IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

_
)
THOUSAND OAKS BARREL CO., LLC )
a Virginia limited liability company, )
) Civil Action No.: 1:23-cv-01560
Plaintiff, )
)
v. )
)
THE PARTNERSHIPS, COMPANIES, and )
UNINCORPORATED ASSOCIATIONS )
IDENTIFIED ON SCHEDULE A, )
)
Defendants. )
)

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff Thousand Oaks Barrel Co., LLC (“Thousand Oaks”), by its undersigned counsel,

alleges as follows for its Complaint against Defendants in Schedule “A.”

THE NATURE OF THIS ACTION

1. Thousand Oaks brings this action against Defendants pursuant to 35 U.S.C. §101

et. seq. and §§271, 281, 283, 284, & 285 inclusive, for infringement of the claims of U.S. Design

Patents Nos. D944,594 S (the “’D594 Patent”), and D976,646 S (the “’D646 Patent”) each titled

“Smoker Device” and one or more claims of U.S. Patent No. 11,744,256 B2 (the ’256 Patent”)

titled “Device and method for Imparting Smoked Flavors to Beverages and Foodstuffs”

(collectively the “Patents-in-Suit”). The ’D594, ’D646, and ’256 Patents protect the products of

Plaintiff that are used to add smokey flavors to cocktails and other beverages, and foods. True

and correct copies of the Patents-in-Suit are attached as Exhibits A, B and C.

2. Thousand Oaks also brings this action against Defendants pursuant to 15 U.S.C. §

1
1125(a); Sec. 43(a) of the Lanham Act for federal trade dress infringement.

THE PARTIES

3. Thousand Oaks Barrel Co., LLC is a Virginia Limited Liability Company that

maintains a principal place of business at 9113 Euclid Avenue, Manassas, VA 20110. Plaintiff is

the exclusive licensee of the Patents-in-Suit with the right to enforce their claims.

4. Defendants identified in Schedule “A” are all believed to be individuals,

companies, and unincorporated business associations who, upon information and belief, reside in

both domestic and foreign jurisdictions. Defendants sell Accused Products on Amazon.com,

Ebay.com, Etsy.com, and other online retail platforms. Since Amazon.com and others do not

require the true names and contact information of sellers to be posted publicly, and sellers may

publicly use fictitious names, the public seller names used on online retail stores are unreliable.

The true names, identities, and addresses of Defendants are currently unknown.

5. Defendants conduct their operations through fully interactive commercial

websites hosted on various Amazon.com and other platform storefront webpages (“Infringing

Webstores”). Each Defendant targets consumers in the United States, including the State of

Virginia, and has offered to sell and, on information and belief, has sold and continues to sell

products (“Accused Products”) that practice the claims of the Patents-in-Suit and violate

Plaintiff’s Trade Dress rights to consumers within the United States, including the State of

Virginia and Eastern District of Virginia. For example, the Accused Products may be purchased

by Virginia residents using the Amazon “Prime” online order system and delivered by an

Amazon Prime delivery vehicle in this district.

6. Defendants from outside the United States have the capacity to be sued pursuant

2
to Federal Rule of Civil Procedure 17(b).

7. Through their operation of the Infringing Webstores, Defendants are directly and

personally engaging in the importation, offer for sale, and sale of Accused Products as alleged,

oftentimes as partners and/or suppliers. Upon information and belief, Defendants on

Amazon.com and other platforms may intentionally or otherwise conceal their identities and the

full scope of their infringing operations in an effort to deter Plaintiff from learning Defendants’

true identities and the exact interworking of Defendants’ infringing acts. Once their identities

become known via ordered disclosure, Plaintiff will promptly amend this Complaint to identify

them.

JURISDICTION AND VENUE

8. This is an action for patent infringement arising under the laws of the United

States, 35 U.S.C. §271 et seq. and for federal trade dress infringement arising under the laws of

15 U.S.C. § 1125(a); Sec. 43(a) of the Lanham Act.

9. This Court has subject matter jurisdiction over this action pursuant to 35 U.S.C.

§§271, 281 and 28 U.S.C. §§1331 and 1338(a), federal question, and 28 U.S.C. §1332 diversity

jurisdiction.

10. This Court has personal jurisdiction over U.S. based Defendants in that they

transact business in the State of Virginia and in the Eastern District of Virginia.

