regularly move funds from their U.S.
accounts to bank accounts outside the jurisdiction of this Court. Hierl Declaration at ¶ 9.
Defendants’ Internet Stores and the Counterfeit EMOJI Products for sale thereon, and common
tactics employed to evade enforcement establish a logical relationship among the Defendants
suggesting that Defendants are an interrelated group of counterfeiters. Upon information and
belief, Defendants are working in active concert to knowingly and willfully manufacture, import,
distribute, offer for sale, and sell products in connection with counterfeit versions of the EMOJI
indicated above, the tactics used by Defendants to conceal their identities and the full scope of
their counterfeiting operation make it virtually impossible for Plaintiff to discover the true
identities of the Defendants, the exact interworking of the Defendants’ counterfeit network, and
the relationship among Defendants. In the event that Defendants provide additional credible
information regarding their identities, Plaintiff will take appropriate steps to further amend the
Complaint.
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III. ARGUMENT
Defendants’ purposeful, intentional, and unlawful conduct is causing and will continue to
cause irreparable harm to Plaintiff’s reputation and the goodwill symbolized by the EMOJI
requests that this Court issue a temporary restraining order ordering, among other things, the
freezing of Defendants’ assets. Without the relief requested by Plaintiff’s instant Motion,
Defendants’ unlawful activity will continue unabated, and Plaintiff and consumers will suffer
irreparable harm.
Rule 65(b) of the Federal Rules of Civil Procedure provides that the Court may issue an
ex parte temporary restraining order where immediate and irreparable injury, loss, or damage
will result to the applicant before the adverse party or that party's attorney can be heard in
opposition. Fed. R. Civ. P. 65(b). The Defendants here fraudulently promote, advertise, offer to
sell, and sell goods in connection with counterfeits of the EMOJI Trademarks via the Defendants
Internet Stores. Defendants are creating a false association in the minds of consumers between
the Defendants and Plaintiff by deceiving consumers into believing that the Counterfeit EMOJI
Products for sale on Defendants’ websites are sponsored or endorsed by Plaintiff. The entry of a
temporary restraining order is appropriate because it would immediately stop the Defendants
from benefiting from their wrongful use of the EMOJI Trademarks and preserve the status quo
In the absence of a temporary restraining order without notice, the Defendants can and
likely will modify registration data and content, change hosts, redirect traffic to other websites in
their control, and move any assets from U.S.-based bank accounts, including Etsy, Redbubble,
Teepublic and Printerval accounts. Courts have recognized that civil actions against
counterfeiters present special challenges that justify proceeding on an ex parte basis. See
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Columbia Pictures Indus., Inc. v. Jasso, 927 F. Supp. 1075, 1077 (N.D. Ill. 1996) (observing that
“proceedings against those who deliberately traffic in infringing merchandise are often useless if
notice is given to the infringers”). As such, Plaintiff respectfully requests that this Court issue the
requested ex parte temporary restraining order. This Court has original subject matter jurisdiction
over the claims in this action pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051 et
seq., 28 U.S.C. §§ 1338(a)-(b), and 28 U.S.C. § 1331. This Court has jurisdiction over the
claims in this action that arise under the laws of the State of Illinois pursuant to 28 U.S.C. §
1367(a), because the state law claims are so related to the federal claims that they form part of
the same case or controversy and derive from a common nucleus of operative facts. Venue is
This Court may properly exercise personal jurisdiction over Defendants since Defendants
directly target business activities toward consumers in the United States, including Illinois, by
directly offering for sale products into this Judicial District as well as through at least the fully
interactive, commercial Defendant Internet Stores. Specifically, Defendants are reaching out to
do business with Illinois residents by operating one or more commercial, interactive Defendants’
Internet Stores through which Illinois residents can purchase products bearing counterfeit
versions of the EMOJI Trademarks. Each Defendant has targeted sales from Illinois residents by
operating online stores that offer shipping to the United States, including Illinois, and has offered
to sell, and on information and belief, has sold and continues to sell Counterfeit EMOJI Products
