IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

Ouyeinc Ltd.,

Plaintiff,

v.

Alucy, et al.,

Defendants.

MOVING DEFENDANTS’ RESPONSE IN OPPOSITION TO 

PLAINTIFF’S MOTION FOR ENTRY OF A PRELIMINARY INJUNCTION

The Defendants listed below (collectively, the “Moving Defendants”),1 by and through 

their undersigned counsel, respectfully submit this response in opposition to Plaintiff’s Motion for 

Entry of a Preliminary Injunction (the “Plaintiff’s Motion”) [D.E. 34], and state:

LEGAL STANDARD

“[A] preliminary injunction is an extraordinary and drastic remedy, one that should not be 

granted unless the movant, by a clear showing, carries the burden of persuasion.” Goodman v. 

Illinois Dep’t of Fin. & Prof’l Regulation, 430 F.3d 432, 437 (7th Cir. 2005) (quoting Mazurek v. 

Armstrong, 520 U.S. 968, 972 (1997) (emphasis in original)). The party seeking such relief must 

show that: 1) it has some likelihood of success on the merits; 2) it has no adequate remedy at law; 

and, 3) without relief it will suffer irreparable harm. Planned Parenthood of Ind. and Ky, Inc. v. 

1 The fifteen Moving Defendants are: 2buy2u, annannlee, baoanwang20068, Beautiful nail store, 

esellerchina2010, etesco_mall, ETTG-US, fonesocom, muchmoresale, prettygoodshopss, reshifen-0, 

sellerfoneso, TEEROVA, uforeverk, and yallshop. Although not joining in the instant request for relief, 

Defendants Boshen, cedar_77, forskincare, homehub_supplies, laserbeautyworld, LIDDYGO, mei_ebuy, 

MsBeauté, mychway, mychway_au, mychway_us, mygirlbeauty, POMOLO, and uulaser respectfully 

preserve their right to assert future challenges to injunctive relief sought or obtained by the Plaintiff.

Case No. 1:20-cv-03490

Judge Robert W. Gettleman

Magistrate Judge Maria Valdez

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Comm’r of Ind. State Dep’t of Health, 896 F.3d 809, 816 (7th Cir. 2018). If the movant meets 

these requirements, the Court must then weigh, using a sliding scale, the harm the movant will 

suffer without an injunction against the harm the non-movant will suffer if an injunction is issued.

The more likely the movant is to win, the less heavily need the balance of harm weigh in 

its favor; conversely, the less likely the movant is to win, the more the balance must weigh in its 

favor. Judge v. Quinn, 612 F.3d 537, 546 (7th Cir. 2010). Finally, the Court must also determine 

whether the injunction is in the public interest, considering any effects on non-parties. Courthouse 

News Serv. v. Brown, 908 F.3d 1063, 1068 (7th Cir. 2018). Such injunctive relief is “never 

awarded as of right,” and the Court “must balance the competing claims of injury and must 

consider the effect on each party.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008).

ARGUMENT

The Court should deny Plaintiff’s Motion because (i) Plaintiff is not reasonably likely to 

succeed on the merits, (ii) Plaintiff will not suffer irreparable harm, and (iii) the balance of harms 

significantly weighs in Defendants’ favor.

I. PLAINTIFF IS NOT REASONABLY LIKELY TO SUCCEED ON THE MERITS.

Before factoring the weight of irreparable harm into the sliding scale, the Plaintiff must 

first show that it has a reasonable chance of success on the merits. See Kastanis v. Eggstacy LLC, 

752 F. Supp. 2d 842, 847 (N.D. Ill. 2010) (citing Girl Scouts of Manitou Council Inc. v. Girl Scouts 

of the United States of America Inc., 549 F.3d 1079, 1085 (7th Cir. 2008)). To establish a 

likelihood of success for its trademark infringement, false designation of origin, and state law 

deceptive trade practices claims, the plaintiff must establish ownership of valid and enforceable 

marks, as well as a likelihood of confusion arising from the defendants’ unauthorized use of the 

plaintiff’s marks as a source identifier. See Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 

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2015); see also Tsiolis v. Interscope Records, Inc., 946 F. Supp. 1344, 1351 (N.D. Ill. 1996). 

Importantly, “[i]f it is plain that the party seeking the has no case on the merits, the injunction 

should be refused regardless of the balance of harms.” Mil-Mar Shoe Co., Inc. v. Shonac Corp., 

75 F.3d 1153, 1156 & 1162 (7th Cir. 1996) (reversing the district court’s granting of preliminary 

injunction after concluding the plaintiff had “no probability of success on the merits”).