11. This Court has Personal jurisdiction over non-U.S. based Defendants because they
have supplied their products into this district and under the Federal Long Arm Rule, FRCP

4(k)(2)

(k)Territorial Limits of Effective Service (2) Federal Claim Outside State-Court Jurisdiction.
For a claim that arises under federal law, serving a summons or filing a waiver of service
establishes personal jurisdiction over a defendant if:
3
(A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and

(B) exercising jurisdiction is consistent with the United States Constitution and laws.

12. Venue is proper in this District pursuant to §§1391(b), 1391(c) and 1400(b) in that

the U.S. based Defendants are entities or individuals subject to personal jurisdiction in this

District. Venue is also proper in this District because a substantial part of the events or omissions

giving rise to the claims occurred in this District and Defendants directly target business

activities towards consumers in the State of Virginia. Defendants are doing business in this

judicial district and have committed acts of infringement in this District.

13. Venue is proper in this Court against non-U.S. based Defendants under 28 U.S.C.

§ 1391 (c)(3) and 28 U.S.C. § 1400(b) based on information set forth herein, which is hereby

repeated and incorporated by reference. For purposes of venue regarding cases against foreign

corporations, general federal statutes are applicable. This Court is a proper venue for a case

against non-U.S. based Defendants in any judicial district in any state to which it is subject to

personal jurisdiction. See Brunette Mach. Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706, 92 S.

Ct. 1936, 32 L. Ed. 2d 428 (1972); See also TC Heartland LLC v. Kraft Foods Grp. Brands LLC,

581 U.S. 258, 137 S. Ct. 1514, 197 L. Ed. 2d 816 (2017) (Declining to expand limitation of

venue statutes related to domestic corporations to foreign corporations).

14. This Court has personal jurisdiction over Defendants and venue is proper pursuant

to Va. Code Ann. § 8.01-328.1 (1950). Personal jurisdiction exists over Defendants because

Defendants have minimum contacts with this forum as a result of business regularly conducted

within the Commonwealth of Virginia and within this district, and, on information and belief,

specifically as a result of, at least, committing the tort of patent infringement within Virginia and

this District. This Court has personal jurisdiction over Defendants, in part, because Defendants

4
do continuous and systematic business in this District, including by providing Accused Products

and services to the residents of the Virginia through fully interactive websites that allow Accused

Products to be purchased by Virginia residents and shipped to addresses in Virginia. Defendants

knew the Accused Products would be used within this District, and have solicited business from

the residents of Virginia using at least the Amazon.com e-commerce platform.

BACKGROUND AND GENERAL ALLEGATIONS

15. Plaintiff is the manufacturer of the FOGHAT product lines, a unique product that

allows professional bartenders and home users alike to add flavor to cocktails and foods via

sources of smoke. Thousand Oaks manufactures, markets, sells and distributes various products

under a trademark for “Foghat Cocktail Smoker,” domestically and internationally, including

within the Eastern District of Virginia (collectively, “Plaintiff’s Products”) that are commercial

embodiments made under exclusively licensed patents identified in Paragraph 1, above.

Defendants have flooded the online market with sales of Accused Products in violation of

Plaintiff’s intellectual property rights and have irreparably damaged, and are continuing to

irreparably damage, Plaintiff.

16. Plaintiff’s Foghat Cocktail Smoker Products are recognized around the world as a

quality product used to add smoke flavor to cocktails and other beverages. As detailed below,

Plaintiff has been selling its products in interstate and foreign commerce, including commerce in

Virginia and the Eastern District of Virginia.

17. Plaintiff maintains quality control standards for all of its products sold under the

Foghat brand. Genuine Plaintiff’s Products are distributed through a network of licensees,

distributors and retailers, via reseller webstores and through Plaintiff’s own website in Virginia,

www.1000oaksbarrel.com. Prior to the flood of Accused Products entering the market, sales of

5
Plaintiff’s Products via legitimate webstores represented a significant portion of Plaintiff’s

business. Plaintiff has expended substantial time, money, and other resources developing,

advertising, and otherwise promoting its products sold under the Patents-in-Suit and the Foghat

Trade Dress.

18. Upon information and belief, many of the Accused Products are manufactured by

factories based in China and sold wholesale either directly or through China-based e-commerce

Internet websites. For example, sellers on Amazon.com purchase Accused Products in bulk from

the factory or the Chinese e-commerce sites to sell on Infringing Webstores. In 2023, Plaintiff’s

chief executive officer has personally met a Chinese factory owner at a convention in Chicago,

IL, who was offering for sale products at wholesale that were manufactured at the factory in

China that would fall under the claims of the Patents-in-Suit, and violate Plaintiff’s trade dress

rights.

