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Case: 1:21-cv-01663 Document #: 1 Filed: 03/26/21 Page 1 of 10 PageID #:1

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION

CONAIR CORPORATION,
CASE No. 21-cv-1663
Plaintiff,
v.
Unknown Person(s) or Entity(ies) d/b/a JURY TRIAL DEMANDED
Barberium’s,
Defendant.

COMPLAINT FOR DESIGN PATENT INFRINGEMENT


AND TRADE DRESS INFRINGEMENT
Plaintiff Conair Corporation (“Conair”) complains of the unknown defendant doing business
as Barberium’s (“Barberium’s”) as follows:
JURISDICTION AND VENUE
1. Jurisdiction exists under 28 U.S.C. §§ 1331 and 1338(a) because this is an action for
infringement of Conair’s patent rights and for violation of Section 43(a) of the Lanham Trademark
Act, 15 U.S.C. § 1125(a).
2. Defendant is subject to personal jurisdiction in Illinois and in this judicial district and
division because it has transacted business here by selling, offering to sell or distributing hair-care
products (including the GoldLUX Pro personal trimmer) that violates Conair’s intellectual property
rights. Defendant is also reaching out to do business with Illinois residents by operating one or more
commercial, interactive Internet Stores through which Illinois residents can purchase infringing
products. Defendant has targeted sales from Illinois residents by operating an online store that offers
shipping to Illinois, and upon information and belief, has sold infringing products to residents of
Illinois. The Defendant is also committing tortious acts in Illinois. Upon information and belief,
Barberium’s and/or its owners reside in this District.
3. Venue is proper under the general federal venue statute, 28 U.S.C. § 1391(d), and
under the specific venue provision relating to patent-infringement cases, 28 U.S.C. § 1400(b).
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PARTIES
4. Conair is a Delaware corporation headquartered in and has sales and marketing
offices in Stamford, Connecticut. Conair owns and has standing to sue for infringement of United
States Patent No.: D905,345, entitled “Hair Shaver with Adjustment Tool” (Exhibit A).
5. On information and belief, Barberium’s is an Illinois person or entity doing business
under the Barberium’s name, somewhere in the greater-Chicago area. Barberium’s has previously
and is presently making, using, selling, offering for sale, and/or importing into the U.S. personal
trimmers that infringe the ’345 patent (hereinafter also referred to as the “patent-in-suit”).
Barberium’s has infringed the patent-in-suit either directly or through acts of contributory
infringement or inducement in violation of 35 U.S.C. § 271 and 289.
6. Barberium’s has taken active steps to conceal its identity to avoid or delay actions
such as this one. Barberium’s operates a superficially slick-looking website, but closer scrutiny shows
the shady and unlawful nature of its business. Barberium’s provides only generic contact information
– an “info@” email address and a single contact phone number with a Chicago-based “773” area
code. Terms of service and privacy policy links do not give any other information. Barberium’s uses
a privacy service to conceal its identity and contact information through its domain name registration.
Further, although it has misused the “Circle R” in promotional materials (implying that it owns a
valid United States Trademark Registration (see below)), the Federal Register has no record of any
such registration, and thus no identifiable information about the Defendant Barberium’s.

(available at https://www.instagram.com/p/CFZ4erQFLem/?hl=en) (last visited Mar. 25. 2021).

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7. Defendant Barberium’s operates its online storefront through a third-party, Shopify,


Inc. According to Barberium’s terms of service, “Our store is hosted on Shopify Inc. They provide
us with the online e-commerce platform that allows us to sell our products and services to you.”
8. Barberium’s and Shopify are contractually bound. Barberium’s purchases services
from Shopify. Specifically, under its contract with Shopify, Barberium’s licenses Shopify’s
“subscription-based software [, which …] allows anyone to set up an online store and sell their
products.” (https://www.shopify.com/blog/what-is-shopify) 1. According to Shopify’s own website:

Out of the box, Shopify is your one-stop-shop to run your business: you get
a storefront, a payment processor, a shipping partner, a back office, and
marketing headquarters, all in one. These are the core functions of running
a business. (https://www.shopify.com/blog/what-is-shopify#2)
9. Upon information and belief, Barberium’s processes payments for purchase of its
infringing products through Shopify.
BACKGROUND
10. Conair owns the ’345 patent and has worked diligently to commercialize the
inventions claimed within it. Conair designer Vito Carlucci perfected a sleek, consumer-friendly
ornamental design embodied in the ’345 patent as shown in one of the patent figures, below (N.B.
“ghosting” or dotted lines indicate matter not part of the design patent claim):

