Nail Alliance v. TTN Beauty - Complaint

Case 2:21-cv-03140-CCC-ESK Document 17 Filed 03/09/21 Page 1 of 24 PageID: 285
POLSINELLI PC
A Missouri Professional Corporation
GABRIEL LEVINSON, ESQ. (NJ ID: 023581998)
New Jersey Resident Shareholder
600 Third Avenue, 42nd Floor
New York, NY 10016
(212) 413-2853
[email protected]
Attorneys for Plaintiffs Nail Alliance, LLC

and Nail Alliance – North America, Inc.
UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW JERSEY
NAIL ALLIANCE, LLC, a Delaware limited

liability company, and NAIL ALLIANCE –
NORTH AMERICA, INC., a California Civil Action No.: 1:21-cv-03140-CCC-ESK
corporation,
Plaintiffs,
FIRST AMENDED COMPLAINT
-against-
TTN BEAUTY, an entity of unknown origin,

LUXE NAILS & SPA, an entity of unknown
origin, TAI NGUYEN, an individual, KY M.
NGUYEN, GIAU NGUYEN, an individual,
CUONG HUNG NGUYEN, an individual,
and DOES 1-10, INCLUSIVE,
Defendants.
Plaintiffs Nail Alliance, LLC and Nail Alliance – North America, Inc. (collectively,
“Plaintiffs” or “Nail Alliance”), through their undersigned counsel, allege as follows for their
First Amended Complaint against Defendants TTN Beauty, Luxe Nails & Spa, Tai Nguyen, Ky
M. Nguyen as Doe 1, Giau Nguyen as Doe 2, Cuong Hung Nguyen as Doe 3, and “Doe”
Defendants 4 to 10 (collectively, “Defendants”):
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THE PARTIES
1. Plaintiff Nail Alliance, LLC is a limited liability company organized under the
laws of Delaware, with its principal place of business at 6840 N. Oak Traffic Way, Gladstone,
MO 64118. Nail Alliance LLC owns and holds intellectual property rights used in connection
with the GELISH brand goods, including federal registrations for GELISH trademarks. Nail
Alliance LLC licenses use of these trademarks to Nail Alliance – North America, Inc.
2. Plaintiff Nail Alliance – North America, Inc. is a corporation duly organized
under the laws of the State of California, with its principal place of business at 1545 Moonstone
Avenue, Brea, CA 92821. Nail Alliance – North America, Inc. manufactures, distributes, and
sells high-quality, soak-off gel polishes and other nail products, accessories, and preparations
under the brand name GELISH. Through its qualified distributors, it sells GELISH brand
products to stores, boutiques, and salons in this judicial district and throughout the world.
3. Defendant TTN Beauty (“TTN”) is an entity of unknown origin and/or username;
upon information and belief, TTN’s principle place of business is located at 434 U.S.-46, South
Hackensack, NJ 07606, and it maintains at least one Facebook page showing an alternate address
at 3224 Grand Concourse, #G21, Bronx, NY 10458.
4. Defendant Luxe Nails & Spa is an entity of unknown origin and/or username; its
principle place of business is 434 U.S.-46, South Hackensack, NJ 07606.
5. Defendant Tai Nguyen, upon information and belief, resides and/or works out of
one or both of the addresses listed above, is an owner, director, officer, member, partner,
employee, and/or agent of TTN Beauty and/or Luxe Nails & Spa, and/or is otherwise acting in
concert or participation with TTN Beauty and/or Luxe Nails & Spa in this judicial district and is
knowingly undertaking the wrongful acts alleged herein.
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6. Defendant Ky M. Nguyen, sued originally as Doe 1, upon information and belief,
resides and/or works out of one or both of the addresses listed above, is an owner, director,
officer, member, partner, employee, and/or agent of TTN Beauty and/or Luxe Nails & Spa,
and/or is otherwise acting in concert or participation with TTN Beauty and/or Luxe Nails & Spa
in this judicial district and is knowingly undertaking the wrongful acts alleged herein.
7. Defendant Giau Nguyen, sued originally as Doe 2, upon information and belief,
resides and/or works out of one or both of the addresses listed above, is an owner, director,
officer, member, partner, employee, and/or agent of TTN Beauty and/or Luxe Nails & Spa,
and/or is otherwise acting in concert or participation with TTN Beauty and/or Luxe Nails & Spa
in this judicial district and is knowingly undertaking the wrongful acts alleged herein.
8. Defendant Cuong Hung Nguyen, sued originally as Doe 3, upon information and
belief, resides and/or works out of one or both of the addresses listed above, is an owner,
director, officer, member, partner, employee, and/or agent of TTN Beauty and/or Luxe Nails &
Spa, and/or is otherwise acting in concert or participation with TTN Beauty and/or Luxe Nails &
Spa in this judicial district and is knowingly undertaking the wrongful acts alleged herein.
9. Doe Defendants 4-10 are business entities or individuals that, upon information
and belief, reside in New Jersey, conduct business in New Jersey or with persons or entities
connected to New Jersey, or conduct business designed to have and/or is having a substantial
impact in New Jersey, and are co-conspirators of the other Defendants.
10. Upon information and belief, Defendants engage in the manufacture, promotion,
distribution, and/or sales of counterfeit or other spurious products as suppliers, distributors,
and/or officers, directors, owners, partners, members, employees, agents and/or co-conspirators
of the other Defendants, and/or are otherwise acting in concert or participation with them,
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including but not limited to undertaking acts to aid and abet or in a conspiracy with the other
Defendants. Moreover, Defendants’ contributory conduct falls within any scope of employment,
agency, or conspiracy and is a substantial factor to the harm caused to Plaintiffs as alleged
herein. Plaintiffs are presently unaware of the true names of Doe Defendants 4-10. Plaintiffs
will amend this Complaint upon discovery of the identities of such fictitious defendants.
JURISDICTION AND VENUE
11. The causes of action in this Complaint arise under the Lanham Trademark Act,
