Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 1 of 20 PageID #: 3520
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:23-cv-00229
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`JURY TRIAL DEMANDED
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`WILLOW INNOVATIONS, INC.,
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`Plaintiff,
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`v.
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`CHIARO TECHNOLOGY LIMITED,
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`Defendant.
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`DEFENDANT AND COUNTERCLAIMANT CHIARO TECHNOLOGY LTD.’S
`OPPOSITION TO MOTION TO DISMISS COUNTERCLAIM FOR TRADE DRESS
`INFRINGEMENT
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`Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 2 of 20 PageID #: 3521
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`STATEMENT OF THE FACTS .........................................................................................3
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`III.
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`LEGAL STANDARD ..........................................................................................................4
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`IV.
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`ARGUMENT .......................................................................................................................5
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`A.
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`B.
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`C.
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`D.
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`Elvie Pleaded Sufficient Facts to Reasonably Infer its Trade Dress is
`Inherently Distinctive. ..............................................................................................5
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`Elvie Pleaded Sufficient Facts to Reasonably Infer Willow Infringed its
`Trade Dress. .............................................................................................................8
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`The Court Should Exercise Supplemental Jurisdiction .........................................11
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`Elvie’s Counterclaim should not be dismissed with prejudice. .............................13
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`CERTIFICATE OF SERVICE ......................................................................................................15
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`Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 3 of 20 PageID #: 3522
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`
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
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`3D Systems, Inc. v. Aarotech Laboratories, Inc.,
`160 F.3d 1373 (1998) .................................................................................................4, 5, 12, 13
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...............................................................................................................4, 7
`
`Callip v. Harris Cnty. Child Welfare Dep't,
`757 F.2d 1513 (5th Cir. 1985) ...........................................................................................13, 14
`
`Conan Properties, Inc. v. Conans Pizza, Inc.,
`752 F.2d 145 (5th Cir. 1985) ...................................................................................................10
`
`In re Forney,
`955 F.3d 940, 946 (Fed. Cir. 2020)............................................................................................6
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`Gibson Brands, Inc. v. Armadillo Distribution Enterprises, Inc.,
`668 F. Supp. 3d 614 (E.D. Tex. 2023) .......................................................................................9
`
`Inge v. Walker,
`No. 3:16-CV-0042-B, 2016 WL 4920288 (N.D. Tex. Sept. 15, 2016) ...................................12
`
`Lone Star Fund V (U.S.) L.P. v. Barclays Bank PLC,
`594 F.3d 383 (5th Cir. 2010) .....................................................................................................4
`
`Lormand v. US Unwired, Inc.,
`565 F.3d 228 (5th Cir. 2009) .....................................................................................................4
`
`Pebble Beach Co. v. Tour 18 I Ltd.,
`155 F.3d 526 (5th Cir. 1998) .....................................................................................................8
`
`Qualitex Co. v. Jacobson Products Co.,
`514 U.S. 159 (1995) ...................................................................................................................6
`
`Schuchart & Assocs. v. Solo Serve Corp.,
`No. SA-81-CA-5, 1983 WL 1147 (W.D. Tex. June 28, 1983) ................................................11
`
`Stat Ltd. v. Beard Head, Inc.,
`60 F. Supp. 3d 634 (E.D. Va. 2014) ................................................................................7, 8, 10
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`Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc.,
`851 F.3d 440 (5th Cir. 2017) .....................................................................................................8
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`Table of Authorities Continued
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`Thompson v. City of Waco,
`764 F.3d 500 (5th Cir. 2014) .....................................................................................................4
`
`United Mine Workers of America v. Gibbs,
`383 U.S. 715 (1966) ......................................................................................................... passim
`
`Viahart, LLC v. Chickadee Bus. Sols., LLC,
`No. 6:19-CV-406-JCB, 2021 WL 6333033 (E.D. Tex. July 2, 2021) ...................................5, 9
`
`Wal-Mart Stores, Inc. v. Samara Bros.,
`529 U.S. 205 (2000) ...........................................................................................................5, 6, 7
`
`Whirlpool Corp. v. Shenzhen Sanlida Elec. Tech. Co.,
`No. 2:22-CV-00027-JRG-RSP, 2023 WL 4768711 (E.D. Tex. June 22, 2023) ........................8
`
`Wine Enthusiast, Inc. v. Vinotemp Int'l Corp.,
`317 F. Supp. 3d 795 (S.D.N.Y. 2018) ........................................................................................8
`
`Xpel Techs. Corp. v. Carlas Int'l Auto. Accessory, Ltd.,
`No. SA-16-CA-01308-DAE, 2017 WL 9362801 (W.D. Tex. Nov. 27, 2017)
`(Chestney, J.) .............................................................................................................................5
`
`YETI Coolers, LLC v. JDS Indus., Inc.,
`300 F. Supp. 3d 899 (W.D. Tex. 2018) ......................................................................................5
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`Statutes
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`28 U.S.C. § 1367(a) .......................................................................................................................11
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`Other Authorities
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`Fed. R. Civ. P. 8(a)(2) ..................................................................................................................4, 7
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`Fed. R. Civ. P. 12(b)(6)....................................................................................................................4
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`Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 5 of 20 PageID #: 3524
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`I.