19. On March 1, 2022, United States Patent No. D944,594, entitled “Smoker Device”

was duly and legally issued by the United States Patent and Trademark Office (“USPTO”). The

’D594 Patent claims patent-eligible subject matter and is valid and enforceable. Soak Limited,

London, Great Britain, is the exclusive owner by assignment. Plaintiff is the exclusive licensee

of the ’D594 Patent including the right to bring this suit for injunction and damages, and

including the right to sue and recover all past, present, and future damages for infringement of

the ’D594 Patent. Defendants are not licensed to the ’D594 Patent, either expressly or implicitly,

nor do they enjoy or benefit from any rights in or to the ’D594 Patent whatsoever. A true and

correct copy of the ’D594 Patent is attached hereto as Exhibit A.

20. On January 31, 2023, United States Patent No. D976,646, entitled “Smoker

Device” was duly and legally issued by the USPTO. The ’D646 Patent claims patent-eligible

6
subject matter and is valid and enforceable. Soak Limited, London, Great Britain, is the

exclusive owner by assignment. Plaintiff is the exclusive licensee of the ’D646 Patent including

the right to bring this suit for injunction and damages, and including the right to sue and recover

all past, present, and future damages for infringement of the ’D646 Patent. Defendants are not

licensed to the ’D646 Patent, either expressly or implicitly, nor do they enjoy or benefit from any

rights in or to the ’D646 Patent whatsoever. A true and correct copy of the ’D646 Patent is

attached hereto as Exhibit B.

21. On September 5, 2023, United States Patent No. 11,744,256, entitled “Device and

Method for Imparting Smoked Flavors to Beverages and Foodstuffs” was duly and legally issued

by the USPTO. The ’256 Patent claims patent-eligible subject matter and is valid and

enforceable. Soak Limited, London, Great Britain, is the exclusive owner by assignment.

Plaintiff is the exclusive licensee of the ’256 Patent including the right to bring this suit for

injunction and damages, and including the right to sue and recover all past, present, and future

damages for infringement of the ’256 Patent. Defendants are not licensed to the ’256 Patent,

either expressly or implicitly, nor do they enjoy or benefit from any rights in or to the ’256

Patent whatsoever. A true and correct copy of the ’256 Patent is attached hereto as Exhibit C.

22. The Patents-in-Suit are presumed valid under 35 U.S.C. § 282.

THE PATENTS

23. The claim of the ’D594 is directed to the ornamental aspects of a smoker device.

The ’D594 contains a single claim shown in multiple drawings. Figure 5 illustrates the claimed

device:

7
 24. The claim of the ’D646 Patent is directed to the ornamental aspects of a smoker

device. The ’D646 Patent contains a single claim shown in multiple drawings. Figure 5

illustrates the claimed device:

8
 25. The claims of the ’256 Patent are directed to “a device for imparting smoked

flavors to beverages and foodstuffs.” The ’256 Patent contains nineteen claims directed to the

device, where claims 1, 9, and 10 are independent claims. Claim 1 of the ’256 Patent recites:

1. A device for imparting smoked flavors to beverages and foodstuffs,

comprising:
a base having a fuel chamber portion at its upper end and
a conduit portion at its lower end, the fuel chamber portion comprising an
upper wall portion defining a perimeter edge of the fuel chamber portion and a
floor defining a bottom end, the floor extending from the upper wall portion to an
opening in the floor,
wherein the fuel chamber portion is oriented to hold fuel, and
wherein the conduit portion is disposed below the floor and comprises a
channel through the conduit portion so that, when the fuel in the fuel chamber
portion is ignited, the channel facilitates flow of smoke down-ward from the fuel
chamber portion through at least one aperture that extends from the channel space
through a wall of the conduit portion.

9
 INFRINGEMENT

26. Defendants manufacture, import, offer to sell, and sell various smoker devices for

imparting smoked flavors to cocktail beverages and foods. These devices are sold on the

Amazon.com platform and other Internet platforms using Infringing Webstores.

27. Doe Defendants 1-50 in Schedule “A” have, under 35 U.S.C. §271(a), directly

infringed, and continue to directly infringe, literally and/or under the doctrine of equivalents, the

claims of the ’D594 and ’D646 Patents, and one or more claims of the ’256 Patent by making,

using, testing, selling, offering for sale and/or importing into the United States the Accused

Products.

