Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 1 of 10 PageID #: 3570
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`WILLOW INNOVATIONS, INC.,
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`Case No. 2:23-cv-00229-JRG
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`Plaintiff,
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`JURY TRIAL DEMANDED
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`v.
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`CHIARO TECHNOLOGY, LTD.,
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`Defendant.
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`PLAINTIFF WILLOW’S REPLY IN SUPPORT OF MOTION TO DISMISS ELVIE’S
`COUNTERCLAIM FOR TRADE DRESS INFRINGEMENT (COUNT 21)
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 2 of 10 PageID #: 3571
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
`ELVIE IS WRONG ON THE LAW: PRODUCT COLOR CANNOT BE
`INHERENTLY DISTINCTIVE ........................................................................................ 1
`ELVIE FAILED TO PLEAD LIKELIHOOD OF CONFUSION FOR
`PACKAGING .................................................................................................................... 3
`ELVIE HAS NOT SHOWN SUPPLEMENTAL JURISDICTION UNDER
`SECTION 1367 .................................................................................................................. 4
`IT WOULD BE FUTILE TO ALLOW ELVIE TO RE-PLEAD ...................................... 5
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`I.
`II.
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`III.
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`IV.
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`V.
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`i
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 3 of 10 PageID #: 3572
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`D’Onofrio v. Vacation Publications, Inc.,
`888 F.3d 197 (5th Cir. 2018) ...................................................................................................... 5
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`Dragoslavic v. Ace Hardware Corp.,
`274 F. Supp. 3d 578 (E.D. Tex. 2017) ........................................................................................ 4
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`In re Forney Indus. Inc.,
`955 F.3d 940 (Fed. Cir. 2020) .................................................................................................... 2
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`Qualitex Co. v. Jacobson Products Co.,
`514 U.S. 159 (1995) .................................................................................................................... 2
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`Versa Products Co. v. Bifold Co.,
`50 F.3d 189 (3d Cir. 1995) ......................................................................................................... 4
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`Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
`529 U.S. 205 (2000) ................................................................................................................ 2, 3
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`ii
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 4 of 10 PageID #: 3573
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`I.
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`INTRODUCTION
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`Elvie’s trade dress counterclaim is legally deficient and should be dismissed with prejudice
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`for any of the following reasons:
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`Elvie admits in its Opposition brief (Opp. at 7 n.1) that it did not plead secondary
`1.
`meaning for its alleged color mark. Thus, Elvie’s pleading relies entirely on inherent
`distinctiveness. That claim, however, fails as a matter of law because its pleading seeks to protect
`a color scheme of the product itself, not the product’s packaging. Contrary to Elvie’s suggestions
`otherwise, the Supreme Court has been crystal clear in holding that a product’s color scheme
`cannot be inherently distinctive. In sum, Elvie’s pleaded claim relating to product color fails as a
`matter of law.
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`Elvie should not be allowed to use its brief to recast its claim to focus on the
`2.
`packaging of one of its non-breast pump products. If that claim, which Elvie did not plead and
`raised for the first time in its opposition brief, is considered, the claim also fails because there are
`no allegations of likelihood of confusion with Willow’s packaging—the counterclaim does not
`provide any pictures, descriptions, or comparisons of Willow’s packaging (nor does Elvie’s brief).
`As a result, the packaging assertions fail to state a claim.
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`Elvie has failed to establish that the Court’s exercise of supplemental jurisdiction
`3.
`is appropriate for this case given that its state law trade dress claim is wholly unrelated to the patent
`infringement suit. Elvie’s single conclusory statement about jurisdiction falls well short of setting
`out a plausible factual nexus between the trade dress and patent claims. Simply put, Elvie’s
`products that incorporate the alleged trade dress are not accused of infringing Willow’s patents;
`and vice versa, the color of Willow’s pumps simply is not connected in any way to the patent
`issues.
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`At bottom, Elvie’s trade dress counterclaim should be dismissed with prejudice because it
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`cannot replead to show secondary meaning, nor can it provide any viable allegations to show a
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`likelihood of confusion or appropriate supplemental jurisdiction on unrelated claims.
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`II.
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`ELVIE IS WRONG ON THE LAW: PRODUCT COLOR CANNOT BE
`INHERENTLY DISTINCTIVE
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`Elvie’s counterclaim purports to claim protection of a product color scheme—which Elvie
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`cannot dispute is nothing more than an uneventful combination of two generic colors (white and
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`turquoise). Opp., Dkt. 62 at 6 (citing Second Amended Counterclaims (“SACC”), Dkt. 60 ¶ 49).
