Case 2:23-cv-00229-JRG Document 90 Filed 09/04/24 Page 1 of 5 PageID #: 7040
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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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`v.
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`CHIARO TECHNOLOGY, LTD.,
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`Plaintiff,
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`CIVIL ACTION NO. 2:23-CV-00229-JRG
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`Before the Court is the Motion to Dismiss Elvie’s1 Counterclaims for Trade Dress
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`Infringement (Count 21) (the “Motion to Dismiss”) filed by Plaintiff Willow Innovations, Inc.
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`(“Plaintiff” or “Willow”). (Dkt. No. 61.) Having considered the Motion to Dismiss, related
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`briefing, and relevant authority, the Court finds that the Motion to Dismiss should be and hereby
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`is GRANTED with leave for Defendant Chiaro Technology, Ltd., d/b/a Elvie to subsequently
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`amend.
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`I.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Plaintiff filed this lawsuit against Defendant Chiaro Technology, Ltd., d/b/a Elvie
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`(“Defendant” or “Elvie”) on May 24, 2023, accusing Defendant of infringing seven U.S. patents.
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`(Dkt. No. 1.) In its Amended Answer to Plaintiff’s Complaint for Patent Infringement, Defendant
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`filed counterclaims for infringement of four of its patents. (Dkt. No. 23.)2 On September 12, 2023,
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`Plaintiff filed its First Amended Complaint for Patent Infringement to assert another patent. (Dkt.
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`No. 27.) In Defendant’s April 15, 2024, Answer to Plaintiff’s First Amended Complaint and
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`1 Defendant Chiaro Technology, Ltd. does business as “Elvie.” (Dkt. No. 61 at 1.)
`2 Defendant amended its original Answer to Plaintiff’s Complaint for Patent Infringement to assert infringement of a
`fourth patent in its counterclaims. Compare (Dkt. No. 15), with (Dkt. No. 23).
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`Case 2:23-cv-00229-JRG Document 90 Filed 09/04/24 Page 2 of 5 PageID #: 7041
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`Second Amended Counterclaims, Defendant included a counterclaim for trade dress infringement
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`under Texas common law. E.g., (Dkt. No. 60 ¶¶ 49-70).
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`On April 30, 2024, Plaintiff filed this Motion to Dismiss. (Dkt. No. 61.) Specifically,
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`Plaintiff seeks to dismiss Defendant’s trade dress counterclaim because Plaintiff alleges that (1)
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`Defendant failed to plead a claim for trade dress infringement and (2) even if Defendant did
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`sufficiently plead its trade dress infringement counterclaim, the Court does not have supplemental
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`jurisdiction under 28 U.S.C. § 1367. (Id. at 1.)
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`II.
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`LEGAL STANDARD
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`A. Rule 12(b)(6)
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`Under Federal Rule of Civil Procedure 12(b)(6), a court can dismiss a complaint that fails
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`to state a claim upon which relief can be granted. To survive dismissal at this early stage, a
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`complaint must state enough facts such that the claim to relief is plausible on its face. Thompson
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`v. City of Waco, 764 F.3d 500, 502 (5th Cir. 2014) (quoting Bell Atl. Corp. v. Twombly, 550 U.S.
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`544, 570 (2007)). A claim is facially plausible when the plaintiff pleads enough facts to allow the
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`Court to draw a reasonable inference that the defendant is liable for the misconduct alleged.
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The Court accepts well-pled facts as true and views
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`all facts in the light most favorable to the plaintiff, but it is not required to accept the plaintiff’s
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`legal conclusions as true. Id.
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`The Court must limit its review “to the contents of the pleadings.” Collins v. Morgan
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`Stanley Dean Witter, 224 F.3d 496, 498-99 (5th Cir. 2000). However, documents attached to a
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`defendant’s motion to dismiss are considered a part of the pleadings if they are referred to in the
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`complaint and are central to the claim. Id.
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`2
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`Case 2:23-cv-00229-JRG Document 90 Filed 09/04/24 Page 3 of 5 PageID #: 7042
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`B. Trade Dress Infringement
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`Trade dress refers to the “total image and overall appearance of a product and may include
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`features such as the size, shape, color, color combinations, textures, graphics, and even sales
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`techniques that characterize a particular product.” Amazing Spaces, Inc. v. Metro Mini Storage,
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`608 F.3d 225, 251 (5th Cir. 2010). To state a claim for trade dress infringement, a party must
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`establish two elements.3 First, the party must establish that the trade dress “qualifies for
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`protection.” Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 536 (5th Cir. 1998). To qualify for
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`legal protection, a trade dress must be inherently distinctive or have achieved secondary meaning
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`in the public’s mind, meaning that it must have “come through use to be uniquely associated with
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`a specific source.” Id. (cleaned up). Trade dress is only entitled to legal protection if it is non-
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`functional. Id. Second, the plaintiff must show that the defendant’s use of the trade dress creates
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`“a likelihood of confusion in the minds of potential customers as to the source, affiliation, or
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`sponsorship” of the defendant’s product or service. Bd. of Supervisors for La. State Univ. Agric.