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`INTRODUCTION
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`Elvie amended its counterclaims in this case to add a count of trade dress infringement to
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`its original counterclaims that Willow infringes Elvie’s patents. Following the launch of Elvie’s
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`Pump product in 2018, Willow pivoted its product and website coloring to match Elvie’s long-
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`standing trade dress. Willow’s change in color scheme was no coincidence but rather a concerted
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`effort to copy both Elvie’s superior patented technology and source-identifying features to
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`unfairly trade off of Elvie’s market-leading brand recognition and goodwill.
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`As the aggressor in this case, Willow is confronted with these facts that threaten the
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`narrative it is trying to establish as the innovator in the industry. As a result, Willow now moves
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`to dismiss Elvie’s trade dress counterclaim to avoid the issue altogether, but its motion rests on
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`misstatements of Elvie’s trade dress allegations and incorrect and overly-narrow interpretations
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`of applicable case law. When properly applying the prevailing case law to Elvie’s Second
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`Amended Counterclaims (“Counterclaims”), Dkt. 60, it is clear that Willow’s motion to dismiss
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`should be denied.
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`As an initial matter, Willow contends that Elvie’s trade dress counterclaim must fail
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`because a single-color trade dress mark in product design cannot be inherently distinctive for the
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`purposes of federal protection under the Lanham Act. Pl.’s Mot. to Dismiss (“Brief”), Dkt. 61, at
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`4-5 (citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)). But Elvie never claims
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`that its trade dress consists of a single color or that it is limited to product design. In its
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`Counterclaims, Elvie actually explains that its trade dress is a multicolor trade dress mark
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`consisting of “celeste and white,” that it “has remained constant for ten years,” that the trade
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`dress is “present in Elvie’s world-famous femtech products, packaging and mobile application,”
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`and that the trade dress serves “as a brand identifier for Elvie and signifies the high-quality,
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`innovative goods and services consumers expect from them.” Counterclaims ¶¶ 49-51, 59. Elvie
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`further alleges in detail how Willow copied its trade dress to “ride the coattails of Elvie’s brand
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`recognition and goodwill with customers.” Id. ¶ 64. Willow ignores these allegations. When all
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`of Elvie’s trade dress infringement allegations—not merely the select few Willow singles out—
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`are applied to Federal Circuit case law concluding that multicolor marks on packaging can be
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`inherently distinctive, it is clear that Elvie’s counterclaim is more than sufficient to state a
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`plausible claim for relief.
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`Willow also suggests that Elvie’s trade dress counterclaim should fail because it relies on
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`nothing more than “conclusory allegations,” “naked assertions devoid of further factual
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`enhancement,” and fails to “address (or even mention) the likelihood of confusion factors”
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`necessary for an infringement claim. Br. at 8. But Elvie’s Counterclaims—when viewed in their
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`entirety—go far beyond the minimum pleading requirements, explaining in detail Willow’s
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`efforts over several years at wholesale adoption of Elvie’s trade dress and technology with the
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`intent to confuse consumers and obtain the benefit of Elvie’s hard-fought brand recognition and
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`consumer goodwill.
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`Finally, Willow conflates factual and legal similarity in arguing this Court should not
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`exercise supplemental jurisdiction over Elvie’s Texas common law trade dress claim. State law
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`trade dress claims are well within the scope of this Court’s exercise of supplemental jurisdiction
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`as Elvie’s patent and trade dress claims “derive from a common nucleus of operative fact.”