28. Defendants also indirectly infringe the ’D594 and ’D646 Patents by actively

inducing the direct infringement by third parties under 35 U.S.C. §271(b). Defendant has

knowingly and intentionally actively aided, abetted and induced others to directly infringe at

least one claim of the ’256 Patent, including their customers throughout the United States.

Defendants continue to induce infringement of the ’256 Patent.

29. Plaintiff has conducted a detailed analysis, establishing and confirming that

Defendants’ Accused Products directly infringe claims of the ’256 Patent.

30. Attached as Exhibit D to the Complaint is a claim chart demonstrating the

correspondence of the operation of the accused products with elements of claim 1 of the ’256

Patent.

31. Defendants and their customers have continued infringement.

32. The Accused Products satisfy the elements of the asserted claims of the Patents-

in-Suit. An exemplary Accused Product from Defendant Doe#19 (ASIN B0BQBW54M7) is

shown below with reference to claim 1 of the ’256 Patent:

10
11
12
13
 33. The Accused Products satisfy the elements of the asserted claim of the ’D594

Patent. An exemplary Accused Product from Defendant Doe#19 is shown below with reference

to claim 1:

14
 ’D594 Figure 5 Doe #19 Accused Product

34. The Accused Products satisfy the elements of the asserted claim of the ’D646

Patent. An exemplary Accused Product from Defendant Doe#19 is shown below with reference

to claim 1.

15
’D646 Figure 5 Doe #19 Accused Product

35. Plaintiff is the exclusive licensee of the Patents-in-Suit with the right to enforce

the Patents-in-Suit.

36. Defendants have infringed, and continue to infringe, at least claims 1 - 19 of the

’256 Patent, claim 1 of the ’D594, and claim 1 of the ’D646, under 35 U.S.C. § 271(a) and/or (b),

by (a) making, using, offering to sell, selling and/or importing into the United States, devices for

imparting smoked flavors to beverages and foodstuffs, that infringe the asserted claims in the

United States, or (b) by inducing others to use the Accused Products and/or sell the Accused

Products in the United States. Defendants continue to manufacture, use, offer to sell, sell and

import Accused Products. The Accused Products are also being used to infringe. Defendants

continue to sell Accused Products inducing infringement by others and also continue to perform

16
infringing activity by using the claimed devices in the United States.

37. The Accused Products are infringing devices and thus directly infringe ’256

Patent claims 1 – 19, ’D594 claim 1, and ’D646 claim 1. The devices include a base having a

fuel chamber portion and conduit portion with a channel to an aperture, where when the fuel in

the fuel chamber portion is ignited, the channel facilitates flow of smoke downward from the fuel

chamber portion through the aperture and thus directly, and indirectly by inducement, infringe

claims 1-19 of the ’256 Patent. The devices directly infringe the ornamental aspects of the

devices in claim 1 of each of the ’D594 and ’D646 Patents.

38. The ’256 Patent is also infringed under 35 USC § 271(a) when an accused product

is "used" by Defendant to impart smoked flavors to beverages and foodstuffs; the ’256 Patent is

infringed under 35 USC § 271(b) when Defendants "induce" others to use the Accused Products

to impart smoked flavors to beverages and foodstuffs.

39. Upon information and belief, Defendant has directly infringed one or more of

claims of the ’256, ’D594, and ’D646 Patents under 35 USC §271(a):

"(a) Except as otherwise provided in this title, whoever without authority

makes, uses, offers to sell, or sells any patented invention, within the United
States or imports into the United States any patented invention during the term
of the patent therefor, infringes the patent.

by engaging in accused activity including making, using, offering to sell, selling and importing

Accused Products in the United States. Defendants continue to infringe claims of the ’256,

’D594, and ’D646 Patents.

40. Upon information and belief, Defendants have indirectly infringed one or more of

the claims of the ’256 Patent under 35 USC §271(b):

(b) Whoever actively induces infringement of a patent shall be liable as an

17
 infringer by providing accused products, with instructions, which are used for

imparting smoked flavors to beverages and foodstuffs, thereby inducing others to

use the Accused Products.

41. Defendants do not have a license or authority to use the ’256 Patent.

42. Plaintiff has marked its smoker device products with notices of the ’256 Patent,

the ’D594 Patent, and the ’D646 Patent. Upon information and belief, Defendants have no good

faith defense to Plaintiff's infringement allegations.

43. As a result of Defendants’ infringement of the ’256 Patent, Plaintiff has suffered

and will continue to suffer damages in an amount not yet determined, of at least a reasonable

royalty.