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Unless otherwise noted, each cited URL was last visited on the filing date of the complaint.
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11. As a result of Conair’s commercialization efforts, Conair has experienced dramatic


commercial success worldwide with its embodiments of this patent – the BabylissPRO® Outlining
Trimmer. Conair’s success has attracted countless knock-off efforts and attempts to free ride on
Conair’s success. Defendant is now among them.
12. BabylissPRO® Outlining Hair Trimmers target the men’s grooming segment, with
particular focus on barbers and hair care professionals, though their appeal is not limited to men or
professionals. Conair has used a particular trade dress for the BabylissPRO® Outlining Hair
Trimmers consistently in its marketing, including on its website located on the internet at
https://babylisspro.com/trimmers. It is currently available in a variety of outlooks, including but not
limited to black, rose, silver and gold. Among all of the diverse BabylissPRO® products, the gold
version of this product is what Conair has placed as the first item shown on the opening webpage at
www.babylisspro.com.
13. Defendant Barberium’s advertises and sells infringing hair-styling devices on at least
the following website: https://barberiums.com/products/the-professional-barber-hair-clipper and
also promotes its infringing products on Instagram and Facebook, among other websites. To an
ordinary observer, those accused devices appear substantially and confusingly similar to claimed
aspects of Conair’s patented design, and to Conair’s commercial product:

Plaintiff’s Product Defendant’s Product

BaBylissPRO® GOLDFX Barberium’s GoldLUX Pro


Outlining Trimmer - FX787S Professional Trimmer

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14. Barberium’s also promotes its outlining trimmer in ways that mimic Conair’s
marketing and promotion, including copying its product naming convention (e.g., Conair’s
“GOLDFX” vs. Barberium’s “GoldLUX”), and also copies aspects of Conair’s stylized “PRO” logo
in its marketing materials as shown below

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15. Moreover, Barberium’s has also copied and reproduced as its own, marketing
materials that Conair has created for sales and marketing. Specifically, Conair uses the image below
left to market and sell the BaBylissPRO GoldFX outline trimmer, while Barberium’s uses the image
below right to market its knock-off product:
Conair Marketing Barberium’s Marketing

16. Conair owns distinctive, aesthetic, non-functional trade dress in its BabylissPRO®
Outlining Trimmers. Conair has used and highlighted this trade dress consistently in its marketing,
including on its website located on the Internet, e.g., at https://babylisspro.com/FX787S.html.
17. The trade dress of the BabylissPRO® Outlining Trimmers is recognizable by the
first-of-its-kind exposed “T- Blade” with a 360 degree skeleton housing, knurled barbell grip, the
Logo plate rounded corner rectangle and positioning, the shape of the bottom cap, the chevron
shape of the on/off switch and the shape of the upper housing, for example.

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18. The BabylissPRO® Outlining Trimmer trade dress symbolizes the quality of Conair
products, and has become distinctive to Conair through widespread use and advertising, which has
exposed it to many people, especially in the hair-care industry and its important consumer subgroups
(e.g., barbers). Conair has used the BabylissPRO® Outlining Trimmer trade dress in a consistent
and continuous fashion in commerce though its website, in print marketing material, and on the
websites and marketing material of its authorized dealers throughout the United States.
19. The BabylissPRO® Outlining Trimmer trade dress is aesthetic and non-functional,
and through consistent and continuous use it has come to identify the Conair products, and the
public recognizes the trade dress and associates it with Conair and its products. The trade dress has
become an asset of substantial value and is strongly associated with a single product line and source,
namely the Conair BabylissPRO® Outlining Trimmer products.
20. The products have been featured in numerous publications since release, featured
on numerous YouTube reviews, and shared widely by Conair and third parties on social media.
Conair’s products won the Rum Barber’s Trimmer of the Year award in both 2019 and 2020.
21. The BabylissPRO® Outlining Hair Trimmers are some of Conair’s most successful
products, in terms of sales, popularity and brand loyalty among its users. Conair has invested millions
in research, development, marketing, sales and brand awareness among its users. Conair has
experienced dramatic commercial success worldwide with these products. The Conair products thus
have a trade dress that has acquired a secondary meaning.
22. As can be seen in the photographs above taken from the parties’ respective web sites,
Defendant has copied and used the BabylissPRO® Outlining Trimmer trade dress in connection
with its advertising and marketing of the confusingly similar accused devices in interstate commerce
with the intention of misleading, deceiving or confusing consumers as to the origin of the accused
products while trading on Conair’s reputation and good will.
23. The infringement by Defendant of the BabylissPRO® Outlining Trimmer trade
dress is likely to cause confusion, deception, and mistake among consumers and potential consumers
of the Conair product.