15 U.S.C. § 1051, et seq., the Patent Act, 35 U.S.C. § 101 et seq., and the New Jersey Consumer
Fraud Act, N.J. Stat. Ann. § 56:8-1, et seq.
12. This Court has federal question jurisdiction over the subject matter of this action
under 28 U.S.C. §§ 1331 and 1338 (a) and (b), and supplemental jurisdiction over all other
claims asserted herein under 28 U.S.C. § 1367(a).
13. This Court has personal jurisdiction over Defendants under, inter alia, N.J. Ct.
R. 4:4-4 because Defendants: (i) reside in New Jersey; (ii) have transacted substantial business
from, to, and within New Jersey; (iii) have brought, sold, and/or solicited the sales of counterfeit
products from, to and within New Jersey; (iv) have induced or enabled, or otherwise aided and
abetted or conspired with others in the distribution of counterfeit products from, to or within
New Jersey; (v) have participated in distribution of counterfeit products, which distribution
Defendants knew would have, and has had, a substantial impact in New Jersey; and/or
(vi) otherwise have sufficient contacts to New Jersey that give rise to the claims asserted herein,
such that it would fair and reasonable and consistent with the United States Constitution to
exercise personal jurisdiction over each of the Defendants.
14. Venue is proper in this Court under 28 U.S.C. §§ 1391(b), (c) and/or 1400(b).
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INTRODUCTION
15. This case concerns flagrant violations of Plaintiffs’ intellectual property rights by
Defendants’ counterfeiting activities, which involve a network of counterfeiters and has
manifested itself in cities and states across the nation, including now in South Hackensack, New
Jersey. Defendants are actively engaged in manufacturing, distributing, selling, promoting
and/or attempting to pass off counterfeit products and spurious imitations of Plaintiffs’
GELISH® brand nail products. Defendants’ counterfeit products are cheap, low-quality
masquerades, which use and disparage Plaintiffs’ industry-famous trademark and inherently
distinctive trade dress. As a result, it is certain to deceive consumers and irreparably harm the
goodwill and reputation earned by Plaintiffs and associated GELISH brand products.
16. Nail Alliance’s success in selling GELISH brand products has attracted
unscrupulous counterfeiters, such as Defendants. These counterfeiters, anxious to capitalize on
the high demand for GELISH goods, dupe consumers with false labeling into purchasing an
expanding number of spurious products with backstreet quality and false origin. Nail Alliance
has spent and continues to spend a tremendous amount of resources policing and enforcing its
intellectual property rights to protect consumers and itself from the corrosive impact of
counterfeit products. It has now brought more than five of these counterfeiting seizure actions.
GENERAL ALLEGATIONS
A. GELISH® BRAND GEL POLISH
17. GELISH brand products, including gel polish, foundation, top coat and other nail
care preparations, are known throughout and famous within the nail industry for their high
quality, range of colors, durability, ease-of-use, consistency and beauty.
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18. In 2009, Plaintiffs’ principal, Danny Haile, invented the first brush-on, soak-off
gel polish, which Nail Alliance began selling in earnest in 2010 under the federally registered
trademark “GELISH”. GELISH brand products have the benefits of both a traditional nail polish
(vibrant colors and a brush on application and finish) and a hard gel (long lasting wear).
19. GELISH brand products revolutionized the nail industry. Prior to Mr. Haile’s
invention, consumers generally frequented salons on select occasions for pampering or
professional treatment. They normally did not go to salons for the application of a nail polish,
for example, which they could apply at home. Because nail polish only lasted a few days before
chipping or cracking, it is prohibitively expensive for most consumers to frequent a salon just for
nail polish. Moreover, although salons offered alternative and longer lasting products such as
acrylics and hard-gels, consumers generally preferred the natural look and convenience of a
traditional nail polish. These practical realities were an impediment to salon business.
20. GELISH brand products provided salons and professional nail technicians with
new opportunities to grow their businesses and expand their services. For example, because of
GELISH, consumers could now frequent salons and obtain a natural, nail-polish look in a
convenient finish that would last three to four weeks. Consumers could obtain the vibrant color
on a natural looking nail with a long wear and finish that was easier to remove than an acrylic or
hard gel. As a result, GELISH brand products substantially increased salon business and have
experienced tremendous commercial success in the United States and around the world.
21. According to 2015 Kline Report, as a result of selling millions upon millions of
bottles of GELISH band gel polish, foundation and top coat, Nail Alliance’s flagship brand and
product line, Nail Alliance has become the largest privately held manufacturer of professional
nail products around the world and third largest manufacturer, overall, exceeding the likes
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L’Oréal and other cosmetic companies. Consumers recognize GELISH brand products by their
trademarks and the distinctive trade dress of the GELISH brand bottles.
22. The GELISH mark is protected by multiple federal trademark registrations,
including United States Trademark Registration Nos. 4,096,115 (standard character mark) and
3,857,946 (design plus words) for use in nail care preparations. Copies of the GELISH marks
and certificates of registration are set forth at Exhibits “1” and “2” to this Complaint.
23. The GELISH design, which includes a unique three-dimensional configuration
and scrollwork pattern, is also protected by federal United States Trademark Registration