44. As a result of Defendants’ infringement of the ’D594 and the ’D646 Patents,

Plaintiff has suffered and will continue to suffer damages in an amount not yet determined, of at

least Defendants’ total profits under 35 U.S.C. § 289.

45. Defendants, without authorization or license from Plaintiff, continue to infringe

the claims of the Patents-in-Suit in connection with the advertisement, offer for sale, and sale of

the Accused Products, through, inter alia, the Internet. Each Infringing Webstore offers shipping

to the United States, including Virginia, and, on information and belief, each Defendant has sold

Accused Products into the United States, including Virginia. The Defendants are continuing to

offer to sell and sell Accused Products at least via Amazon.com.

46. Defendants have been willfully infringing the Patents-in-Suit since at least as

early as they became aware of the Patents-in-Suit. Upon information and belief, Defendants have

no good faith defense to Plaintiff's infringement allegations and have refused to cease selling

products or to engage in further attempts to reach a business resolution. Instead, Defendants have
18
intentionally continued their knowing infringement.

47. Many sellers on Amazon.com go to great lengths to conceal their true identities

and often use multiple fictitious names and addresses to register and operate the Infringing

Webstores. Upon information and belief, Defendants regularly create new Webstores on the

Amazon.com platform using the identities listed in Schedule “A” to the Complaint, as well as

other unknown fictitious names and addresses. Such registration patterns are one of many

common tactics used by the Defendants to conceal their identities and the full scope and

interworking of their operations and to prevent the Infringing Webstores from being disabled.

48. Upon information and belief, Defendants will continue to register or acquire

listings for the purpose of selling Accused Products that infringe upon the Patents-in-Suit unless

preliminarily and permanently enjoined.

49. Plaintiff has no adequate remedy at law.

THE TRADE DRESS

50. Thousand Oaks’ Foghat smoker devices packaged with wood chips and a torch

bearing the Foghat Trade Dress have come to be known by the purchasing public throughout the

United States as products of the highest quality. As a result, the Foghat Trade Dress, together

with the goodwill associated with it, are of inestimable value to Thousand Oaks.

51. The Foghat trade dress is non-functional, and inherently distinctive, or has

acquired secondary meaning, and serves to identify and indicate the source of Plaintiff’s goods to

the consuming public. Through Thousand Oaks’ extensive use and promotion of the Foghat

Trade Dress, Thousand Oaks distinguishes its products from the products of other businesses and

source and origin of Thousand Oaks’ products. Member of the public have become familiar with

Thousand Oaks’ Foghat Trade Dress, and have come to recognize and associate it exclusively

19
with Thousand Oaks. Thousand Oaks has acquired a valuable reputation and goodwill among the

public as a result of such association.

52. Since its first advertisement, offer, and sale of the Foghat product in or around

November 2020, Thousand Oaks has continuously used the Foghat trade dress, which Thousand

Oaks has prominently displayed and used in advertising and marketing of its products in print

advertising and brochures, on multiple e-commerce websites on the Internet, and other

promotional and trade show marketing materials.

53. Thousand Oaks’ Foghat product line has been a huge commercial success, selling

tens of thousands of products directly or through authorized resellers nationwide. The

commercial success of the product line has resulted in widespread recognition of Thousand Oaks

as the source of the Foghat Trade Dress.

54. The Thousand Oaks Foghat Trade Dress comprises packaging of a smoker

device, storage tin with wood chips, and optionally a torch set up in a unique and attractive

configuration. One example of the Foghat Drade Dress from Amazon is shown below:

20
 55. Competitors to Thousand Oaks and/or sellers on Infringing Webstores, namely

Amazom.com, have, without authorization, unlawfully directly and deliberately copied the

Foghat Trade Dress in interstate commerce, thereby reinforcing the recognized commercial

success and secondary meaning of the Foghat Trade Dress. As one example, an Amazon seller’s

Infringing Webstore, copying the Foghat Trade Dress, is shown below for Defendant

Doe#4:

21
 56. Upon information and belief, Defendants will continue to register or acquire

listings for the purpose of selling Accused Products that infringe upon the Foghat Trade Dress

unless preliminarily and permanently enjoined.

57. Plaintiff has no adequate remedy at law.

22
 COUNT ONE
INFRINGEMENT OF UNITED STATES DESIGN PATENT D944,594
(35 U.S.C. § 271)

58. The allegations of each of the paragraphs above are hereby re-alleged and

incorporated herein by reference.