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`United Mine Workers of America v. Gibbs, 383 U.S. 715, 726 (1966). They both arise out of
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`Willow’s concerted efforts to copy Elvie’s market-leading products and technology in order to
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`ride Elvie’s coattails and gain an unfair and unwarranted business advantage. Indeed, it hardly
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`seems coincidental that Willow’s copying of Elvie’s trade dress occurred shortly after the release
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`of the Elvie Pump. At the very least, Elvie should have an opportunity to further develop facts
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`related to such copying through discovery. As such, dismissal of Elvie’s trade dress counterclaim
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`is not appropriate at this early stage of litigation.
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`II.
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`STATEMENT OF THE FACTS
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`Since 2013, Elvie has innovated, developed, and sold products in women’s healthcare
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`categories which have been overlooked for many years, including breast pumps and pelvic floor
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`health. Counterclaims ¶ 13. The first product to launch, the Elvie Trainer, is an award-winning
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`Kegel trainer and app that helps women strengthen the pelvic floor. Id. Since the launch of the
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`Elvie Trainer in 2014, Elvie has consistently used a turquoise color called “celeste” in its color
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`scheme consisting of the colors celeste and white (the “Color Scheme”) across its product
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`design, product packaging, and mobile app. Id. ¶¶ 49, 52, 54, 57.
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`Elvie’s second product, Elvie Pump, is the world’s first silent, wearable breast pump. Id.
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`¶ 13. In October 2018, the Elvie Pump was launched on Elvie’s own e-commerce website as well
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`as third party websites, such as Amazon. Id. ¶¶ 21-22.
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`Willow launched its first two products, the Willow Pump 1.0 and 2.0, with a color
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`scheme that was distinct from Elvie’s. Id. ¶ 62. The Willow Pump 1.0 was released in 2017,
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`prior to Elvie’s announcement of the Elvie Pump, and the Willow Pump 2.0 was launched in
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`February 2019, just months after the Elvie Pump. Id. ¶ 63. Both Willow products used a color
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`scheme consisting of blue and white, as illustrated in the Counterclaims. Id. ¶¶ 62, 65.
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`Following the successful launch of the Elvie Pump in October 2018, Willow rapidly
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`shifted away from its own color scheme and moved to Elvie’s. Id ¶¶ 42, 64-65. First, Elvie’s
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`Color Scheme was found on Willow’s website in January 2019. Id. ¶ 65. Elvie’s Color Scheme
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`was next found in the product design and product packaging of the Willow Pump 3.0, which was
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`launched in April 2020. Id. ¶ 66. And finally in its next product, the Willow Go, which launched
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`in 2022, Willow went even further—adopting Elvie’s patented smaller, more discreet
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`architecture, and several other features found in the Elvie Pump (and the Elvie Asserted Patents),
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`in addition to Elvie’s Color Scheme. Id. ¶¶ 42, 67-68.
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`All of these facts are pled in detail in Elvie’s counterclaim for trade dress infringement.
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`Id. ¶¶ 49-70.
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`III. LEGAL STANDARD
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`A complaint must include “a short and plain statement of the claim showing that the
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`pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A court can dismiss a complaint that fails to
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`meet this standard. Fed. R. Civ. P. 12(b)(6). In the Fifth Circuit, motions to dismiss under Rule
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`12(b)(6) are disfavored and rarely granted. Lormand v. US Unwired, Inc., 565 F.3d 228, 232 (5th
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`Cir. 2009).
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`To survive dismissal at the pleading stage, “a complaint must contain sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A
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`claim is facially plausible when the claimant pleads enough facts to allow the Court to draw a
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`reasonable inference that the defendant is liable for the misconduct alleged. Id. See also
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`Thompson v. City of Waco, 764 F.3d 500, 502 (5th Cir. 2014). When considering motions to
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`dismiss under Rule 12(b)(6), the Court may look to “the complaint, any documents attached to
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`the complaint, and any documents attached to the motion to dismiss that are central to the claim
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`and referenced by the complaint.” Lone Star Fund V (U.S.) L.P. v. Barclays Bank PLC, 594 F.3d
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`383, 387 (5th Cir. 2010).