Nos. 4,473,557 and 4,473,558. Copies of these design marks and certificates of registration are
set forth at Exhibits “3” and “4” to this Complaint.
24. Plaintiffs further distinguish their products with visually useful and artistically
distinctive bottles (the “GELISH brand bottles”), which are entitled to trade dress and patent
protection. Attached as Exhibits “5” and “6” are U.S. Design Patent No. D 656,824, which
issued on April 3, 2012 (the ‘824 Patent), and U.S. Patent No. 8,528,739 (the ‘739 Patent), which
issued on September 20, 2013. The ‘824 and ‘739 Patents protect the visually distinctive look
and utility of the original GELISH brand bottle, which included a unique translucent window
through which consumers can see the actual color of the gel polish. Plaintiffs used the original
bottle exclusively for more than five years to distribute GELISH brand gel polish.
25. After a rash of counterfeiting activity, Plaintiffs upgraded to a more expensive
glass bottle that utilized the same trade dress, including the GELISH brand bottle’s clean lines
and distinctive scroll artwork against a white background, and continued to feature the dominant
GELISH mark and colored circle. GELISH brand foundation, gel polish, and top coat are now
sold in elegantly adorned and distinctive bottles as illustrated in Figure 1 below.
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FIGURE 1: GELISH FOUNDATION, GEL POLISH AND TOP COAT
26. The distinctive appearance of these GELISH brand bottles, taken as a whole, is
unique and non-functional and entitled to trade dress protection. Since its inception and through
this year, Nail Alliance has extensively and continuously promoted and used this design for
GELISH brand bottles in the United States and worldwide. Through this extensive and
continuous use and promotion, the distinctive features of these GELISH brand bottles now serve
as well-known indicators of the origin and quality of GELISH brand goods and have acquired
secondary meaning. Collectively, the preceding federally registered and common law GELISH
trademarks, design marks, and trade dress are referred to herein as the “GELISH marks”.
27. Nail Alliance owns the GELISH marks.
28. Pursuant to a license agreement, Nail Alliance – North America, Inc. has an
exclusive worldwide right to use the GELISH marks and GELISH brand bottles. Nail Alliance –
North America, Inc. has at all times relevant to this Complaint been an exclusive licensee with
the asserted rights in and to the GELISH marks and GELISH brand bottles.
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29. The GELISH marks and GELISH brand bottles are symbols of the quality of
Nail Alliance’s brand products, and their associated reputation and goodwill, and Nail Alliance
has never abandoned but only built upon these symbols.
30. Over a period of years, Plaintiffs have invested and continue to invest substantial
time, money and other resources to widely promote and protect GELISH brand goods and the
GELISH brand bottles in the United States and throughout the world.
31. As a result of Plaintiffs’ efforts, members of the consuming public readily identify
and associate the GELISH marks and GELISH brand bottles with high quality sponsored and
approved by Plaintiffs. The GELISH marks and GELISH brand bottles achieved secondary
meaning as identifiers of high quality nail products.
32. GELISH brand goods are widely and legitimately promoted by Plaintiffs on the
Internet and in numerous industry publications and trade shows, as well as by authorized
GELISH brand goods distributors. Upon information and belief, the GELISH marks qualify as
“famous” as that term is used in 15 U.S.C. § 1125 (c)(1).
33. Plaintiffs monitor and police the use of the GELISH marks and bottle.
34. Of critical significance, Nail Alliance has given notice, including to Defendants,
pursuant to 15 U.S.C. § 1111 by marking GELISH goods with the ® symbol to notify others that
the GELISH mark is the subject of federal trademark registrations.
35. The GELISH marks and bottle have never been assigned or licensed to any of
the Defendants in this matter.
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B. DEFENDANTS’ COUNTERFEITING ACTIVITIES
36. Defendants are manufacturing, purchasing, promoting, distributing, advertising,
offering to sell, selling, and/or palming off counterfeit and spurious GELISH brand products in
the United States, including in South Hackensack, New Jersey.
37. Defendants have engaged in their counterfeiting conduct despite having
knowledge of Plaintiffs’ exclusive rights in and to the GELISH marks and bottle, including their
exclusive right to use the GELISH marks, bottle design and trade dress and the goodwill
associated therewith in the United States and around the world.
38. The infringing products sold by counterfeiters, including Defendants, are nearly
identical in appearance in material respects to genuine GELISH brand goods. Defendants use
the GELISH marks in the same stylized fashion, but for cheaper and lower quality goods,
without Plaintiffs’ quality control and customer service, in bottles with false and misleading
labeling. Defendants use a nearly identical trade dress on counterfeit GELISH brand bottles,
including selling (a) gel polish in bottles that overtly infringe ‘824 and ‘739 Patents and (b)
foundation and top coat in bottles with the same or substantially similar artwork, fonts, names
and script, as well as fraudulent item codes, item numbers, and/or UPC codes.
39. FIGURES 2-3, below, illustrate genuine and counterfeit GELISH brand products
side-by-side. FIGURE 2 illustrates a front view of a genuine GELISH brand foundation
(FOUNDATION) (left) and a counterfeit product (right). FIGURE 3 illustrates a front view of a
genuine GELISH brand top coat (TOP IT OFF) (left) and a counterfeit product (right).
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FIGURE 2: FRONT VIEW OF GENUINE GELISH PRODUCT (FOUNDATION) NEXT