to consumers within the United States, including the State of Illinois. See Complaint at ¶¶ 2, 20
and 21. Without the benefit of an evidentiary hearing, plaintiff bears only the burden of making a
prima facie case for personal jurisdiction; all of Plaintiff’s asserted facts should be accepted as
true and any factual determinations should be resolved in its favor. See uBID, Inc. v. GoDaddy
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Group, Inc. 623 F.3d 421, 423 (7th Cir. 2010); see also, Purdue Research Found. v. Sanofi-
Sythelabo, S.A., 338 F.3d 773, 782 (7th Cir. 2003) (“When determining whether a plaintiff has
met his burden, jurisdictional allegations pleaded in the complaint are accepted as true unless
Illinois courts regularly exercise personal jurisdiction over websites using registered
trademarks without authorization in connection with the offering for sale and selling of
infringing and counterfeit merchandise to Illinois residents over the Internet. 735 ILCS 5/2-
209(a)(2). See, e.g., Christian Dior Couture, S.A. v. Liu, 2015 U.S. Dist. LEXIS 158225 (N.D.
Ill. Nov. 17, 2015); Monster Energy Co. v. Chen Wensheng, 2015 U.S. Dist. LEXIS 132283
(N.D. Ill. Sept. 29, 2015); Chrome Hearts LLC v. P'ships & Unincorporated Assns. Identified on
Schedule "A", 2015 U.S. Dist. LEXIS 120232 (N.D. Ill. Sept. 9, 2015).
Through at least the fully interactive commercial Internet websites operating under the
Defendant Domain Names and the marketplace listings operated using the Online Marketplace
Accounts, each of the Defendants have targeted sales from Illinois residents by offering shipping
to the United States, including Illinois, and, on information and belief, has sold or offered to sell
Counterfeit EMOJI Products to residents of the United States, including Illinois. Each of the
Defendants is committing tortious acts in Illinois, engaging in interstate commerce, and has
District Courts within this Circuit hold that the standard for granting a temporary
restraining order and the standard for granting a preliminary injunction are identical. See, e.g.
Charter Nat’l Bank & Trust v. Charter One Fin., Inc., No. 1:01-cv-00905, 2001 WL 527404, *1
(N.D. Ill. May 15, 2001) (citation omitted). A party seeking to obtain a preliminary injunction
must demonstrate: (1) that its case has some likelihood of success on the merits; (2) that no
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adequate remedy at law exists; and (3) that it will suffer irreparable harm if the injunction is not
granted. See Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891, 895 (7th Cir. 2001).
If the Court is satisfied that these three conditions have been met, then it must consider
the harm that the nonmoving party will suffer if preliminary relief is granted, balancing such
harm against the irreparable harm the moving party will suffer if relief is denied. Id. Finally, the
Court must consider the potential effect on the public interest (non-parties) in denying or
granting the injunction. Id. The Court then weighs all of these factors, “sitting as would a
chancellor in equity,” when it decides whether to grant the injunction. Id. (quoting Abbott Labs.
v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992)). This process involves engaging in what
the Court has deemed “the sliding scale approach” – the more likely the plaintiff will succeed on
the merits, the less the balance of harms need favor the plaintiff's position. Id. The sliding scale
approach is not mathematical in nature, rather “it is more properly characterized as subjective
and intuitive, one which permits district courts to weigh the competing considerations and mold
appropriate relief.” Id. at 895-896. The greater the movant's likelihood of succeeding on the
merits, the less the balancing of harms need be in his favor. See Eli Lilly & Co. v. Natural
A defendant is liable for trademark infringement and counterfeiting under the Lanham
Act if it, “without the consent of the registrant, uses in commerce any reproduction, copy, or
colorable imitation of a registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods … which such use[s] is likely to cause confusion, or to
cause mistake, or to deceive.” 15 U.S.C. § 1114(1). To prove a prima facie case of infringement,
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a plaintiff must show (1) its mark is distinctive enough to be worthy of protection; (2)
Defendants are not authorized to use the trademark; and (3) Defendants’ use of the trademark
Neopost Industrie B.V. v. PFE Int’l Inc., 403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) (citation
omitted). Plaintiff satisfies all three requirements of the Lanham Act to successfully bring a
Regarding the first two elements, Plaintiff’s EMOJI Trademarks are inherently distinctive
and are registered with the United States Patent and Trademark Office on the Principal Register.