59. Defendants have infringed, and continue to directly infringe, claim 1 of the ’D594

Patent under 35 U.S.C. § 271(a), by making, using, offering to sell, selling and importing the

Accused Products in the United States.

60. Defendants have infringed, and continue to indirectly infringe, claim 1 of the

’D594 Patent under 35 U.S.C. § 271(b) by inducing other to directly infringe the ’D594 Patent.

61. Defendants do not have a license or authority to use the ’D594 Patent.

62. As a result of Defendants’ infringement of the ’D594 Patent, Plaintiff has suffered

and will continue to suffer damages in an amount not yet determined, of at least total profits

under 35 U.S.C. § 289.

63. Defendants will continue to register or acquire listings for the purpose of selling

Accused Products that infringe upon the ’D594 Patent unless preliminarily and permanently

enjoined.

64. The Defendants have infringed the ’D594 Patent through the aforesaid acts and

will continue to do so unless enjoined by this Court. Defendants’ wrongful conduct have caused

Plaintiff to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude

others from making, using, selling, offering for sale, and importing the patented invention.

Plaintiff is entitled to injunctive relief pursuant to 35 U.S.C. § 283.

23
 COUNT TWO
INFRINGEMENT OF UNITED STATES DESIGN PATENT D976,646
(35 U.S.C. § 271)

65. The allegations of each of the paragraphs above are hereby re-alleged and

incorporated herein by reference.

66. Defendants have infringed, and continue to directly infringe, claim 1 of the ’D646

Patent under 35 U.S.C. § 271(a), by making, using, offering to sell, selling and importing the

Accused Products in the United States.

67. Defendants have infringed, and continue to indirectly infringe, claim 1 of the

’D646 Patent under 35 U.S.C. § 271(b) by inducing other to directly infringe the ’D646 Patent.

68. Defendants do not have a license or authority to use the ’D646 Patent.

69. As a result of Defendants’ infringement of the ’D646 Patent, Plaintiff has suffered

and will continue to suffer damages in an amount not yet determined, of at least total profits

under 35 U.S.C. § 289.

70. Defendants will continue to register or acquire listings for the purpose of selling

Accused Products that infringe upon the ’D646 Patent unless preliminarily and permanently

enjoined.

71. The Defendants have infringed the ’D646 Patent through the aforesaid acts and

will continue to do so unless enjoined by this Court. Defendants’ wrongful conduct have caused

Plaintiff to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude

others from making, using, selling, offering for sale, and importing the patented invention.

Plaintiff is entitled to injunctive relief pursuant to 35 U.S.C. § 283.

24
 COUNT THREE
INFRINGEMENT OF UNITED STATES Patent No. 11,744,256
(35 U.S.C. § 271)

72. The allegations of each of the paragraphs above are hereby re-alleged and

incorporated herein by reference.

73. Defendants have infringed, and continue to directly infringe, at least claims 1-19

of the ’256 Patent under 35 U.S.C. § 271(a), by making, using, offering to sell, selling and

importing the Accused Products in the United States.

74. Upon information and belief, Defendants have indirectly infringed one or more of

the claims of the ’256 Patent under 35 USC §271(b) by providing Accused Products, with

instructions, which are used to impart smoky flavors to beverages and foodstuffs, thereby

inducing others to use the Accused Products in an infringing manner.

75. As a result of Defendants’ infringement of the ’256 Patent, Plaintiff has suffered

and will continue to suffer damages in an amount not yet determined, of at least a reasonable

royalty.

76. Defendants will continue to register or acquire listings for the purpose of selling

Accused Products that infringe upon the ’256 Patent unless preliminarily and permanently

enjoined.

77. The Defendants have infringed the ’256 Patent through the aforesaid acts and will

continue to do so unless enjoined by this Court. Defendants’ wrongful conduct have caused

Plaintiff to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude

others from making, using, selling, offering for sale, and importing the patented invention.

25
Plaintiff is entitled to injunctive relief pursuant to 35 U.S.C. § 283.

COUNT FOUR
FEDERAL TRADE DRESS INFRINGEMENT
(15 U.S.C. § 1125(a); Sec. 43(a) of the Lanham Act)

78. The allegations of each of the paragraphs above are hereby re-alleged and

incorporated herein by reference.

79. Thousand Oaks owns the rights to the trade dress for the Foghat product

packaging and has standing to maintain an action for trademark infringement under the

Trademark Statute 15 U.S.C. § 1114.