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`Supplemental jurisdiction is a “doctrine of discretion, not of plaintiff's right.” United
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`Mine Workers of America v. Gibbs, 383 U.S. 715, 726 (1966). The Court has jurisdiction over
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`state law claims which “derive from a common nucleus of operative fact” such that the claims
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`“would ordinarily be expected to try them all in one judicial proceeding.” Id. at 725. See also 3D
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`Systems, Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373, 1377 (1998) (quoting 28 U.S.C. §
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`1367) (affirming district court’s exercise of supplemental jurisdiction over state law trade libel
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`and unfair competition claims). This includes claims which “go hand-in-hand with its patent
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`infringement claims” or “arise[] out of related facts.” 160 F.3d at 1377.
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`IV. ARGUMENT
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`A.
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`Elvie Pleaded Sufficient Facts to Reasonably Infer its Trade Dress is
`Inherently Distinctive.
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`“Trade dress-infringement claims under Texas common law do not substantively differ
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`from federal trade dress-infringement claims.” Viahart, LLC v. Chickadee Bus. Sols., LLC, No.
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`6:19-CV-406-JCB, 2021 WL 6333033, at *10 (E.D. Tex. July 2, 2021), report and
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`recommendation adopted, No. 6:19-CV-00406-RWS, 2022 WL 1262125 (E.D. Tex. Apr. 27,
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`2022). Protectable trade dress must include two elements: (1) being nonfunctional and (2) being
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`inherently distinctive or having acquired distinctiveness. Id.
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`Elvie’s Counterclaims sufficiently plead both elements. First, Elvie alleges that its trade
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`dress is inherently distinctive because the nature of Elvie’s Color Scheme serves “as a brand
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`identifier for Elvie and signifies the high-quality, innovative goods and services consumers
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`expect from them.” Counterclaims ¶ 59; Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205,
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`210 (2000) (defining inherent distinctiveness). Furthermore, the trade dress is nonfunctional, i.e.,
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`“it has no function other than to serve as a brand identifier for Elvie.” Counterclaims ¶ 60. See
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`Xpel Techs. Corp. v. Carlas Int'l Auto. Accessory, Ltd., No. SA-16-CA-01308-DAE, 2017 WL
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`9362801, at *5 (W.D. Tex. Nov. 27, 2017) (Chestney, J.); YETI Coolers, LLC v. JDS Indus., Inc.,
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`300 F. Supp. 3d 899, 913 (W.D. Tex. 2018) (explaining calculus for determining functionality).
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`Willow contends that Elvie’s Counterclaims must fail because “the color of a product
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`cannot be inherently distinctive and can only be protected as a trademark upon a showing of
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`secondary meaning.” Br. at 4. This is not only a selective reading of the facts as pled in Elvie’s
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`Counterclaims, but also an incomplete statement of the law.
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`First, Elvie’s Counterclaims clearly state that its Color Scheme is incorporated not just
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`into its products but also into its packaging. For example, Elvie states that “[t]he Color Scheme
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`is present on Elvie’s world-famous femtech products, packaging, and mobile application,” and
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`that the Elvie products “all incorporate the Color Scheme in either the body of the products, the
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`packaging, or both.” Counterclaims ¶¶ 51, 57.
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`Second, it is clear that multicolor marks on packaging—like Elvie’s—can be inherently
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`distinctive. Willow relies extensively on Qualitex Co. v. Jacobson Products Co., 514 U.S. 159
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`(1995). In Qualitex, the Supreme Court held that a single-color trade dress mark in product
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`design could not be inherently distinctive for the purposes of federal protection under the
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`Lanham Act. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211–212 (2000)
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`(citing 514 U.S. at 162–163). Subsequently, however, in In re Forney, the Federal Circuit
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`distinguished the Supreme Court’s holding with respect to single-color marks from multicolor
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`marks, holding that multicolor marks in product packaging could be inherently distinctive under
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`the Lanham Act. 955 F.3d 940, 946 (Fed. Cir. 2020).
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`As alleged in its Counterclaims, Elvie’s trade dress is a multicolor mark consisting of the
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`colors “celeste and white” that is incorporated into its product design and packaging.