The EMOJI Trademarks has been continuously used. Santiago Declaration at ¶¶ 6-7. The
registrations for the EMOJI Trademarks are valid, subsisting, and in full force and effect. Id. at ⁋
5. The registrations for the EMOJI Trademarks constitute prima facie evidence of their validity
and of Plaintiff’s exclusive right to use the EMOJI Trademarks pursuant to 15 U.S.C. § 1057(b).
Furthermore, Plaintiff has not licensed or authorized Defendants to use either of the EMOJI
Trademarks, and none of the Defendants is an authorized retailer of genuine EMOJI Products.
Reiter Declaration at ¶ 5.
Plaintiff satisfies the third factor, as well. Some courts do not undertake a factor-by-factor
analysis under Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)
because counterfeits, by their very nature, cause confusion. See Topps Co., Inc. v. Gerrit J.
Verburg Co., 41 U.S.P.Q.2d 1412, 1417 (S.D.N.Y.1996) ("Where the marks are identical, and
the goods are also identical and directly competitive, the decision can be made directly without a
more formal and complete discussion of all of the Polaroid factors."); Polo Fashions, Inc. v.
Craftex, Inc., 816 F.2d 145, 148 (4th Cir.1987) ("Where, as here, one produces counterfeit goods
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in an apparent attempt to capitalize upon the popularity of, and demand for, another's product,
The Seventh Circuit, however, has enumerated seven factors to determine whether there
is a likelihood of confusion: (1) similarity between the marks in appearance and suggestion; (2)
similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be
exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and (7) intent
of the defendants to palm off their products as that of another. Eli Lilly, 233 F.3d at 461-462
(citation omitted). These factors are not a mechanical checklist, and “[t]he proper weight given to
each of [the] factors will vary from case to case.” Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d
376, 381 (7th Cir. 1996). At the same time, although no one factor is decisive, the similarity of
the marks, the intent of the defendant, and evidence of actual confusion are the most important
considerations. G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 999 (7th
Cir. 1989).
In this case, Plaintiff plainly satisfies the likelihood of confusion test. The Defendants are
selling Counterfeit EMOJI Products using counterfeit marks identical to the EMOJI Trademarks.
As such, the first and second likelihood of confusion factors weigh heavily in favor of Plaintiff.
Plaintiff also satisfies the third factor, namely, the area and manner of concurrent use.
When considering the third factor, a court looks at “whether there is a relationship in use,
promotion, distribution or sales between the goods or services of the parties.” CAE, Inc. v. Clean
Air Eng’g Inc., 267 F.3d 660, 681 (7th Cir. 2001). A court also looks to whether the parties used
the same channels of commerce, targeted the same general audience, and/or used similar
marketing procedures. Id. Here, both Plaintiff and Defendants show the same products using the
EMOJI Trademarks to the same consumers. See Exhibit 1 to the Santiago Declaration. Thus,
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because Defendants target the same consumers as Plaintiff, this factor also weighs in favor of
Plaintiff.