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COUNT I
DESIGN PATENT INFRINGEMENT
24. Plaintiffs repeats and realleges the allegations contained in paragraphs 1 through 23
of this complaint as if fully set forth herein.
25. Defendant has infringed and continues to infringe the ’345 patent either directly or
indirectly through acts of contributory infringement or inducement in violation of 35 U.S.C. §§ 271
and 289 by making, using, selling, importing and/or offering to sell infringing products, such as the
GoldLUX Trimmer. Additional infringing models may be identified through discovery.
26. Defendant’s infringement, contributory infringement and/or inducement to infringe
has injured Conair and it, therefore, is entitled to recover damages adequate to compensate it for
such infringement, but in no event less than a reasonable royalty. On information and belief,
Defendant has had knowledge of the ’345 patent, and its infringement has been willful.
27. Defendant’s infringement, contributory infringement and/or inducement to infringe
has injured and will continue to injure Conair, unless and until this Court enters an injunction, which
prohibits further infringement and specifically enjoins further manufacture, use, sale, importation
and/or offer for sale of products or services that come within the scope of the ’345 patent.

COUNT II
FEDERAL TRADE DRESS INFRINGEMENT/UNFAIR COMPETITION
28. Plaintiff repeats and realleges the allegations contained in paragraphs 1 through 27
of this complaint as if fully set forth herein.
29. Defendant’s activities complained of herein constitute infringement of Conair’s trade
dress and unfair competition in violation of 15 U.S.C. § 1125(a) to the injury and detriment of
Plaintiff.
30. As a direct and proximate result of Defendant’s infringement, Conair has suffered
and will continue to suffer loss of income, profits and good will and defendants will continue to
unfairly acquire income, profits, and good will.
JURY DEMAND
Under Rule 38(b) of the Federal Rules of Civil Procedure, Conair requests a trial by jury on
all issues presented that can properly be tried to a jury.

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PRAYER FOR RELIEF


THEREFORE, Conair ask this Court to enter judgment against Defendant and
against its subsidiaries, affiliates, agents, servants, employees and all persons in active concert or
participation with them, including Shopify, granting the following relief:
A. An injunction permanently prohibiting further infringement, inducement and
contributory infringement of the patent-in-suit;
B. An injunction permanently prohibiting further infringement of Conair’s trade dress
and further unfair competition;
C. An award of damages adequate to compensate Conair for the infringement that has
occurred, together with prejudgment interest from the date infringement began;
D. All other damages permitted by 35 U.S.C. § 284;
E. Additional damages as expressly provided for in the case of a design patent under 35
U.S.C. § 289;
F. Additional damages as expressly provided for in the case of Lanham Act violations
under 15 U.S.C. §§ 1116-18, including a permanent injunction enjoining Defendant’s acts of trade
dress infringement; recovery of Defendant’s profits, any damages sustained by Plaintiffs, the costs of
the action; and destruction of the infringing articles;

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G. A finding that this case is exceptional and an award to Conair of its attorneys’ fees
and costs as provided by 35 U.S.C. § 285;
H. An award of costs; and
I. Such other and further relief as this Court or a jury may deem proper and just.

Dated: March 26, 2021 Respectfully submitted,

/s/ Michael La Porte


Robert P. Greenspoon rpg@fg-law.com
Michael R. La Porte mrl@fg-law.com
Flachsbart & Greenspoon, LLC
333 N. Michigan Ave., 27th Floor
Chicago, IL 60601
Phone: 312-551-9500
Fax: 312-551-9501

Attorneys for Plaintiff,


Conair Corporation

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Case: 1:21-cv-01663 Document #: 1-1 Filed: 03/26/21 Page 1 of 4 PageID #:11

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION

CONAIR CORPORATION,
​CASE No.
Plaintiff,
v.

Unknown Person(s) or Entity(ies) d/b/a


Barberium’s,

Defendant.