TO EXAMPLE COUNTERFEIT PRODUCT
FIGURE 3: FRONT VIEW OF GENUINE GELISH PRODUCT (TOP IT OFF) NEXT TO

EXAMPLE COUNTERFEIT PRODUCT
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40. Figure 4 below is an image of how Defendants display counterfeit and spurious
GELISH brand gel polish along the entire wall of their nail salon:
FIGURE 4: COUNTERFEIT PRODUCT ON DISPLAY WALL
41. Defendants are manufacturing, promoting, distributing, advertising, selling and/or
passing off counterfeit and spurious GELISH brand products. The above images illustrate
counterfeit and spurious products containing identical and/or substantially similar designs and
markings, including bottle design, labeling, stylized font, similar grey scrollwork highlights,
floral backgrounds, color, tone, writings, and the like, with the obvious objective of being
indistinguishable in appearance from genuine GELISH brand products. Plaintiffs purchased
counterfeit products from “TTN Beauty” off the internet from Defendants. Plaintiffs discovered
other counterfeit products when the U.S. Marshall raided their premises. Defendants are
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manufacturing, promoting, distributing and/or selling products in bottles with false labeling of
the contents and origin of the products, as well as fabricated identification codes.
42. Upon information and belief, Defendants are using the GELISH marks and
GELISH brand bottles to sell cheap, inferior goods to mimic Plaintiffs’ goods. The health
effects of such products are not precisely known to Plaintiffs, but Plaintiffs have received
complaints of “burning” as a result of use of counterfeit products, and they may well present a
danger to the health and safety of the consuming public.
43. With full knowledge of the counterfeit and suspect nature of the products,
Defendants are manufacturing, using, promoting, selling and/or otherwise advertising,
distributing, and/or offering for sale substantial quantities of such counterfeit products—fully
knowing that these products, with their inferior quality, will be mistaken for the genuine high
quality genuine GELISH brand products offered for sale by Plaintiffs.
44. Defendants’ actions are designed to cause, and are causing, actual confusion
among consumers, including both end users and professional nail technicians, who are led to
believe, and believe, and if Defendants are not enjoined will continue to believe, that they have
purchased or have received, or are receiving, genuine GELISH brand products that originate
from and are approved and supported by Plaintiffs.
45. Plaintiffs are entitled to an accounting from Defendants of all counterfeit and
spurious product sold in violation of Plaintiffs’ intellectual property rights.
46. Plaintiffs are suffering irreparable harm not only due to consumer confusion, but
also due to, inter alia, the sales and proliferation of cheap/poor quality counterfeit products, the
corresponding lack of quality control and custom support thereof, the loss of control over
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Plaintiffs’ famous GELISH marks and the reputation of GELISH products, and the ongoing
disparagement and diminution of the goodwill associated with the GELISH brand.
47. Defendants’ wrongful conduct has caused Plaintiffs damages, the full amount of
which will be difficult to calculate. Since the acts of Defendants will continue in the future
unless enjoined and restrained, Plaintiffs have no adequate remedy at law.
48. Plaintiffs have satisfied any and all conditions to the filing of this action and/or
any such conditions have been waived.
COUNT ONE
(Against All Defendants)
TRADEMARK INFRINGEMENT AND COUNTERFEITING IN