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`Elvie unequivocally acknowledges that there is no assertion within its counterclaims to suggest
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`that the two generic colors in question have attained a distinctive secondary meaning for
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`1
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 5 of 10 PageID #: 3574
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`consumers. Id. at 7 n.1. Left with no acquired distinctiveness (or secondary meaning) to its color
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`scheme, Elvie’s brief attempts to recast the scope of its alleged trade dress claim by arguing a
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`supposed distinction between single-color and multi-color trade dress. That argument is legally
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`wrong.
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`Elvie’s argument is eviscerated by Supreme Court and Federal Circuit precedent; the law
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`does not turn on the number of colors involved, but on the context of the alleged color mark. Opp.
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`at 6. In Qualitex Co. v. Jacobson Products Co., the Supreme Court held that the color of a product
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`is protectable trade dress only upon a showing of secondary meaning. 514 U.S. 159, 163 (1995).
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`Indeed, the Court did not limit its holding to single-color products or allow for a distinction
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`between single- versus multi-colored trade dress. See id. The Federal Circuit later distinguished
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`Qualitex on the basis of the color scheme found on the product packaging—rather than the product
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`itself. In re Forney Indus. Inc., 955 F.3d 940, 945-46 (Fed. Cir. 2020). In re Forney was an appeal
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`from a USPTO denial of a trademark application involving facts very different from this case,1
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`and the court held that inherent distinctiveness can be permitted for color marks on a product’s
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`packaging. Id. But the Federal Circuit left intact (as it had to) the Supreme Court’s holding in
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`Qualitex that color, in the context of a product itself, can never be inherently distinctive. Id.
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`Indeed, the Federal Circuit’s ruling expressly recognized the Supreme Court’s holding that “one
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`category of mark—colors … can [n]ever be inherently distinctive.” Id. at 946-47 (quoting Wal-
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`Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000)).2
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`1 In re Forney involved a multicolor flame design with a distinctive black bar that was found to
`form a “symbol” on product packaging—it was not as simple as a generic combination of two
`colors. 955 F.3d at 943.
`2 The reason why courts treat color on products and color on packaging differently is that the
`former does not “immediately … signal a brand or a product ‘source,’” Qualitex, 514 U.S. at 163,
`while the latter “can be perceived by consumers to suggest the source of the goods in that type of
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 6 of 10 PageID #: 3575
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`The Elvie counterclaim does not fall within the scope of In re Forney’s “packaging”
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`holding, however, because Elvie pleads only trade dress on a “product” color scheme. SACC ¶¶
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`49, 61 (defining the “Color Scheme” as the product colors, “celeste and white” and claiming trade
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`dress protection in “the Color Scheme”). But this stand-alone product color approach is precluded
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`under Qualitex and Wal-Mart.3 Elvie cannot rely on a few scattered allegations to recast its defined
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`trade dress to cover packaging. Moreover, Elvie’s packaging allegations (found mostly in its brief)
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`pertain entirely to a non-breast pump product: the Elvie Trainer device assists women with pelvic
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`organ issues (SACC ¶ 52). It is far-fetched—in fact implausible—to assert that consumers will
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`confuse entirely different types of products, especially when Willow does not make any products
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`other than breast pumps and accessories.
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`Elvie’s failure to sufficiently plead that its color scheme is protectable means that the
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`counterclaim should be dismissed. The Court’s analysis could stop there.
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`III. ELVIE FAILED TO PLEAD LIKELIHOOD OF CONFUSION FOR
`PACKAGING
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`Elvie’s brief attempts to recast the alleged protected trade dress as packaging (Opp. at 2).
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`That should not be allowed—Elvie is limited to the allegations in the pleading. In any event,
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`neither Elvie’s pleading nor brief makes any allegations that consumers are confused between
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`Willow’s packaging and Elvie’s packaging. The pleading does not include any pictures or
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`descriptions of Willow’s packaging, much less the requisite comparisons between Elvie’s Pump
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`and Willow’s packaging. See SACC ¶¶ 49-70, 195-99. Elvie’s pleading only shows packaging
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`for its Trainer product, which is not even a breast pump. Id. ¶ 52. Any argument on purported
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`packaging.” In re Forney, 955 F.3d at 947. Here, the color of Elvie’s products is not a source
`identifier.
`3 Elvie’s references to its product design (Opp. at 3, 6) are similarly precluded from being
`inherently distinctive under Wal-Mart, which held that “[product] design, like color, is not
`inherently distinctive.” 529 U.S. at 212.
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`3
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 7 of 10 PageID #: 3576
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`confusion with respect to Willow’s breast pump products strains credulity—both consumers and
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`the law recognize that a pelvic floor device is not confusingly similar to a breast pump. See Versa
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`Products Co. v. Bifold Co., 50 F.3d 189, 202 (3d Cir. 1995) (in case involving product
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`configuration, finding that “[s]imilarity of appearance is properly considered paramount in
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`trademark and product packaging trade dress infringement cases, for unless the allegedly
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`infringing mark or dress is substantially similar to the protectable mark or dress, it is highly
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`unlikely that consumers will confuse the product sources represented by the different marks or
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`trade dresses.”). Elvie’s contradictory stance—seeking to alter the definition of its trade dress
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`while simultaneously claiming confusion based on its original product-focused definition—is
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`untenable and invites legal error.4
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`IV.