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`& Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008) (cleaned up).
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`III. DISCUSSION
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`Plaintiff argues that Defendant’s counterclaim fails to plead either element of a trade dress
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`infringement claim. (Dkt. No. 61 at 4.) As an initial matter, the Court finds that the parties dispute
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`what is the claimed trade dress at issue. Plaintiff argues that Defendant’s claimed trade dress is the
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`color scheme of its products and does not include any product packaging. (Dkt. No. 61 at 6.)
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`Defendant argues that its trade dress is not limited to the color scheme of its products but also
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`includes the color scheme of its product packaging. (Dkt. No. 62 at 6.)
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`3 The test for trade dress infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seq., is the same test for trade
`dress infringement under Texas common law. Primesource Building Prods., Inc. v. Hillman Grp., Inc., 2015 WL
`11120882, at *3 (N.D. Tex. Mar. 31, 2015) (citing Amazing Spaces, 608 F.3d at 235 n.7).
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`3
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`“When alleging a trade dress claim, the plaintiff must identify the discrete elements of the
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`trade dress that it wishes to protect” so that the defendant has fair notice of the grounds of the
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`plaintiff’s claim. Test Masters Educ. Servs., Inc. v. State Farm Lloyds, 791 F.3d 561, 565 (5th Cir.
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`2015); see also AMID, Inc. v. Medic Alert Found. United States, Inc., 241 F. Supp. 3d 788, 807
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`(S.D. Tex. 2017) (dismissing a trade dress claim because the plaintiff failed to identify the trade
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`dress with sufficient “clarity or consistency”). Defining the elements of the trade dress is especially
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`critical where the plaintiff alleges that its trade dress is embodied in different products. Yurman
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`Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001). If the trade dress were vaguely defined
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`as an “overall look,” the case might “degenerate into a question of quality, or beauty, or cachet.”
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`Id. at 117. “[P]hotographs alone are insufficient to provide notice of the elements of an alleged
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`trade dress.” YETI Coolers, LLC v. Magnum Solace, LLC, 2017 WL 5515910 at *3 (W.D. Tex.
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`Mar. 30, 2017).
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`Here, Defendant has not clearly articulated what comprises its claimed trade dress.
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`Defendant argues that it has sufficiently described its trade dress because it states “[t]he Color
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`Scheme is present on Elvie’s world-famous femtech products, packaging, and mobile application”
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`and cites its counterclaims which included photographs. (Dkt. No. 62 at 1-2.) However, the written
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`description solely describes the claimed trade dress as the “color scheme” of Defendant’s products
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`and product packaging. (See, e.g., Dkt. No. 62 at 1-2.) This description and the photographs
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`contained in the counterclaims alone do not sufficiently identify the “discrete elements” that
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`Defendant seeks to protect. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381
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`(2d Cir. 1997) (holding that “focus on the overall look of a product does not permit a plaintiff to
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`dispense with an articulation of the specific elements which comprise its distinct dress,” because
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`the court must be able to evaluate the claim and narrowly tailor relief); see also YETI Coolers,
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`4
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`2017 WL 5515910 at *4 (holding that the plaintiff’s “photographs in combination with a list of
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`articulated, discrete elements” of the alleged trade dress was sufficient to allow the Court to
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`understand “exactly what [YETI is] looking to protect.”) (quoting Gen. Motors Corp. v. Lanard
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`Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006)).
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`Accordingly, the Court finds that Defendant has not described its claimed trade dress
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`sufficiently to support its trade dress counterclaim.4
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`IV. CONCLUSION
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`Plaintiff’s Motion to Dismiss (Dkt. No. 61) is GRANTED for the reasons stated herein
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`and as such the Court DISMISSES WITHOUT PREJUDICE Defendant’s counterclaim for
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`trade dress infringement (count 21). The Court further provides that Defendant shall have 14 days
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`from the date of this Order during which to file an amended Answer and Counterclaims and
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`thereby properly replead its trade dress counterclaim with sufficient specificity. If Defendant fails
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`to replead its trade dress counterclaim properly and within the 14-day period provided, Defendant
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`will be thereafter precluded from realleging such counterclaim as a part of this action.
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`4 Since the Court finds that Defendant has not sufficiently identified its trade dress, the Court need not reach whether
`Defendant has sufficiently pled the elements of trade dress. Further, because the identity of Defendant’s trade dress is
`central to the Court’s supplemental jurisdiction analysis, the Court does not address supplemental jurisdiction at this
`time. The Court will address Plaintiff’s supplemental jurisdiction argument later, if necessary.
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`5
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 4th day of September, 2024.
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