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`Counterclaims ¶ 49. Elvie’s trade dress is also “inherently distinctive” because it serves “as a
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`brand identifier for Elvie and signifies the high-quality, innovative goods and services consumers
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`expect from them.” Id. ¶ 59. See 529 U.S. at 210 (concluding that a mark is inherently distinctive
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`if “[its] intrinsic nature serves to identify a particular source”).1
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`Willow also suggests that Elvie’s trade dress counterclaim fails because it relies on
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`nothing more than “conclusory allegations” and “naked assertions devoid of further factual
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`enhancement.” Br. at 8. This is simply not true. While Elvie is not required to prove its trade
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`dress claim at the pleading stage as Willow seems to suggest, Elvie’s Counterclaims go far
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`beyond the minimum pleading requirements. The Counterclaims set forth not just “a short and
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`plain statement of the claim”, Fed. R. Civ. P. 8(a)(2), containing “sufficient factual matter,
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`accepted as true, to ‘state claim to relief that is plausible on its face,’” but also provide a detailed
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`narrative establishing a highly plausible claim for the relief Elvie seeks. See Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
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`Indeed, Elvie’s trade dress allegations plead specific facts concerning the details of Elvie’s trade
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`dress Color Scheme and Willow’s efforts over several years to transition from its own color
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`scheme to Elvie’s, ultimately adopting Elvie’s trade dress wholesale with the intent to confuse
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`consumers and obtain the benefit of Elvie’s hard-fought brand recognition and consumer
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`goodwill. Counterclaims ¶¶ 62-68.
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`Other courts have found allegations far less detailed than Elvie’s more than sufficient to
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`survive a motion to dismiss. For example, in Stat Ltd. v. Beard Head, Inc., 60 F. Supp. 3d 634,
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`637 (E.D. Va. 2014), the court found that “discernibly skeletal” facts in a trade dress complaint
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`were “sufficient to state a plausible claim for trade dress infringement of Plaintiff's product
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`design and packaging.” Among those facts were that the defendant’s conduct “caus[ed]
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`1 Willow contends that Elvie has failed to plead that its trade dress has acquired secondary
`meaning. Br. at 6-8. Elvie’s trade dress counterclaims rest on the inherent distinctiveness of its
`Color Scheme.
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`substantial consumer confusion . . .” and that the packaging was “innovative, unique, non-
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`functional, and inherently distinctive.” Id. See also Wine Enthusiast, Inc. v. Vinotemp Int'l Corp.,
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`317 F. Supp. 3d 795, 803 (S.D.N.Y. 2018) (denying motion to dismiss because defendant’s
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`assertions that the trade dress was “unprotectable” and “generic” was “more appropriately made
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`in the context of a summary judgment motion or at trial.”).
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`B.
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`Elvie Pleaded Sufficient Facts to Reasonably Infer Willow Infringed its
`Trade Dress.
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`To be successful, a trade dress infringement claim must be supported by evidence
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`showing a likelihood of consumer confusion. Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526,
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`536 (5th Cir. 1998). Elvie’s Counterclaim alleges a likelihood of confusion between its trade
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`dress and Willow’s. The Fifth Circuit’s non-exhaustive “digits of confusion,” used in
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`determining whether a mark creates a likelihood of confusion, include: (1) strength of the mark;
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`(2) mark similarity; (3) product or service similarity; (4) outlet and purchaser identity; (5)
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`advertising media identity; (6) defendant’s intent; (7) actual confusion; and (8) care exercised by
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`potential purchasers. Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th
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`Cir. 2017). “‘At the motion to dismiss stage, the court—without having to consider each factor—
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`asks only whether there are sufficient facts to state a plausible claim of consumer confusion.’”
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`Whirlpool Corp. v. Shenzhen Sanlida Elec. Tech. Co., No. 2:22-CV-00027-JRG-RSP, 2023 WL
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`4768711, at *1 (E.D. Tex. June 22, 2023), report and recommendation adopted, No. 2:22-CV-
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`00027-JRG-RSP, 2023 WL 4764685 (E.D. Tex. July 26, 2023) (quoting Varsity Spirit LLC v.
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`Varsity Tutors, LLC, No. 3:21-CV-0432-D, 2022 WL 1266030, at *6 (N.D. Tex. Apr. 28, 2022)).
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`Elvie alleges facts regarding at least mark similarity, product or service similarity,
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`purchaser identity, and defendant’s intent. See Counterclaims ¶¶ 64-69. Elvie explains that its
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`trade dress consists of the colors “celeste and white,” that it “has remained constant for ten
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`years” and notes that the trade dress is “present in Elvie’s world-famous femtech products,
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`packaging and mobile application.” Id. ¶¶ 49-51. Elvie further alleges that Willow copied its
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`trade dress to “ride the coattails of Elvie’s brand recognition and good will with customers.” Id. ¶
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`64. More specifically, Elvie alleges that Willow adopted its trade dress “for its website, Willow
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`Breast Pump 3.0, and Willow Go breast pump products” and provides examples of both its own
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`trade dress and Willow’s infringing trade dress throughout its Counterclaims for comparison. Id.