VIOLATION OF 15 U.S.C. §§ 1114, 1116(d)
49. Plaintiffs repeat and re-allege the allegations in paragraphs 1 to 48 above as if
fully set forth herein.
50. Defendants knowingly and without the consent of Plaintiffs have used in
commerce reproductions, counterfeit copies, identical products and packaging, and nearly
identical imitations of multiple registered marks of Plaintiffs, in connection with the sale,
offering for sale, distribution, and/or advertising of goods, which is likely to cause confusion,
cause mistake, or to deceive.
51. Notwithstanding Plaintiffs’ well-known and prior rights in the GELISH marks
and the GELISH bottles, Defendants manufacture, distribute, promote, offer for sale and/or sell
counterfeit and/or otherwise spurious knock-off products, in or affecting interstate commerce, in
direct competition with the sale of genuine GELISH products.
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52. Without prejudice to the generality of the foregoing, Defendants’ violations
consist of or include the use of counterfeit and spurious marks in connection with the sale,
offering for sale, and/or distribution of counterfeit product.
53. Defendants’ activities constitute counterfeiting and intentional, willful
infringement in violation of Plaintiffs’ rights under 15 U.S.C. § 1114, and have caused and will
continue to cause Plaintiffs irreparable harm.
54. Plaintiffs have no adequate remedy at law as monetary damages are inadequate to
compensate Plaintiffs for the injuries caused by Defendants.
55. Unless immediately restrained and enjoined by this Court under 15 U.S.C.
§ 1116(a) and (d) and the equitable powers of this Court, Defendants will persist in their
activities and continue to cause Plaintiffs irreparable harm.
56. Plaintiffs are entitled to injunctive relief, including the seizure of counterfeit
goods at Defendants’ premises.
57. Plaintiffs have suffered damages, including lost profits, according to proof at trial.
58. In addition, and/or in the alternative, Plaintiffs are entitled to disgorge and recover
Defendants’ profits from their sales of counterfeit product after an accounting thereof.
59. Alternatively, pursuant to 15 U.S.C. § 1117(c), Plaintiffs are entitled to statutory
damages. Specifically, because Defendants’ counterfeiting activity is and was willful, Plaintiffs
are entitled to statutory damages of not more than $2,000,000 per counterfeit mark per type of
product or service sold, offered for sale, or distributed as deemed just and appropriate.
60. Because of Defendants’ counterfeiting and willful, malicious and/or fraudulent
misconduct, and/or because of the exceptional nature of this case, Plaintiffs are entitled to
enhanced (or treble) damages and/or an award of costs and reasonable attorneys’ fees.
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COUNT TWO
(Against All Defendants)
FALSE DESIGNATION OF ORIGIN, FALSE DESCRIPTIONS, UNFAIR