A. Multiple Moving Defendants Sold No Allegedly Infringing Product After The 

Date of Trademark Registration for “PRO-WAX100” on April 14, 2020.

Moving Defendants agree that Plaintiff needs to establish only a prima facie case of 

infringement. See ll. Council on Long Term Care v. Bradley, 957 F.2d 305, 310 (7th Cir. 1992). 

Plaintiff’s complaint pleads separate counts for trademark infringement and false designation of 

origin under the Lanham Act, and violation of the Illinois Deceptive Trade Practices Act

(“IDTPA”). See Compl. at ¶¶ 33-47. “The standards for proving liability are the same under all 

these claims.” Caster Connection, Inc. v. Colson Group Holdings, LLC, No. 20-CIV-1598, 

Memorandum Opinion and Order Denying Motion for a Preliminary Injunction [D.E. 41] at 6 

(May 27, 2020) (Gettleman, J.).

Here, however, Plaintiff’s chances of prevailing on the claims being asserted against the 

following twelve Moving Defendants are less than negligible, because these Defendants have sold 

no allegedly infringing product since April 14, 2020, the date the “PRO-WAX100” trademarks at 

issue (Reg. No. 6,033,871, 6,033,730, and 6,033,750) were registered. See Compl. at ¶ 7. 

1 2buy2u

2 annannlee

3 baoanwang20068

4 Beautiful nail store

5 esellerchina2010

6 etesco_mall

7 fonesocom

8 muchmoresale

9 prettygoodshopss

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10 sellerfonesco

11 uforeverk

12 Yallshop

Pre-registration sales cannot give rise to liability under these claims, as “Plaintiff is unable 

to allege direct infringement of its registered mark because there can be no liability based on 

retroactive registration of a trademark.” Sly Magazine, LLC v. Weider Publ’ns LLC, 241 F.R.D. 

527, 530 (S.D.N.Y. 2007); see also Reliable Tire Distrib., Inc. v. Kelly Springfield Tire Co., 592 

F. Supp. 127, 136 (E.D. Pa. 1984) (holding that the plaintiff could not recover damages because 

“[a] registrant cannot recover damages or lost profits prior to the date of registration of the mark.”)

(citations omitted); Ross v. Target Corp., CV071147ODWPLAX, 2008 WL 11336378, at *4 (C.D. 

Cal. July 7, 2008) (“Because the claimed infringement took place prior to [the Plaintiff’s]

registration, [Plaintiff] is unable to pursue a claim for infringement of a registered mark.”).

B. Serious Jurisdictional Questions Exist.

2

This leaves only three Defendants (1) ETTG-US, (2) reshifen-0, and (3) TEEROVA, who 

have conducted any post-registration sales whatsoever. After the registration date, two of these

Defendants made a combined 11 sales to Illinois (8 by ETTG-US and 3 by TEEROVA), while 

reshifen-0 made no sale to anywhere in the United States, much less to Illinois. Although prices 

regularly fluctuate, based on an approximate average of unit prices, ETTG-US sold the product at 

around $27.00 per unit, while TEEROVA sold at around $25.99 per unit. Accordingly, revenue 

2 Likewise, serious questions also exist with respect to the existence of subject matter jurisdiction,

the appropriateness of joinder, as well as the propriety of any purported service of process under the 

mandatory Hague Service Convention. See Hague Convention on the Service Abroad of Judicial and 

Extrajudicial Documents in Civil and Commercial Matters, Nov. 15, 1965, 20 U.S.T. 361, T.I.A.S. No. 

6638; see also Luxottica Group S.p.A. v. Partnerships and Unincorporated Associations Identified on 

Schedule “A”, 391 F. Supp. 3d 816, 820 (N.D. Ill. 2019); Anova Applied Elecs., Inc. v. Hong King Group, 

Ltd., No. CV-17-12291-FDS, 2020 WL 419518, at *1 (D. Mass. Jan. 24, 2020). These issues all cut against 

Plaintiff’s likelihood of success on the merits. Defendants will elaborate on these and other defenses, as 

well as on more discrete jurisdictional issues, in a future motion addressing the amended complaint.

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generated from sales of the allegedly infringing product is approximately $216.00 for ETTG-US, 

$77.97 for TERROVA, and $0.00 for reshifen-0 and the twelve Moving Defendants listed above.