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`¶¶ 62, 65, and 68. Indeed, Elvie’s Counterclaims explain in detail how Willow’s trade dress
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`initially incorporated colors (blue and white) that were “distinct” from Elvie’s trade dress, id. ¶
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`62, but then evolved over time. Elvie’s Counterclaims specifically note that “Willow changed the
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`colors used on its website . . . to those that mimic Elvie’s Color Scheme by at least January
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`2019,” and that “Willow completed its transition to Elvie’s Color Scheme when it released the
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`Willow Breast Pump 3.0 in April 2020.” Id. ¶¶ 65-66.
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`Willow also appears to imply that Elvie’s trade dress allegations should be dismissed
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`because they fail to allege facts relevant to each and every likelihood of confusion factor. See Br.
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`at 9 (“Elvie fails to allege any facts regarding the underlying strength of the color scheme, outlet
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`and purchaser identity, advertising media identity, or the sophistication of and care exercised by
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`potential purchasers.”). Here too, Willow relies on an overly-restrictive interpretation of the law
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`as there is no minimum requirement for the number of “digits of confusion” Elvie must address
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`in its pleading. See Viahart, LLC, 2021 WL 6333033, at *8 (granting judgment on the pleadings
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`for trademark infringement claim because plaintiff alleged facts related to some, but not all,
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`digits of confusion). See also Gibson Brands, Inc. v. Armadillo Distribution Enterprises, Inc.,
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`668 F. Supp. 3d 614, 648 (E.D. Tex. 2023) (quoting Elvis Presley Enterprises, Inc. v. Capece,
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`141 F.3d 188, 194 (5th Cir. 1998)) (“‘[A] finding of a likelihood of confusion does not even
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`Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 14 of 20 PageID #: 3533
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`require a positive finding on a majority’ of the digits of confusion.”); Conan Properties, Inc. v.
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`Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985) (citing Armco, Inc. v. Armco Burglar
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`Alarm Co., 693 F.2d 1155, 1159 (5th Cir. 1982)) (“The absence or presence of any one factor
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`ordinarily is not dispositive; indeed, a finding of likelihood of confusion need not be supported
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`by even a majority of the [digits of confusion].”).
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`And there is no requirement, as Willow seems to contend, that the Counterclaims must
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`explicitly recite the likelihood of confusion factors themselves. See Br. at 8 (“Elvie’s allegations
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`do not address (or even mention) the likelihood of confusion factors.”). Instead, the appropriate
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`measure of Elvie’s Counterclaims is whether facts alleged therein are relevant to the “digits of
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`confusion” factors. See Stat Ltd., 60 F. Supp. 3d at 637 (E.D. Va. 2014) (finding assertion that
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`defendant’s conduct “caus[ed] substantial consumer confusion” in complaint was sufficient to
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`survive a motion to dismiss). As already explained above, they are. Willow’s suggestion that
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`Elvie’s counterclaim should be dismissed because it does not organize the facts into the “digits
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`of confusion” finds no basis in the law. And for good reason—such a requirement would elevate
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`form over substance. The facts as alleged in Elvie’s Counterclaims are sufficient to state a claim
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`for relief for trade dress infringement.
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`Finally, Willow’s recent conduct belies its efforts to dismiss the likelihood of confusion
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`created by its adoption of Elvie’s trade dress. As shown in Exhibit A, a Wayback Machine
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`snapshot of Willow’s website, Willow’s online storefront for the Willow Pump 3.0 featured
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`numerous prominent photos and design elements with celeste coloring as of December 9, 2023.