Regarding the fourth factor, degree of consumer care, potential consumers purchasing
EMOJI Products are not restricted to a certain specialized, sophisticated group of people. Rather,
the consumer base is a diverse group of people. “[W]hen a buyer class is mixed, the standard of
care to be exercised by the reasonably prudent purchaser will be equal to that of the least
sophisticated consumer in the class.” Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d
1029, 1043 (N.D. Ill. 2001) (citation omitted). As such, EMOJI brand consumers are very likely
Due to their long-standing use and wide acceptance by the public, the EMOJI
Trademarks have become famous and associated with high quality EMOJI Products. The EMOJI
Trademarks are distinctive when applied to the EMOJI Products. The marks signify to
consumers that the products come from Plaintiff and are manufactured to the highest quality
standards. Thus, the fifth factor, the strength of the marks, also weighs heavily in favor of
Plaintiff.
As for the sixth factor, Plaintiff does not need to prove likelihood of confusion with
evidence of actual confusion; instead, it merely needs to show some evidence of potential
confusion. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1363 (7th Cir.1995); see also
Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 960 (7th Cir. 1992) (the Seventh
Circuit has consistently found that “plaintiff need not show actual confusion in order to establish
likelihood of confusion.”). In this case, actual confusion can be inferred because Defendants are
selling counterfeit EMOJI Products in connection with the EMOJI Trademarks. Because the
goods are similar and have identical and similar uses, consumers will be confused and think that
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Defendants’ products are genuine EMOJI Products or are sponsored or endorsed by Plaintiff.
Regarding the seventh and final factor, Defendants are intentionally using the EMOJI
Trademarks to confuse and deceive the consuming public into thinking that Defendants’
Counterfeit EMOJI Products are manufactured by or emanate from Plaintiff. Defendants are
purposefully attempting to benefit and trade off Plaintiff’s goodwill and reputation. Therefore,
the final factor regarding Defendants’ intent also weighs heavily in Plaintiff’s favor.
In sum, each of the seven likelihood of confusion factors weighs heavily in favor of
Plaintiff, and, therefore, Plaintiff has proved that it has a reasonable likelihood of success on the
Plaintiff is bringing a false designation of origin claim under 15 U.S.C. § 1125(a) must
show that: (1) the plaintiff has a protectable trademark; and (2) a likelihood of confusion will
exist as to the origin of plaintiff’s products. All Star Championship Racing, Inc. v. O’Reilly Auto.
Stores, Inc., 2013 WL 1701871, *10 (C.D. Ill. Apr. 18, 2013) (citing Johnny Blastoff, Inc. v. Los
Angeles Rams Football Co., 188 F. 3d 427, 436 (7th Cir. 1999)). This is the same test that is used
for determining whether trademark infringement has occurred under the Lanham Act. See
Neopost, 403 F. Supp. 2d at 684. Because the EMOJI Trademarks are registered marks, and
Plaintiff has established a likelihood of success on the merits of its trademark infringement and
counterfeiting claim against Defendants (supra), a likelihood of success on the merits for
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In Illinois, courts resolve unfair competition and deceptive trade practice claims
“according to the principles set forth under the Lanham Act.” Spex, Inc. v. Joy of Spex, Inc., 847
F. Supp. 567, 579 (N.D. Ill. 1994). Illinois courts look to federal case law and apply the same
analysis to state infringement claims. Id. at 579 (citation omitted). The determination as to
whether there is a likelihood of confusion is similar under both the Lanham Act and the Illinois
Uniform Deceptive Trade Practices Act. Am. Broad. Co. v. Maljack Prods., Inc., 34 F. Supp. 2d
665, 681 (N.D. Ill. 1998). Because Plaintiff has established a likelihood of success on the merits
of its trademark infringement and counterfeiting claims against Defendants (supra), and the
standard is the same under Illinois law, Plaintiff has established a likelihood of success on the
merits for its Illinois Uniform Deceptive Trade Practices Act claim.