COMPETITION AND DILUTION UNDER 15 U.S.C. § 1125
62. Defendants knowingly and without the consent of Plaintiffs have used in
commerce reproductions, counterfeit copies, identical products and packaging, and nearly
identical imitations of Plaintiffs’ unregistered marks or trade dress of Plaintiffs’ bottles, in
connection with the sale, offering for sale, distribution, and/or advertising of goods, which is
likely to cause confusion, cause mistake, or to deceive.
63. Notwithstanding Plaintiffs’ well-known and prior rights in the GELISH marks
and the GELISH bottles, Defendants manufacture, distribute, promote, offer for sale and/or sell
counterfeit and spurious product in direct competition with the sale of genuine GELISH products
in or affecting interstate commerce.
64. Without prejudice to the generality of the foregoing, Defendants’ violations
consist of or include the use of counterfeit and spurious marks in connection with the sale,
offering for sale, and/or distribution of counterfeit product.
65. The counterfeit and spurious products trafficked by Defendants are designed to
look like the same nature and type of product as GELISH brand goods. The counterfeit bottles
so closely resemble GELISH brand goods that Defendants’ activities are likely to, and are
certainly intended to, cause confusion of among consumers (both end-users and nail technicians),
and have caused actual confusion in the marketplace.
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66. By misappropriating and using the GELISH marks, Defendants misrepresent and
falsely describe the content, origin and source of the counterfeit product in addition to creating a
likelihood of and causing actual confusion.
67. Moreover, the counterfeit and spurious products are generally of inferior quality,
lacks the same quality control and customer support as authentic GELISH products, and the sale
thereof will necessarily damage and dilute the goodwill of Plaintiffs and the GELISH brand, as
well as the reputation Nail Alliance has developed in connection with the sale of genuine
GELISH brand products.
68. Defendants’ unlawful, unauthorized and unlicensed manufacture, promotion,
distribution, offer for sale, and sale of counterfeit products creates the express and implied
misrepresentation that the counterfeit products were created, authorized, approved and/or
supported by Plaintiffs.
69. Defendants’ activities violate 15 U.S.C. § 1125(a) in that their use in commerce of
the GELISH marks, trade dress and/or bottle, create a false designation of origin. Defendants’
use, manufacture, promotion, distribution, offers to sell, selling, and importing into the United
States of products that are confusingly similar to the GELISH marks, bottle and trade dress
infringes Plaintiffs’ rights in violation of the Lanham Act and common law.
70. Defendants’ use of colorable imitations of the GELISH brand bottle has been
intentional and willful. Defendants’ bad faith is evidenced at least by the striking similarity of
the infringing product to the GELISH brand bottle. Additionally, the use of identical scroll
artwork, an identical color scheme, identical names and fonts, and identical packaging, including
fabricated item codes, also demonstrate the intentional and willful nature of Defendants’ actions.
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71. Defendants’ acts alleged above have caused, and if not enjoined will continue to
cause, irreparable and continuing harm to Plaintiffs’ trademark and trade dress rights, business,
reputation and goodwill.
72. Plaintiffs have no adequate remedy at law and are entitled to injunctive relief.
73. Plaintiffs have suffered damages, including lost profits, according to proof at trial.
74. In addition, and/or in the alternative, Plaintiffs are entitled to disgorge and recover
Defendants’ profits from their sales of counterfeit product after an accounting thereof.
75. Because of Defendants’ counterfeiting and willful, malicious and/or fraudulent
misconduct, and/or because of the exceptional nature of this case, Plaintiffs are entitled to
enhanced (or treble) damages and an award of costs and reasonable attorneys’ fees.
COUNT THREE
(Against all Defendants)
VIOLATION OF NEW JERSEY CONSUMER FRAUD ACT