​ ​
DECLARATION OF ALAN STOCKMAN IN SUPPORT OF
PLAINTIFFS’ MOTION FOR A TEMPORARY RESTRAINING ORDER

I, Alan R. Stockman, being over the age of 18 and having personal knowledge of
the following facts, hereby declare:
1. ​I am the Vice President, General Manager for the Conair Professional
Division of Conair Corporation (“Conair”). Conair is a world leader in hair styling
products. I give this declaration in support of Conair’s efforts to stop Defendant’s
infringement of Conair’s patent and trade dress.
2. ​My responsibilities at Conair include heading up the Professional
Division, including the grooming business, which includes the BabylissPRO® Outlining
Hair Trimmers. BabylissPRO® is a trademark belonging to Conair Corporation.
3. ​BabylissPRO® Outlining Hair Trimmers target the men’s grooming
segment, with particular focus on barbers and hair care professionals, though their appeal
is not limited to men or professionals. Conair has used a particular trade dress for the
BabylissPRO® Outlining Hair Trimmers consistently in its marketing, including on its
website located on the internet at https://babylisspro.com/trimmers. It is currently
available in a variety of outlooks, including but not limited to black, rose, silver and gold.
Among all of the diverse BabylissPRO® products, the gold version of this product is
what we have placed as the first item shown on the opening webpage at
www.babylisspro.com. Here is a front view of the BabylissPRO® Outlining Hair
Trimmer (gold version):
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4. ​As evident from the picture, nonfunctional aspects of the BabylissPRO®


Outlining Hair Trimmer trade dress include:
• 360 degree skeleton housing

• Knurled cylinder handle

• Logo plate rounded corner rectangle and positioning

• The floating blade

• The shape of the bottom cap

• The chevron shape of the on/off switch

• The shape of the upper housing



5. ​Conair launched the BabylissPRO® Outlining Hair Trimmers in late
May 2019 at the largest barber expo and competition in the world: CT Barber Expo.
Since launch, the BabylissPRO® Outlining Hair Trimmers have received extremely
positive attention, recognition and industry praise. Just a few examples of media praise
include:
https://www.gq.com/story/rick-ross-dj-khaled-barber-beard-and-hair-tips
https://www.modernsalon.com/611080/babylisspro-launches-new-goldfx-outliner
https://www.salontoday.com/611080/babylisspro-launches-new-goldfx-outliner
https://www.styleicons.com.au/sponsoredcontent/these-new-babylisspro-barberology-
tools-have-launched-in-australia/
https://www.beautylaunchpad.com/products/tools/article/21151514/be-ready-for-any-
style-requests-with-this-selection-of-tools
https://www.beautylaunchpad.com/products/tools/article/21151562/must-have-barber-
tools-for-the-new-year

6. ​The BabylissPRO® Outlining Hair Trimmers also won the Rum Barbers
Trimmer of the Year award in both 2019 and 2020:
https://www.youtube.com/watch?v=v0TKMU6t6Ng
https://www.youtube.com/watch?v=A0llrKUBIGQ (note video beginning at 12:50,
especially 13:20-13:35, calling it “the benchmark of other trimmers — when I’m trying
other trimmers out, I think are they as good as the Babyliss® FX?” [N.B. “Babyliss® FX
in this video refers to the BabylissPRO® Outlining Hair Trimmers]).
​7. ​The BabylissPRO® Outlining Hair Trimmers are some of Conair’s most
successful products, in terms of sales, popularity and brand loyalty among its users.
Conair has invested millions in research, development, marketing, sales and brand
awareness among its users. Conair has experienced dramatic commercial success
worldwide with these products.
8. ​The trade dress of the BabylissPRO® Outlining Hair Trimmers is
recognizable by its distinctive appearance and design, as discussed already above.
9. ​The BabylissPRO® Outlining Hair Trimmer trade dress symbolizes the
quality of the Conair products, and has become distinctive to Conair through widespread
use and advertising, which has exposed the products to many people, especially in the
hair care industry. Conair has used the BabylissPRO® Outlining Hair Trimmer trade
dress in a consistent and continuous fashion in commerce though its website, in print
marketing material, and on the websites and marketing material of its authorized dealers
throughout the United States.
10. ​The BabylissPRO® Outlining Hair Trimmer trade dress is aesthetic and
non-functional, and through consistent and continuous use it has come to identify the
BabylissPRO® Outlining Hair Trimmer products, and the public recognizes the trade
dress and associates it with Conair and its BabylissPRO® products. The trade dress has
become an asset of substantial value and is strongly associated with a single product line
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and source, namely the Conair BabylissPRO® Outlining Hair Trimmers.


11. ​As can be seen in the photographs below, Defendant has copied and
used the BabylissPRO® Outlining Hair Trimmer trade dress in connection with their
advertising and marketing of the confusingly similar accused devices, trading on Conair’s
reputation and good will.