The Seventh Circuit has “clearly and repeatedly held that damage to a trademark holder's
goodwill can constitute irreparable injury for which the trademark owner has no adequate legal
remedy.” Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001) (citing Eli Lilly & Co.
v. Natural Answers, Inc., 233 F.3d 456, 469 (7th Cir. 2000)); Meridian Mut. Ins. Co. v. Meridian
Ins. Group, Inc., 128 F.3d 1111, 1114 (7th Cir. 1997); Wesley–Jessen Division of Schering Corp.
v. Bausch & Lomb Inc., 698 F.2d 862, 867 (7th Cir.1983). Irreparable injury “almost inevitably
follows” when there is a high probability of confusion because such injury “may not be fully
compensable in damages.” Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc., 560 F.2d
1325, 1332 (7th Cir. 1977) (citation omitted). “The most corrosive and irreparable harm
attributable to trademark infringement is the inability of the victim to control the nature and
quality of the defendants’ goods.” Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846
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F.2d 1079, 1092 (7th Cir. 1988); see also 4 Callmann on Unfair Competition, Trademark and
Monopolies § 88.3(b) at 205 (3d ed. 1970). As such, monetary damages are likely to be
inadequate compensation for such harm. Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d
Defendants’ unauthorized use of the EMOJI Trademarks has and continues to irreparably
harm Plaintiff through diminished goodwill and brand confidence, damage to Plaintiff’s
reputation, loss of exclusivity, and loss of future sales. Santiago Declaration at ¶¶ 11-13.
The extent of the harm to Plaintiff’s reputation and goodwill and the possible diversion of
customers due to loss in brand confidence are both irreparable and incalculable, thus warranting
an immediate halt to Defendants’ infringing activities through injunctive relief. See Promatek
Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002) (Finding that damage to
plaintiff’s goodwill was irreparable harm for which plaintiff had no adequate remedy at law);
Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis, 35 F.3d 1134, 1140 (7th
Cir. 1994) (“[S]howing injury to goodwill can constitute irreparable harm that is not
compensable by an award of money damages.”). Plaintiff will suffer immediate and irreparable
injury, loss, or damage if an ex parte Temporary Restraining Order is not issued in accordance
with Federal Rule of Civil Procedure 65(b)(1). Santiago Declaration at ¶¶ 13-14. As such,
As noted above, if the Court is satisfied that Plaintiff has demonstrated (1) a likelihood of
success on the merits, (2) no adequate remedy at law, and (3) the threat of irreparable harm if
preliminary relief is not granted, then it must next consider the harm that Defendants will suffer
if preliminary relief is granted, balancing such harm against the irreparable harm Plaintiff will
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considering the balance of hardships between the parties in infringement cases, courts generally
favor the trademark owner.” Krause Int’l Inc. v. Reed Elsevier, Inc., 866 F. Supp. 585, 587-88
(D.D.C. 1994). This is because “[o]ne who adopts the marks of another for similar goods acts at
his own peril since he has no claim to the profits or advantages thereby derived.” Burger King
Corp. v. Majeed, 805 F. Supp. 994, 1006 (S.D. Fla. 1992) (internal quotation marks omitted).
Therefore, the balance of harms “cannot favor a defendant whose injury results from the
As Plaintiff has demonstrated, Defendants have been profiting from the sale of
Counterfeit EMOJI Products. Thus, the balance of equities tips decisively in Plaintiff’s favor. As
such, equity requires that Defendants be ordered to cease their unlawful conduct.
consumer confusion and stop Defendants from violating federal trademark law. The public is
currently under the false impression that Defendants are operating their Defendants’ Internet
Stores with Plaintiff’s approval and endorsement. An injunction serves the public interest in this
case “because enforcement of the trademark laws prevents consumer confusion.” Eli Lilly, 233
F.3d at 469.