80. Thousand Oaks has continuously used its Foghat Trade Dress in Virginia

commerce and interstate commerce since its first dates of use, since at least November 2020, and

before the formation and sale of the Defendants’ Accused Products and Infringing Webstores.

81. The Foghat Trade Dress is distinctive and/or at least has acquired secondary

meaning.

82. Defendants are and at the time of their actions complained of herein were actually

aware that Thousand Oaks is the creator, user, and owner of the Foghat Trade Dress.

83. Defendants intentionally and knowingly used in commerce the Foghat Trade

Dress, by offering, advertising, promoting, retailing, selling, and distributing similar or the same

products, albeit knock-off products, with or using the Foghat Trade Dress, knowing such acts

would create a likelihood of confusion among consumers and others, and caused such goods to

enter into interstate commerce.

84. Defendants directly and intentionally reproduced, copied, and/or colorably

imitated the Foghat Trade Dress and applied such reproductions, copies, or colorable imitations

26
to labels, signs, prints, packages, website pages, products, and/or advertisements intended to be

used in commerce upon or in connection with the sale, offering for sale, distribution, and/or

advertising of Defendants’ goods.

85. The Defendants’ unauthorized use of the Foghat Trade Dress infringes on

Thousand Oaks’ rights in its Trade Dress and has and will continue to have the effect of causing

confusion, initial interest confusion, reverse confusion, mistake, or deception as to the source and

origin of Defendants’ products to deceive the public by passing off Defendants’ products as

being manufactured, sponsored, or otherwise approved by or connected with Thousand Oaks.

86. Defendants did not and failed to obtain the consent or authorization of Thousand

Oaks as the owner of the Foghat Trade Dress to deal in and commercially distribute market and

sell products bearing the Foghat Trade Dress, or use the Foghat trade dress in confusingly similar

manners, in commerce.

87. Thousand Oaks’ use of the Foghat Trade Dress was well before the first offer for

sale of the Defendants’ products.

88. The Defendants’ egregious and intentional use and/or sale of items bearing or

using trade dress confusingly similar to the Foghat Trade Dress is likely to cause confusion, or to

cause mistake, or to deceive, mislead, betray, and defraud customers who believe that

Defendants’ items are authentic products manufactured by Thousand Oaks.

89. The Defendants’ acts have been committed with knowledge of Thousand Oaks’

exclusive rights and goodwill in its Trade Dress, as well as with bad faith and the intent to cause

confusion or to cause mistake and to deceive.

90. The Defendants’ acts have caused Thousand Oaks to lose control over the

reputation and goodwill associated with the Foghat Trade Dress. The Defendants’ acts have

27
damaged Thousand Oaks’ business reputation and have impaired, blurred, and tarnished

Thousand Oaks’ goodwill in the Foghat Trade Dress.

91. Thousand Oaks has suffered damages and the Defendants have obtained profits

and/or unjust enrichment as a result of the Defendants’ wrongful conduct.

92. Thousand Oaks has suffered and will continue to suffer substantial and irreparable

injury, loss and damage to its rights in and to the Foghat Trade Dress and the goodwill associated

therewith, for which it has no adequate remedy at law; thus Thousand Oaks requests injunctive

relief.

93. The Defendants’ continued and knowing use of the Foghat Trade Dress without

Thousand Oaks’ consent or authorization constitutes intentional infringement of Thousand Oaks’

Trade Dress in violation of §32 of the Lanham Act, 15 U.S.C. § 1114. Based on the intentional

infringement and the Defendants’ acts described above, Thousand Oaks is entitled to injunctive

relief as well as monetary damages, and other remedies provided by §§ 1116, 1117, and 1118,

including the Defendants’ profits, treble damages, prejudgment interest, and attorney’s fees.

94. The balance of hardships favors Thousand Oaks.

95. Preventing use by Defendants of the Foghat Trade Dress is in the public interest.

PRAYER FOR RELIEF

A. For a judgment declaring that Defendants have infringed the ’D594 Patent;

B. For a judgment declaring that Defendants’ infringement of the ’D594 Patent has been

willful;

C. For a judgment declaring that Defendants have infringed the ’D646 Patent;

D. For a judgment declaring that Defendants’ infringement of the ’D646 Patent has been

willful;

28
E. For a judgment declaring that Defendants have infringed the ’256 Patent;

F. For a judgment declaring that Defendants’ infringement of the ’256 Patent has been

willful;

G. For a grant of a preliminary and permanent injunction pursuant to 35 U.S.C. §283,

enjoining the Defendant from further acts of infringement;