Barberium’s GoldLUX Pro - Professional


Conair’s BaBylissPRO® GOLDFX Trimmer
Outlining Trimmer - FX787G

12. ​Conair also holds a design patent on aspects of the ornamental design:
D905,345. The design patent shows the same design used by both Conair in its authorized
products, and Defendant in its unauthorized products:

13. ​Infringement by Defendant of the BabylissPRO® Outlining Hair


Trimmer trade dress is likely to cause confusion, deception, and mistake among
consumers and potential consumers of the Conair products. I have inspected Defendant’s
product and believe it to be comparably flimsy and subject to rapid malfunction. Since
the products are so confusingly similar, this malfunctioning (which the Conair products
do not do) endangers Conair’s reputation and good will.
14. ​In the eye of an ordinary observer, the resemblance between the ’345
Patent and Defendant’s design would likely deceive the ordinary observer and induce the
ordinary observer to purchase the Defendant’s design supposing it to be the claimed
design. Compared to Defendant’s design (depicted above), there is almost no difference
in overall impressions, and specific details are the same right down to the rounded-corner
rectangular label plate and the floating blade head.
15. ​By its infringing sales and marketing and by competing with Conair
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with an unlicensed product, Defendant is irreparably harming Conair. In the market for
outlining trimmers, Conair and Barberium’s are direct competitors. Conair sells the
BabylissPRO® Outlining Trimmer under the BabylissPRO® Brand name. Barbarium’s
GoldLUX Pro - Professional Trimmer competes directly with the Conair products.
16. ​Moreover, Barberium’s products are causing price erosion in the
marketplace in which they both compete. Conair’s products’ suggested retail is about
$174.99 per unit. Barberium’s products have been offered for sale as low as $99, see
https://barberiums.com/products/the-professional-barber-hair-clipper, which purports to
be a sale price (above, noted as a “limited time offer”), $100 off a claimed retail price of
$199. Sales of the patented and trade dress-protected devices at such limited-time-offer
prices give consumers a false impression that the patented technology can be obtained at
too low a price and make it difficult for Conair to price its high-quality devices to reflect
its exclusive, patented and trade dress-protected position in the marketplace.
​17. ​Conair has invested an extraordinary amount of its resources to create a
new and innovative product category of advanced award winning trimmers. Defendant,
on the other hand, is simply reaping the benefit of Conair’s efforts. Conair has built these
product categories using innovative design and solid construction. Absent an injunction,
i.e., if Defendant is allowed to benefit from Conair’s rightful exclusive product categories
particularly with its inferior infringing products, the resulting confusion will tarnish
Conair’s reputation for innovation and quality. Defendant’s market presence will also
pressure Conair to reduce its price, even though Conair would be the premium supplier in
the category. And, Conair will likely lose sales and market share because of Defendant’s
use of Conair’s patented features, because consumers who buy one of Defendant’s
products will no longer have any desire to buy a BabylissPRO® Outlining Trimmer due
to Defendant’s undercutting pricing on what it deceptively presents to consumers as an
equivalent product.
​18. ​It is also my experience in the hair care products category that copying
emboldens more copyists. The mere presence on the market of one pirate encourages
others to pirate, and creates a cascading problem for Conair. Sometimes dozens of
copycats spring up to free ride on the investment, risk taking and success of Conair,
without being burdened by the effort or cost that such success has required.
​19. ​Having only learned of Barberium’s infringement toward the end of
2020, Conair immediately and quickly began evaluating its options regarding its next
course of action. Conair attempted to gain information usable for this lawsuit, with little
success. Conair ordered the infringing product, but the shipping information did not
reveal the entity selling it or its location. Conair monitored Instagram and Facebook
accounts, but several Conair employees eventually got blocked (perhaps based on
Conair’s unique IP address)—a deliberate effort to conceal activities from us. Once it was
determined that Conair had gained all of the information it could publicly obtain for this
action, it had its attorneys prepare a complaint and motion for temporary restraining order
immediately, which was filed at the earliest possible time after completion. Conair’s
attempt to locate anyone directly connected with Barberium’s however, turned up very
little information beyond an email address (info@barberiums.com) and a contact
telephone number with a “773” area code. Website pages that normally contain entity
identity (e.g., terms and conditions, privacy policy) are either uninformative or absent.
​I declare under penalty of perjury that the foregoing is true and correct to the best
of my knowledge and belief.
March 25, 2021 ​ ​ ​ ​ ​Alan R. Stockman

​ ​ ​ ​_____________________________________________

​ ​ ​ ​ ​

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