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`ELVIE HAS NOT SHOWN SUPPLEMENTAL JURISDICTION UNDER
`SECTION 1367
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`Elvie does not dispute that its sole allegation for supplemental jurisdiction is that “the
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`common law claim of trade dress infringement is so related to the Federal claims that they form
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`part of the same controversy and are derived from a common nucleus of operative facts.” SACC
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`at 57 ¶ 7. Nor does Elvie dispute that five of the products that incorporate Elvie’s alleged trade
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`dress—the Elvie Trainer, Stride, Stride Plus, Curve, or the Catch—have no relevance whatsoever
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`to the patents claims in this case. Opp. at 11-13. Adding trade dress claims for those unrelated
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`products to this patent case would make for judicial inefficiencies, which undermines Elvie’s
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`4 Elvie’s attorney argument regarding Willow’s rebranding efforts is spurious, wholly irrelevant,
`and should be ignored, for it fails to provide the Court with a basis for inferring any likelihood of
`confusion. Dragoslavic v. Ace Hardware Corp., 274 F. Supp. 3d 578, 583 (E.D. Tex. 2017)
`(finding it improper to “buttress the Complaint based on new arguments raised in a response”).
`The notion that Willow, who revolutionized the wearable breast pump industry, changed its
`website and the name of its premium pump in response to Elvie’s discovery requests in this case
`is as far-fetched as it is simply untrue. Rebranding is a substantial endeavor involving considerable
`time and resources, and it is implausible to suggest that Willow could execute these changes
`instantaneously, as if by a mere “flip of a switch.”
`4
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 8 of 10 PageID #: 3577
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`request that the Court exercise supplemental jurisdiction. See D’Onofrio v. Vacation Publications,
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`Inc., 888 F.3d 197, 207 (5th Cir. 2018) (stating that “judicial economy, convenience, fairness, and
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`comity” should guide the determination of whether to exercise of supplemental jurisdiction).
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`Elvie’s only argument is that the Willow Pump 3.0 is relevant to both the patent claims and
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`the trade dress claims. Not so. The Willow Pump is not an accused product in the patent claims,
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`and its color, packaging, or ornamental design are not relevant to any patent claims. Any
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`discussion of the Willow Pump 3.0 in the context of patent-related issues, such as marking under
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`35 U.S.C. § 287, will not involve overlapping facts or evidence with the trade dress claim.
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`V.
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`IT WOULD BE FUTILE TO ALLOW ELVIE TO RE-PLEAD
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`Elvie has not identified a path for pleading a viable trade dress claim, which speaks to the
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`futility of any attempt to do so. Elvie had sufficient opportunity to plead the missing elements—
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`secondary meaning in the minds of consumers and likelihood of confusion—but wholly failed to
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`do so in its counterclaim. Having failed again to recognize these deficiencies in its brief, there is
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`no cause for giving Elvie yet another chance. The trade dress counterclaim should be dismissed
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`with prejudice.
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 9 of 10 PageID #: 3578
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`/s/ Timothy S. Durst
`O’MELVENY & MYERS LLP
`Timothy S. Durst (TX #00786924)
`tdurst@omm.com
`Cason Garrett Cole (TX #24109741)
`ccole@omm.com
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201
`Telephone: (972) 360-1900
`Facsimile: (972) 360-1901
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`Robert F. Shaffer (admitted pro hac vice)
`rshaffer@omm.com
`Jason Fountain (admitted pro hac vice)
`jfountain@omm.com
`Miao Liu (admitted pro hac vice)
`mliu@omm.com
`1625 Eye St., NW
`Washington, DC 20006
`Telephone: (202) 383-5300
`Facsimile: (202) 383-5414
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`Carolyn S. Wall (admitted pro hac vice)
`cwall@omm.com
`Times Square Tower
`7 Times Square
`New York, New York 10036
`Telephone: (212) 326-2000
`Facsimile: (212) 326-2061
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`Laura Burson (TX # 24091995)
`lburson@omm.com
`400 South Hope St
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
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`Attorneys for Plaintiff Willow Innovations,
`Inc.
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`Dated: May 21, 2024
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`Case 2:23-cv-00229-JRG Document 63 Filed 05/21/24 Page 10 of 10 PageID #: 3579
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on May 21, 2024.
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`/s/ Timothy S. Durst
`Timothy S. Durst
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`7
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