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`https://web.archive.org/web/20231209210830/https://shop.onewillow.com/products/the-willow-
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`pump-gen-3 (attached as Ex. A at 2). Just days later, on December 20, Elvie served its first set
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`discovery request relating to Willow’s choice of color for its website and products. See Dec. 20,
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`Case 2:23-cv-00229-JRG Document 62 Filed 05/14/24 Page 15 of 20 PageID #: 3534
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`2023 Letter from J. Kim to T. Durst at 8 (attached as Ex. B) (requesting “[a]ll Documents
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`depicting or relating to the color palette used on each website, URL address, domain, or social
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`media profile Willow has used or maintained, and Willow’s decision to change the color palette
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`of its brand, website, or products at any point since January 1, 2014.”). Now, only a few months
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`later, Willow has rebranded the Willow Pump 3.0 as the Willow 360™ Wearable Breast Pump,
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`complete with new product packaging and a new online storefront. See Willow, Willow 360™
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`Wearable Breast Pump, https://shorturl.at/bchj4 (attached as Ex. C at 3-4) (snapshot of Willow’s
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`current online storefront). It appears Willow knew its decision to copy Elvie’s trade dress was
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`under investigation and took deliberate steps to differentiate its packaging and website in
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`anticipation of Elvie’s Counterclaims.
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`C.
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`The Court Should Exercise Supplemental Jurisdiction
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`The proper standard for exercising jurisdiction over Elvie’s trade dress counterclaim is
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`whether it is “so related to claims in the action within such original jurisdiction that they form
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`part of the same case or controversy . . . .” 28 U.S.C. § 1367(a). Willow argues that the
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`relatedness of Elvie’s counterclaim should be assessed by the similarity between the legal issues
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`in patent infringement and trade dress infringement litigation. See Br. at 9-10. That is not the
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`standard for supplemental jurisdiction. The correct question for the Court to consider is whether
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`Elvie’s trade dress and patent infringement counterclaims “derive from a common nucleus of
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`operative fact” such that they “would ordinarily be expected to [be tried] all in one judicial
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`proceeding.” United Mine Workers of America v. Gibbs, 383 U.S. 715, 725 (1966). They do. See,
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`e.g., Schuchart & Assocs. v. Solo Serve Corp., No. SA-81-CA-5, 1983 WL 1147, at *21 (W.D.
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`Tex. June 28, 1983) (holding after a bench trial that plaintiff’s state law claim of unjust
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`enrichment met the Gibbs requirements in a federal copyright infringement case because the
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`“unjust enrichment is based upon the time allegedly saved and the money allegedly earned” by
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`defendant’s infringement); Inge v. Walker, No. 3:16-CV-0042-B, 2016 WL 4920288, at *5 (N.D.
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`Tex. Sept. 15, 2016) (denying a motion to remand state law claims based on a Gibbs analysis of
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`“the underlying facts as opposed to the elements of proof[.]”).
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`Elvie’s counterclaims for trade dress and patent infringement both arise out of Willow’s
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`concerted efforts to copy Elvie’s market-leading products and technology in order to ride Elvie’s
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`coattails and gain an unfair business advantage. When Willow released its first two breast pump
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`products, the Willow Wearable Breast Pump 1.0 and 2.0, Willow used a color scheme that was
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`distinct from Elvie’s. Counterclaims ¶ 62. In September 2018, Elvie released its first breast pump
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`product, the Elvie Pump. Counterclaims ¶ 54. The Elvie Pump incorporated the trade dress
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`colors celeste and white and was an immediate hit with consumers. Counterclaims ¶¶ 54-55. As
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`alleged in Elvie’s Counterclaims, it was at this point that the copying of Elvie’s technology and
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`trade dress began. At least by January 2019, Willow changed the colors on its website to mimic
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`those of Elvie’s trade dress Color Scheme. Counterclaims ¶ 65. By April 2020, Willow had
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`completed its adoption of Elvie’s Color Scheme with the release of its Willow Breast Pump 3.0.
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`Counterclaims ¶ 65. And with the release of the Willow Go in March 2022, which incorporated
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`Elvie’s patented technology, Willow’s effort to transform itself into an Elvie imitator was
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`complete. Counterclaims ¶ 44. As alleged in Elvie’s Counterclaims, the trade dress infringement
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`and patent infringement claims are intimately intertwined threads of the same story, and it is in
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`the interest of justice and judicial economy that they be tried together.
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`Not only do Elvie’s trade dress and patent counterclaims arise from a “common nucleus
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`of fact,” but the Federal Circuit has in fact approved of supplemental jurisdiction in a similar
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`case, 3D Systems, Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373 (1998). In that case, the
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`plaintiff, 3D, brought a patent infringement action against Aarotech as well as state law claims
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`C