HICKIES Design Patent Victory: Default Judgment Against Counterfeit Sellers in Landmark Case
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📋 Case Summary
| Case Name | HIC IPCO LLC v. Schedule A Defendants |
| Case Number | 1:24-cv-00952 (N.D. Ill.) |
| Court | Northern District of Illinois |
| Duration | Feb 2024 – Apr 2024 87 days |
| Outcome | Plaintiff Win — $100K per defendant |
| Patents at Issue | |
| Accused Products | Counterfeit HICKIES Laces |
Case Overview
The Parties
⚖️ Plaintiff
HIC IPCO LLC, HICKIES OPCO LLC, and TCJ I, LLC hold the IP portfolio for HICKIES Laces, the elastic no-tie shoelace brand.
🛡️ Defendants
Anonymous online marketplace sellers operating under pseudonymous storefronts (e.g., 163shangmaojie, DaphneEgg) targeting U.S. consumers.
The Patents and Trademarks at Issue
This landmark case involved eight U.S. design patents covering the distinctive ornamental appearance of HICKIES elastic lacing systems, alongside five U.S. trademark registrations. Design patents, registered with the U.S. Patent and Trademark Office (USPTO), protect ornamental appearance rather than functional mechanisms, making them particularly powerful tools against counterfeit consumer products.
- • US D714,631 — HICKIES Lace ornamental design
- • US D716,645 — HICKIES Lace ornamental design
- • US D719,823 — HICKIES Lace ornamental design
- • US D720,123 — HICKIES Lace ornamental design
- • US D721,268 — HICKIES Lace ornamental design
- • US D762,459 — HICKIES Lace ornamental design
- • US D786,055 — HICKIES Lace ornamental design
- • US D797,548 — HICKIES Lace ornamental design
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The Verdict & Legal Analysis
Outcome
The court granted plaintiffs’ Motion for Entry of Default and Default Judgment in its entirety. Key relief awarded included statutory damages of $100,000 per defaulting defendant under 15 U.S.C. § 1117 and 17 U.S.C. § 504, permanent injunctions, domain name transfers, and an asset freeze with disgorgement of funds across 25+ payment platforms. The case closed in a swift 87 days due to the defendants’ failure to appear.
Legal Findings
The court found the defendants liable for willful design patent infringement under 35 U.S.C. § 271, willful trademark infringement and counterfeiting under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a), and violation of the Illinois Uniform Deceptive Trade Practices Act (815 ILCS § 510/1).
The willfulness finding was critical for the statutory damages and was supported by the defendants’ deliberate targeting of U.S. consumers through interactive commercial storefronts. Personal jurisdiction was established through defendants’ affirmative conduct of shipping products into Illinois, satisfying the purposeful availment standard without requiring physical presence.
The Schedule A Mechanism: Strategic Analysis
Case No. 1:24-cv-00952 represents a textbook execution of the “Schedule A” litigation strategy, a widely used enforcement mechanism against offshore counterfeiters. Its key tactical advantages include the availability of ex parte temporary restraining orders for asset freezes, broad reach across third-party platforms, service by electronic means, and the efficiency of default judgments when defendants fail to appear. The court’s order reached an exceptionally broad ecosystem of payment processors, reflecting modern enforcement awareness of diversified payment channels.
Legal Significance
This case reinforces several important doctrines for design patent practitioners: design patents are potent anti-counterfeiting tools, courts readily infer willfulness from deliberate commercial targeting, and there is clear jurisdictional reach over foreign e-commerce sellers operating interactive storefronts targeting U.S. consumers.
Design Patent Enforcement & Risk Analysis
This case highlights critical IP risks and enforcement opportunities in consumer product design. Choose your next step:
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- View all 8 asserted design patents and 5 trademarks
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High Risk Area
Distinctive consumer product aesthetics
8 Design Patents
Used to secure victory
Swift Enforcement
Via Schedule A strategy
✅ Key Takeaways
The N.D. Illinois Schedule A default judgment framework can resolve complex multi-defendant counterfeiting cases in under 90 days.
Explore Schedule A tactics →Eight design patents covering one product line provided enforcement redundancy — a model prosecution strategy worth recommending to design-forward clients.
Analyze patent portfolios →Willfulness findings in default judgment contexts support enhanced statutory damages without requiring independent evidence beyond deliberate commercial targeting.
Search similar cases →Frequently Asked Questions
Eight U.S. design patents — D714,631; D716,645; D719,823; D720,123; D721,268; D762,459; D786,055; and D797,548 — covering the ornamental design of HICKIES elastic no-tie lacing systems.
All nine defendants failed to appear or answer the complaint. The court entered default and awarded $100,000 in statutory damages per defendant, along with permanent injunctions and asset disgorgement.
It affirms the effectiveness of combining design patent portfolios with trademark registrations in Schedule A enforcement actions, particularly against anonymous offshore e-commerce sellers targeting U.S. consumers.
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References
- PACER — Case No. 1:24-cv-00952 (N.D. Ill.)
- USPTO Patent Center — HICKIES Design Patents
- Cornell Legal Information Institute — U.S. Code & Legal Resources
- PatSnap — IP Intelligence Solutions for Law Firms
This article is for informational purposes only and does not constitute legal advice. All case information is drawn from publicly available court records. For platform capabilities, visit PatSnap.