Federal courts have long held that “the trademark laws ... are concerned not alone with
the protection of a property right existing in an individual, but also with the protection of the
public from fraud and deceit.” Stahly, Inc. v. M.H. Jacobs Co., 183 F.2d 914, 917 (7th Cir. 1950)
(citations omitted). The public interest is further served by protecting “the synonymous right of a
trademark owner to control his product's reputation.” James Burrough Ltd. v. Sign of the
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Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976); see also Shashi, Inc. v. Ramada Worldwide,
Inc., No. 7:05-cv-00016-JGW-mfu, 2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005) (“It is in the
best interest of the public for the court to defend the integrity of the intellectual property system
In this case, the injury to the public is significant, and the injunctive relief that Plaintiff
seeks is specifically intended to remedy that injury by dispelling the public confusion created by
Defendants’ actions. The public has the right not to be confused and defrauded as to the source
of the goods and services offered by Defendants, or as to the identity of the owner of trademarks
used in connection with those goods and services. Unless Defendants’ unauthorized use of the
EMOJI Trademarks are enjoined, the public will continue to be confused and misled by
Defendants’ conduct.
For these reasons, it is respectfully submitted that granting Plaintiff’s Motion for Entry of
In addition to this Court’s inherent authority to issue injunctive relief, the Lanham Act
authorizes courts to issue injunctive relief “according to the principles of equity and upon such
terms as the court may deem reasonable, to prevent the violation of any right of the registrant of
a mark ….” 15 U.S.C. § 1116(a). Furthermore, Rule 65(b) of the Federal Rules of Civil
Procedure provides that a court may issue a temporary restraining order without notice where
facts show that the movant will suffer immediate and irreparable injury, loss, or damage before
the adverse party can be heard in opposition. Moreover, under Federal Rule of Civil Procedure
65(d)(2)(C), this Court has the power to bind any third parties, such as financial institutions,
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which are in active concert with the Defendants or which aid and abet Defendants and are given
actual notice of the order. Fed. R. Civ. P. 65. The facts in this case warrant such relief.
all use of the EMOJI Trademarks or substantially similar marks on or in connection with all
Defendants’ Internet Stores. Such relief is necessary to stop the ongoing harm to the EMOJI
Trademarks and associated goodwill, as well as harm to consumers, and to prevent the
Defendants from continuing to benefit from their unauthorized use of the EMOJI Trademarks.
The need for ex parte relief is magnified in today’s global economy where counterfeiters
can operate over the Internet in an anonymous fashion. Plaintiff is currently unaware of both the
true identities and locations of the Defendants, as well as other Defendant Internet Stores used to
Many courts have authorized immediate injunctive relief in similar cases involving the
unauthorized use of trademark and counterfeiting. See, e.g. Michael Kors, L.L.C. v. The
(N.D. Ill. Dec. 5, 2013) (unpublished) (Order granting Ex Parte Motion for Temporary
Restraining Order); Calvin Klein Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv-
8186 (N.D. Ill. Nov. 19, 2013) (unpublished) (same); Manolo Blahnik International Limited v.
The Partnerships, et al., No. 13-cv-7810 (N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA
Properties, Inc., et al. v. The Partnerships, et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013)
(unpublished) (same); Beats Electronics, LLC v. The Partnerships, et al., No. 13-cv-6724 (N.D.
Ill. Sept. 25, 2014) (unpublished) (same); Lululemon Athletica Canada Inc. v. The Partnerships,
et al., No. 13-cv-6297 (N.D. Ill. Sept. 10, 2013) (unpublished) (same); Chrome Hearts LLC v.
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The Partnerships, et al., No. 13-cv-4784 (N.D. Ill. July 10, 2013) (unpublished) (same);
Luxottica USA LLC v. The Partnerships, et al., No. 13-cv-4429 (N.D. Ill. June 20, 2013)
(unpublished) (same); Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012)
(unpublished) (same); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D. Ill. Dec.
20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong Feng, et al., No. 1:12-cv-09066 (N.D.
Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al. v. Does 1-100, No. 1:12-cv-8963
(N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers Outdoor Corp. v. Does 1-1,281, No.