H. For a judgment awarding Plaintiff compensatory damages as a result of Defendants’

infringement sufficient to reasonably and entirely compensate Plaintiff for

infringement of the ’D594, ’D646 and ’256 Patents in an amount to be determined at

trial;

I. For a judgment and order awarding Defendants’ profits under 35 U.S.C. § 289;

J. For a judgment and order awarding a compulsory ongoing royalty;

K. For a judgment declaring that Defendant's infringement was willful and for

enhancement of damages in accordance with 35 U.S.C. § 284;

L. For a judgement that Defendants violated Plaintiff’s Trade Dress.

M. That Defendants, their officers, agents, servants, employees, attorneys, confederates,

and all persons in active concert with them be temporarily, preliminarily, and

permanently enjoined and restrained from:

(i) using the Plaintiff’s Trade Dress or products made under the or Patents-in-

Suit, or any reproduction, counterfeit, copy, or colorable imitation of the

Plaintiff’s Trade Dress or products under the Patents-in-Suit in connection

with the distribution, advertising, offer for sale, and/or sale of merchandise

not the genuine products of the Plaintiff;

29
 (ii) passing off, inducing, or enabling others to sell or pass off any Counterfeit

Products as genuine products made and/or sold by the Plaintiff;

(iii) committing any acts calculated to cause consumers to believe that

Defendants’ Products are those sold under the authorization, control, or

supervision of Plaintiff, or are sponsored by, approved by, or otherwise

connected with Plaintiff;

(iv) further infringing the Plaintiff's Patents-in-Suit or Trade Dress and

damaging Plaintiff’s goodwill;

(v) competing unfairly with Plaintiff in any manner;

(vi) shipping, delivering, holding for sale, distributing, returning, transferring

or otherwise moving, storing, or disposing of in any manner products or

inventory not manufactured by or for Plaintiff, nor authorized by Plaintiff

to be sold or offered for sale, and that bear the Designs or Marks or any

reproductions, counterfeit copies, or colorable imitations thereof;

(vii) using, linking to, transferring, selling, exercising control over, or

otherwise owning or operating the Infringing Webstores, listings, or any

other domain name that is being used to sell or is the means by which

Defendants could continue to sell Products violating Thousand Oaks’

Trade Dress or infringing the Patents-in-Suit;

N. That Defendants, within ten days after service of judgment with notice of entry

thereof upon them, be required to file with the Court and serve upon the Plaintiff a

30
 written report under oath setting forth in detail the manner in which Defendants have

complied with any and all injunctive relief ordered by this Court.

O. Entry of an order that, upon Plaintiff’s request, those in privity with Defendants and

those with notice of the injunction, including any Internet search engines, Webstore

hosts or their administrators that are provided with notice of the injunction, cease

facilitating access to any or all webstores through which Defendants engage in the

sale of Defendants’ infringing Products using the Foghat Trade Dress and Patents-in-

Suit.

P. That Defendants’ account for and pay over to Plaintiff any and all profits realized by

Defendants by reason of Defendants’ unlawful acts herein alleged, and that the

amount of damages for infringement of the Mark be increased by a sum not

exceeding three times the amount thereof as provided by law as provided by 35 U.S.C.

§ 284 and/or 15 U.S.C. § 1117.

Q. In the alternative, that Plaintiff be awarded all profits realized by Defendants from

Defendants’ infringement of the Design Patents in suit pursuant to 35 U.S.C. § 289;

and that Plaintiff be awarded statutory damages of One Hundred Thousand Dollars

(U.S.) and No Cents ($100,000.00) for each and every use of the Plaintiff's Trade

Dress counterfeited by each Defendant.

R. That Plaintiff be awarded its reasonable attorneys’ fees and costs; and

S. For such other relief to which Plaintiff is entitled under the applicable United States

laws and regulations or as this Court deems just and proper.

DEMAND FOR JURY TRIAL

31
 Pursuant to the Federal Rules of Civil Procedure Rule 38(b), Plaintiff hereby demands

trial by jury as to all claims in this litigation.

Respectfully submitted,
WHITESTONE LAW PLLC
by Counsel

__/s/__Kendal M. Sheets
By: Ken Sheets
Virginia bar number 44537
WHITESTONE LAW
1850 Towers Crescent Plaza, #550
Tysons, Virginia 22182
Phone: 703-489-8937
Fax: (703) 890-9418
[email protected]
[email protected]
Attorney for Thousand Oaks Barrel
Co., LLC

32