All of the Moving Defendants are based in the People’s Republic of China (“China”). It is 

well-established that the mere operation of an e-commerce store that can be accessed by consumers 

in Illinois does not constitute minimum contacts “aimed” at Illinois for the purposes of personal 

jurisdiction. See Advanced Tactical Ordnance Systems, LLC v. Real Action Paintball, Inc., 751 

F.3d 796 (7th Cir. 2014). Indeed, “offering [products] for sale on the internet, without more, [does 

not] demonstrate[] that defendant purposefully directed its activities . . . toward customers in 

Illinois.” Richter v. INSTAR Enterprises Int’l, Inc., 594 F. Supp. 2d 1000, 1013 (N.D. Ill. 2009). 

For all Moving Defendants other than ETTG-US and TEEROVA, without an actual sale of an 

allegedly infringing product to consumers in Illinois, the maintenance of an e-commerce store that 

simply has the potential of shipping products to Illinois consumers only establishes “potential 

contacts” insufficient for jurisdiction. Id. “[C]ourts [with the Seventh Circuit] have similarly held 

that ‘the mere existence of a website that makes an infringing product available for purchase is not 

enough to establish personal jurisdiction.’” Id. at 1014.

Even in cases where a defendant does make actual sales of an allegedly infringing product, 

as with ETTG-US and TEEROVA, such sales alone are not necessarily sufficient to establish 

minimum contacts with the forum state. See Matlin v. Spin Master Corp., No. 17 C 07706, 2018 

WL 3496088, at *4 (N.D. Ill. Jul. 20, 2018), aff’d, 921 F.3d 701, 2019 WL 1760387 (7th Cir. 2019) 

(“[T]he common thread between all courts addressing whether defendants are subject to personal 

jurisdiction in Illinois for having a website that Illinois residents can access to purchase products 

is that the mere internet sale from a website is insufficient to hale a defendant into the forum’s 

jurisdiction without something more.”); see also Original Creations Inc. v. Ready American Inc., 

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836 F. Supp. 2d 711, 716 (N.D. Ill. 2011) (finding that “the lone documented sale to an Illinois 

resident and the fact that [Defendant] fulfilled that order, intentionally sending the allegedly 

infringing product into the state, may be been ‘purposeful’ . . . [but] that sale alone is an insufficient 

basis upon which to find personal jurisdiction”).

Authorities from within the Seventh Circuit have been fairly consistent on these points. 

See Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 801 (7th 

Cir. 2014) (finding no specific personal jurisdiction where the defendant fulfilled several orders of 

the allegedly infringing projectiles for purchasers in Indiana, knew plaintiff was an Indiana 

company and could foresee that the misleading emails and sales would harm plaintiff in Indiana, 

sent at least two misleading email blasts to a list that included Indiana residents, had an interactive 

website available to residents of Indiana, and put customers on its email list when they made a 

purchase, because de minimis sales would not support personal jurisdiction); be2 LLC v. Ivanov, 

642 F.3d 555, 559 (7th Cir. 2011) (finding no specific personal jurisdiction even though defendants’ 

website offered free dating profiles to consumers in all 50 states and twenty Illinois residents 

created free profiles on the website); Guinness World Records Ltd. v. Doe, 664 F. Supp. 2d 927, 

929 (N.D. Ill. 2009) (finding no specific personal jurisdiction in a trademark case where defendant 

operated a website and executed a general email marketing campaign that reached Illinois 

consumers and generated three sales of its products to two Illinois residents, involving total gross 

sales of only $1,153 because such conducts were “de minimis contacts”). See generally Walden v. 

Fiore, 571 U.S. 277, 284 (2014).

Here, thirteen of the fifteen Moving Defendants sold no infringing products to consumers 

in Illinois, and none of them specifically targeted any advertising of the at-issue products to Illinois. 

The mere fact that these Defendants operated online stores from which an Illinois resident could 

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potentially purchase items only establishes the potential for personal jurisdiction, not actual 

jurisdiction, and fails to establish the kind of “contacts” that “demonstrate a real relationship with 

the state with respect to the transaction at issue.” N. Grain Mktg., LLC v. Greving, 743 F.3d 482, 

492-93 (7th Cir. 2014). Simply put, none of the Moving Defendants engaged in Illinois-specific 

activity to establish minimum contacts with Illinois. See Tile Unlimited, Inc. v. Blanke Corp., 47 

F. Supp. 3d 750, 757 (N.D. Ill. 2014).

II. PLAINTIFF CANNOT SHOW IRREPARABLE HARM.

As discussed above, Plaintiff cannot demonstrate that it has sustained any harm (much less 

irreparable harm) from twelve of the fifteen Defendants, who have engaged in no infringing sales, 

whatsoever, because any sales activity pre-dated the registration date of the trademarks at issue. 