1:12-cv-01973 (N.D. Ill. June 6, 2012) (unpublished) (same); Abercrombie & Fitch Trading Co.
v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla. June 6, 2012) (unpublished) (same); Tory
Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No. 1:10-cv-09336-DAB (S.D.N.Y. Jan. 4,
Cases”); see also, Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 (E.D. Mich. 2001)
(enjoining Defendant from “using in any way the Internet domain name ‘fordrecalls.com’”);
Kraft Food Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 956 (N.D. Ill. 2002) (granting
plaintiff’s mark, including removing all references “from metatags, metanames or any other
equitable accounting of Defendants’ profits from sales of Counterfeit EMOJI Products is not
impaired. Issuing an ex parte restraint will ensure Defendants’ compliance. If such a restraint is
not granted in this case, Defendants may disregard their responsibilities and fraudulently transfer
financial assets to overseas accounts before a restraint is ordered. Specifically, upon information
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and belief, the Defendants in this case hold most of their assets overseas, making it easy to hide
Courts have the inherent authority to issue a prejudgment asset restraint when plaintiff’s
complaint seeks relief in equity. Animale Grp. Inc. v. Sunny’s Perfume Inc., 256 F. App’x 707,
709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 987 (11th Cir.
1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992). In
addition, Plaintiff has shown a strong likelihood of succeeding on the merits of its trademark
infringement and counterfeiting claims, so according to the Lanham Act 15 U.S.C. § 1117(a)(1),
Plaintiff is entitled, “subject to the principles of equity, to recover ... defendant’s profits.”
Plaintiff’s Complaint seeks, among other relief, that Defendants account for and pay to Plaintiff
all profits realized by Defendants by reason of Defendants’ unlawful acts. Therefore, this Court
has the inherent equitable authority to grant Plaintiff’s request for a prejudgment asset freeze to
Candies entered an asset restraining order in a trademark infringement case brought by a tobacco
company against owners of a store selling counterfeit cigarettes. Lorillard, 2005 WL 3115892, at
*13 (N.D. Ill. Nov. 8, 2005). The Court, citing Grupo Mexicano de Desarollo, S.A. v. Aliance
Bond Fund, 527 U.S. 308 (1999), recognized that it was explicitly allowed to issue a restraint on
assets for lawsuits seeking equitable relief. Id. (citing Grupo Mexicano, 527 U.S. at 325 (citing
Deckert v. Independence Shares Corp., 311 U.S. 282 (1940)). Because the tobacco company
sought a disgorgement of the storeowner’s profits, an equitable remedy, the Court found that it
had the authority to freeze the storeowner’s assets. Id.; see also Animale Grp. Inc. v. Sunny’s
Perfume Inc., 256 F. App’x 707, 709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading
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Inc., 51 F.3d 982, 987 (11th Cir. 1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d
552, 559 (9th Cir. 1992); CSC Holdings, Inc. v. Redisi, 309 F.3d 988 (7th Cir. 2002) (“since the
assets in question ... were the profits of the [defendants] made by unlawfully stealing [the
plaintiff’s] services, the freeze was appropriate and may remain in place pending final
disposition of this case.”); accord 5 J. Thomas McCarthy, McCarthy on Trademark and Unfair
Competition § 30:40 (4th ed. 2013). In addition, courts in this district and across the country
regularly issue asset-restraining orders for entire financial accounts in cases involving the sale of
counterfeit products. See, e.g., the Counterfeit Website Cases, supra at p. 28.
Plaintiff has shown a likelihood of success on the merits, an immediate and irreparable
harm suffered as a result of Defendants’ activities, and that, unless Defendants’ assets are frozen,
Defendants will likely hide or move their ill-gotten funds to offshore bank accounts.
proper.
The Supreme Court has held that “federal courts have the power to order, at their
discretion, the discovery of facts necessary to ascertain their competency to entertain the merits.”