(N.J. STAT. ANN. § 56:8-1 et seq.)
77. Defendants have engaged in acts violating New Jersey law including, but not
limited to, passing off counterfeit and spurious products as those of Plaintiffs, causing a
likelihood of confusion and/or misunderstanding as to the source of their goods, causing a
likelihood of confusion and/or misunderstanding as to an affiliation, connection, or association
with genuine Plaintiffs’ products, representing that their products have Plaintiffs’ approval when
they do not, and engaging in other conduct which creates a likelihood of confusion or
misunderstanding among the public.
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78. Defendants’ wrongful conduct acts constitute a willful violation of the New
Jersey Consumer Fraud Act, N.J. Stat. Ann. § 56:8-1 et seq.
79. Defendants’ wrongful conduct has caused and is likely to cause Plaintiffs to suffer
damage to their reputations, associated goodwill, and a loss of money or property.
80. Defendants’ wrongful conduct has caused, and is causing, Plaintiffs’ to suffer
irreparable harm, and unless Defendants are enjoined by the Court, Plaintiffs will suffer future
irreparable harm as a direct result of Defendants’ unlawful activities.
81. Plaintiffs have no adequate remedy at law.
82. Plaintiffs’ pray for all relief the Court determines is appropriate, including but not
limited to injunctive relief.
COUNT FOUR
(Against all Defendants)
PATENT INFRINGEMENT
(35 U.S.C. § 271)
84. Plaintiffs’ original GELISH brand bottles, with their unique translucent window
displaying the color of the gel polish, became famous in the nail products industry.
85. Defendants had actual notice of Plaintiffs’ patent rights as early as April 2012,
and no later than the filing and service of this amended complaint.
86. Defendants willfully engaged in patent infringement to sell counterfeit and
spurious imitations of GELISH brand gel polish, including as depicted in Figure 4.
87. Defendants has infringed and continue to infringe the ‘824 patent by, inter alia,
making, importing, using, offering for sell, and/or selling in the United States, including in the
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State of New Jersey and within this judicial district, products infringing the ornamental design
covered by the ‘824 patent in violation of 35 U.S.C. § 271.
88. Defendants’ counterfeit and spurious products infringe the ‘824 patent because,
inter alia, in the eye of the ordinary observer, giving such attention as a purchaser or end-user of
the product usually gives, they are substantially the same as the patented design, the resemblance
being such as to deceive such an ordinary observer, inducing him to purchase or use the product
supposing it to be authentic GELISH brand product.
89. Defendants’ acts of infringement were undertaking without consent or authority.
90. Defendants’ acts of infringement has damaged and injured Plaintiffs according to
proof at trial. The injury to Plaintiffs is irreparable and will continued unless enjoined.
Therefore, Plaintiffs are also entitled to a permanent injunction.
91. Plaintiffs is entitled to a complete accounting of all revenue and profits from the
sales of the infringing product pursuant to 35 U.S.C. § 289.
92. Because Defendants’ acts of infringement are willful and deliberate, and/or
because of the exceptional nature of the case, Plaintiffs are entitled to treble damages pursuant to
35 U.S.C. § 284 and attorneys’ fees pursuant to 35 U.S.C. § 285.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs demand judgment on all Counts of this Amended Complaint
and entry of an award of monetary and equitable relief against Defendants as follows:
A. That Defendants have engaged in trademark and patent infringement and
unfair competition;
B. That Defendants, their agents, servants, employees, officers, attorneys,
successors, and assigns, including all persons acting in concert or participation with them, be
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enjoined in this and all other Judicial Districts of the United States from: (i) manufacturing,
distributing, selling, offering for sale, holding for sale, or advertising any products, merchandise,
or goods bearing the trademarks, logos, and other indicia of the GELISH mark or any colorable
variation or imitation thereof without first obtaining relief from the Court or Plaintiffs’ express
written consent; (ii) representing that any products, merchandise, or goods manufactured,
distributed, sold, held for sale, or advertised by them is sponsored or authorized by Nail Alliance;
and (iii) utilizing any gel polish bottle with a translucent window similar to the original GELISH
brand bottle without first obtaining relief from the Court or Plaintiffs’ express written consent;
C. That the United States Marshals Service or other Federal law enforcement
officials (such as officers or agents of the United States Customs Service, Secret Service, Federal
Bureau of Investigation, or Post Office) or State or local law enforcement officers, together with
Plaintiffs’ representatives, are hereby authorized to use the reasonable force necessary to seize
and impound at the specified addresses of the Defendants herein or other verified locations when
the order issues: (i) any and all counterfeit and spurious products that Defendants possess or
attempt to advertise, promote, sell, distribute, or hold for sale, whether or not in the process of
manufacture or delivery; (ii) any and all labels, packages, wrappings, receptacles, and advertising
collateral, the use of which in commerce would constitute trademark infringement and violate the
injunction; and/or (iii) any and all evidence of the counterfeiting activity, including but not
limited to financial records, business records, shipping records, purchase orders, invoices,
computers, storage devices, surveillance recordings, and any other evidence of wrongdoing
whether held in electronic or physical format.
D. That Defendants, pursuant to 15 U.S.C. § 1118, and within seven days of
the date of entry of an injunction and notice of the order, deliver up for testing, preservation, or
21
destruction: (i) any and all counterfeit and spurious products that Defendants possess or attempt
to advertise, promote, sell, distribute, or hold for sale, whether or not in the process of
manufacture or delivery; (ii) any and all labels, packages, wrappings, receptacles, and advertising
collateral, the use of which in commerce would constitute trademark infringement and violate the
injunction; and/or (iii) any and all evidence of the counterfeiting activity, including but not
limited to financial records, business records, shipping records, purchase orders, invoices,
computers, storage devices, surveillance recordings, and any other evidence of wrongdoing
whether held in electronic or physical format.
E. That Defendants be required to account for all nail products acquired and
sold in the last two years or any other relevant time period, and pay Plaintiffs for all profits and
damages resulting from Defendants’ infringing and counterfeiting activities, and that the award
to Plaintiffs be trebled; or, at Plaintiffs’ election, that Plaintiffs be awarded statutory damages
from each Defendant in an amount to be proven at trial, or as the Court deems just and proper,
that is no more than the maximum statutory amount allowable per each counterfeit GELISH
mark used and product sold, as provided by 15 U.S.C. § 1117(c)(2) of the Lanham Act.
F. That Defendants be made jointly and severally liable to Plaintiffs, and pay
to Plaintiffs damages as determined at trial, or as the Court deems just and proper.
G. That Defendants pay to Plaintiffs punitive, treble or statutory damages.
H. That Defendants pay to Plaintiffs pre-judgment interest.
I. That Defendants pay to Plaintiffs their costs, reasonable attorneys’ fees,
and investigative fees.
J. Such other and further relief as this Court deems just and proper.
22
DEMAND FOR JURY TRIAL
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiffs demands a jury trial on all
issues triable by a jury.
Dated: March 9, 2021

New York, New York
POLSINELLI PC
By:
Gabriel Levinson, Esq. (NJ ID: 023581998)
Darnell S. Stanislaus, Esq. (pro hac vice to be filed)
600 Third Ave., 42nd Floor
New York, NY 10016
T: (212) 684-0199
F: (212) 684-0197
[email protected]
[email protected]
Todd M. Malynn, Esq. (pro hac vice to be filed)