With respect to the remaining three Moving Defendants, first, unlike ordinary trademark disputes 

(where the trademark holder sends a cease and desist letter to the alleged infringer, thereby 

providing the alleged infringer the ability to stop any complained-of conduct prior to any lawsuit), 

here, the Defendants were not provided notice of any wrongdoing until after the Plaintiff has filed 

its lawsuit and obtained a temporary restraining order.

Revenue generated from sales is minimal, and all of these stores will agree to refrain from 

re-listing for sale any complained-of product during the pendency of this action. See Caster 

Connection, Inc., No. 20-CIV-1598, [D.E. 41] at 2 (denying preliminary injunction, in part, on 

account of defendants’ agreement not to re-list the allegedly infringing items for sale during the 

litigation). Should the Court deem it necessary, the ETTG-US and TERROVA will further agree 

to post a bond reflecting the full revenue amounts of $216.00 and $77.97, respectively, “thereby 

ensuring the availability of Plaintiff’s equitable remedy of accounting of profits for the period of

the requested preliminary injunction.” Id. at 10.

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III. THE BALANCE OF HARMS WEIGHS IN DEFENDANTS’ FAVOIR.

There is no basis for continuing the restrain the entire storefronts and associated assets of 

the Moving Defendants, many of whom depend on sales generated from collaterally impacted noninfringing products completely impertinent to the subject matter of this lawsuit for their livelihoods, 

particularly when only two of the fifteen derived any revenue from sales of allegedly infringing 

products (totaling approximately $293.97). Moreover, continued restraint is inappropriate since 

Plaintiff does not intend to seek an accounting or profits in the case (the only basis for such a 

prejudgment asset restrain in this case) but instead intends to seek statutory damages. See Deckers 

Outdoor Corp. v. Partnerships & Unincorporated Associations Identified on Schedule “A”, No. 

13-CIV-07621, 2013 WL 12314399, at *2 (N.D. Ill. Oct. 31, 2013) (recognizing that a Court’s 

authority to issue a prejudgment asset restraint based on the equitable remedy of accounting of 

profits is “illusory” if the plaintiff in fact pursues statutory damages as a basis for judgment).

A preliminary injunction is a black stain against the Defendants, a scarlet letter for the 

stores that can be referenced by third parties and judges in the future. Moreover, an injunction 

recognizes that Plaintiff is reasonable likely to face irreparable harm due to Defendants’ future 

unlawful and injurious conduct. But Plaintiff faces no such irreparable harm because there is no 

evidence or basis to believe that Defendants will continue any of the complained of conduct in the 

future. In short, Plaintiff cannot “me[e]t their burden of showing that the harm [it] will suffer if 

the injunction is denied is substantially greater than the harm [the stores] would suffer if the

injunction were granted.” Kastanis, 752 F. Supp. 2d at 858-59.

CONCLUSION

Based on the foregoing, Defendants 2buy2u, annannlee, baoanwang20068, Beautiful nail 

store, esellerchina2010, etesco_mall, ETTG-US, fonesocom, muchmoresale, prettygoodshopss, 

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reshifen-0, sellerfoneso, TEEROVA, uforeverk, and yallshop respectfully request that the Court 

deny Plaintiff’s Motion for Entry of a Preliminary Injunction (the “Plaintiff’s Motion”) [D.E. 34], 

and grant such further relief that the Court deems just and proper.

Date: September 14, 2020

Respectfully submitted,

All Moving Defendants

By: /s/ Xingjian Zhao

One of their Attorneys 

Xingjian Zhao

DIAZ, REUS & TARG, LLP

100 Southeast Second Street

3400 Miami Tower

Miami, Florida 33131

Danielle S. McKinley

RM PARTNERS LAW LLC

305 N. Peoria Street

Suite 200

Chicago, IL 60607

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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this 14th day of September 2020, I electronically filed the 

foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing 

document is being served this day on all counsel of record either via transmission of Notice of 

Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or 

parties who are not authorized to receive notices of filing electronically.

By: /s/ Xingjian Zhao

Xingjian Zhao

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