Vance v. Rumsfeld, No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) (quoting
Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351, 98 S. Ct. 2380 (1978)). A district court
has wide latitude in determining whether to grant a party's request for discovery. Id. (citation
omitted). Furthermore, courts have broad power over discovery and may permit discovery in
order to aid in the identification of unknown defendants. See Fed. R. Civ. P. 26(b)(2); Gillespie
As described above, Defendants are using third-party payment processors such as Visa
and Etsy, Redbubble, Teepublic and Printerval, which helps to increase their anonymity by
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interposing a third party between the consumer and Defendants. Without being able to discover
Defendants’ bank and payment system accounts, any asset restraint would be of limited value
because Plaintiff would not know the entities upon whom to serve the order.
Plaintiff respectfully requests expedited discovery to discover bank and payment system
accounts Defendants use for their counterfeit sales operations. The discovery requested on an
expedited basis in Plaintiff’s Proposed Temporary Restraining Order has been limited to include
only what is essential to prevent further irreparable harm. Discovery of these financial accounts
so that they can be frozen is necessary to ensure that these activities will be contained.
Under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power to bind any
third party who is in active concert with the Defendants that is given notice of the order to
provide expedited discovery in this action. Fed. R. Civ. P. 65(d)(2)(C). Plaintiff’s counsel is
aware that the same third parties, in previous lawsuits, have worked with trademark owners and
is not aware of any reason that Defendants or third parties cannot comply with these expedited
discovery requests without undue burden. Further, all relevant third parties have in fact complied
with identical requests in previous similar cases. More importantly, as Defendants have engaged
in many deceptive practices in hiding their identities and accounts, Plaintiff’s seizure and asset
restraint in the Temporary Restraining Order may have little meaningful effect without the
requested relief. Accordingly, Plaintiff respectfully requests that expedited discovery be granted.
injunction is vested in the Court’s sound discretion. Rathmann Grp. v. Tanenbaum, 889 F.2d
787, 789 (8th Cir. 1989); Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411, 421 (4th
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Cir. 1999); Fed. R. Civ. P. 65(c). Because of the strong and unequivocal nature of Plaintiff’s
that this Court require Plaintiff to post a bond of no more than Ten Thousand U.S. Dollars
($10,000.00). See, e.g., Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012)
(unpublished) ($10,000 bond); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D.
Ill. Dec. 20, 2012) (unpublished) ($10,000 bond); Tory Burch LLC v. Zhong Feng, et al., No.
1:12-cv-09066 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Coach, Inc., et al. v.
Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Deckers
Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)
($10,000 bond); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S.
VI. CONCLUSION
Plaintiff’s business, its EMOJI brand, and consumers are being irreparably harmed.
Without entry of the requested relief, the sale of Counterfeit EMOJI Products will continue to
lead prospective purchasers and others to believe that Defendants’ products have been
protect Plaintiff’s trademark rights, to prevent further harm to Plaintiff and the consuming
public, and to preserve the status quo. In view of the foregoing and consistent with previous
similar cases, Plaintiff respectfully requests that this Court enter a Temporary Restraining Order
in the form submitted herewith and set a status hearing before the expiration of the Temporary
Restraining Order at which hearing Plaintiff intends to present a motion for preliminary
injunction.
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Respectfully submitted,
Dated: October 6, 2023
By: s/Michael A. Hierl _
Michael A. Hierl (Bar No. 3128021)
William B. Kalbac (Bar No. 6301771)
Robert P. McMurray (Bar No. 6324332)
Hughes Socol Piers Resnick & Dym, Ltd.
Three First National Plaza
70 W. Madison Street, Suite 4000
Chicago, Illinois 60602
(312) 580-0100 Telephone
[email protected]
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CERTIFICATE OF SERVICE
The undersigned attorney hereby certifies that a true and correct copy of the foregoing
Memorandum was filed electronically with the Clerk of the Court and served on all counsel of
record and interested parties via the CM/ECF system on October 6, 2023.
s/Michael A. Hierl
29