POLSINELLI LLP
2049 Century Park East
Suite 2900
Los Angeles, CA 90067
T: (310) 556-1801
F: (310) 556-1802
[email protected]
Attorneys for Plaintiffs Nail Alliance, LLC and Nail

Alliance – North America, Inc.
23
CERTIFICATION PURSUANT TO LOCAL RULE 11.2
The undersigned, an attorney duly admitted to practice before this Court, certifies under
penalty of perjury, that the matter in controversy is not the subject of any other action pending in
any court, or of any pending arbitration or administration proceeding.
Dated: March 9, 2021
Gabriel Levinson
24
Case 2:21-cv-03140-CCC-ESK Document 17-1 Filed 03/09/21 Page 1 of 2 PageID: 309
Exhibit 1
Exhibit 2
Exhibit 3
Exhibit 4
Exhibit 5
Exhibit 6

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Case 2:21-cv-03140-CCC-ESK Document 17 Filed 03/09/21 Page 1 of 24 PageID: 285

Attorneys for Plaintiffs Nail Alliance, LLC

UNITED STATES DISTRICT COURT

NAIL ALLIANCE, LLC, a Delaware limited

TTN BEAUTY, an entity of unknown origin,

Defendants 4 to 10 (collectively, “Defendants”):

2. Plaintiff Nail Alliance – North America, Inc. is a corporation duly organized

3. Defendant TTN Beauty (“TTN”) is an entity of unknown origin and/or username;

at 3224 Grand Concourse, #G21, Bronx, NY 10458.

principle place of business is 434 U.S.-46, South Hackensack, NJ 07606.

knowingly undertaking the wrongful acts alleged herein.

6. Defendant Ky M. Nguyen, sued originally as Doe 1, upon information and belief,

impact in New Jersey, and are co-conspirators of the other Defendants.

distribution, and/or sales of counterfeit or other spurious products as suppliers, distributors,

JURISDICTION AND VENUE

Fraud Act, N.J. Stat. Ann. § 56:8-1, et seq.

claims asserted herein under 28 U.S.C. § 1367(a).

exercise personal jurisdiction over each of the Defendants.

Defendants’ counterfeiting activities, which involve a network of counterfeiters and has

Jersey. Defendants are actively engaged in manufacturing, distributing, selling, promoting

unscrupulous counterfeiters, such as Defendants. These counterfeiters, anxious to capitalize on

A. GELISH® BRAND GEL POLISH

quality, range of colors, durability, ease-of-use, consistency and beauty.

invention, consumers generally frequented salons on select occasions for pampering or

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

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

set forth at Exhibits “3” and “4” to this Complaint.

25. After a rash of counterfeiting activity, Plaintiffs upgraded to a more expensive

sold in elegantly adorned and distinctive bottles as illustrated in Figure 1 below.

FIGURE 1: GELISH FOUNDATION, GEL POLISH AND TOP COAT

27. Nail Alliance owns the GELISH marks.

has never abandoned but only built upon these symbols.

meaning as identifiers of high quality nail products.

“famous” as that term is used in 15 U.S.C. § 1125 (c)(1).

the GELISH mark is the subject of federal trademark registrations.

the Defendants in this matter.

B. DEFENDANTS’ COUNTERFEITING ACTIVITIES

36. Defendants are manufacturing, purchasing, promoting, distributing, advertising,

the United States, including in South Hackensack, New Jersey.

37. Defendants have engaged in their counterfeiting conduct despite having

associated therewith in the United States and around the world.

side-by-side. FIGURE 2 illustrates a front view of a genuine GELISH brand foundation

FIGURE 2: FRONT VIEW OF GENUINE GELISH PRODUCT (FOUNDATION) NEXT

FIGURE 3: FRONT VIEW OF GENUINE GELISH PRODUCT (TOP IT OFF) NEXT TO

FIGURE 4: COUNTERFEIT PRODUCT ON DISPLAY WALL

41. Defendants are manufacturing, promoting, distributing, advertising, selling and/or

indistinguishable in appearance from genuine GELISH brand products. Plaintiffs purchased

danger to the health and safety of the consuming public.

Defendants are manufacturing, using, promoting, selling and/or otherwise advertising,

quality genuine GELISH brand products offered for sale by Plaintiffs.

from and are approved and supported by Plaintiffs.

spurious product sold in violation of Plaintiffs’ intellectual property rights.

unless enjoined and restrained, Plaintiffs have no adequate remedy at law.

any such conditions have been waived.

(Against All Defendants)

TRADEMARK INFRINGEMENT AND COUNTERFEITING IN

49. Plaintiffs repeat and re-allege the allegations in paragraphs 1 to 48 above as if

fully set forth herein.

cause mistake, or to deceive.