Case: 1:18-cv-06005 Document #: 44 Filed: 12/13/18 Page 1 of 12 PageID #:347

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

THERAPEARL, LLC, )
)
Plaintiff, ) Case No.: 2018-cv-6005
)
v. )
)
VERIDIAN HEALTHCARE, LLC )
)
Defendant. )
)

DEFENDANT’S PARTIAL MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED

COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION,
DECEPTIVE TRADE PRACTICES, AND DESIGN PATENT INFRINGEMENT

Defendant Veridian Healthcare, LLC (“Veridian”), through its undersigned counsel,

hereby moves to dismiss the trade dress infringement allegations of Counts Two through Five of

Plaintiff’s TheraPearl, LLC (“TheraPearl” or “Plaintiff”) First Amended Complaint (“FAC,” ECF

No. 34) pursuant to Federal Rule of Civil Procedure 12(b)(6). 1 In support of its motion, Veridian

states as follows:

INTRODUCTION

Plaintiff’s FAC boils down to claims that Veridian is using product packaging and

configurations in which Plaintiff claims intellectual property rights, and this alleged use may cause

consumers to confuse Veridian’s products with those of Plaintiff. Specifically, Counts Two

1
The instant Motion tolls Veridian’s time for answering, as the “Amended Standing Order
Regarding the Mandatory Initial Discovery Pilot Program” provides: “Parties must file answers,
counterclaims, crossclaims, and replies within the time set forth in Rule 12(a)” and Rule 12(a)(4)
provides that answers need not be filed when there is a pending Rule 12 motion. See Fed. R. Civ.
P. 12(a)(4); see also U.S. Court’s November 28, 2018 e-mail, Important Amendment to the
Mandatory Initial Discovery Pilot (MIDP) Effective Dec. 1, 2018 (“answers no longer will be
required -- and the MIDP response period will not be triggered -- while a motion is pending under
Rule 12(b)(6) or any other provision of Rule 12.”).
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through Five contend, among other things, that Veridian has infringed upon “TheraPearl’s trade

dress, including its distinctive configuration and packaging.” See FAC, ⁋⁋ 53, 54, 59, 67, 76 and

77.2 Plaintiff already amended its Complaint once in an effort to recast its allegations, including

the scope of its trade dress. However, like the previously filed complaint, the FAC fails to allege

a viable trade dress claim, as: (i) Plaintiff fails to properly articulate its alleged trade dress in either

its product configuration or product packaging; (ii) the FAC is void of any factual basis to establish

that Plaintiff’s product configuration trade dress is non-functional; and (iii) Plaintiff provides no

support for the contention that its product packaging has achieved secondary meaning.

Accordingly, the Court should dismiss Counts Two through Five of the FAC.

ARGUMENT

I. LEGAL STANDARD

To survive a motion to dismiss under Rule 12(b)(6), “a complaint must contain sufficient

factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft

v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

A plaintiff cannot establish he or she is entitled to relief, by utilizing “labels and conclusions” or

“a formulaic recitation of a cause of action’s elements[.]” Twombly, 550 U.S. at 545. Rather, a

plaintiff must set forth specific facts that “raise a right to relief above the speculative level[.]” Id.

at 545; see also Brooks v. Ross, 578 F.3d 574, 581 (7th Cir. 2009). The complaint must provide a

defendant “with ‘fair notice’ of the claim and its basis.” Tamayo v. Blagojevich, 526 F.3d 1074,

1081 (7th Cir. 2008) (quoting Fed. R. Civ. P. 8(a)(2) and Twombly, 550 U.S. at 555). When ruling

on a motion to dismiss, courts “are not obliged to accept as true legal conclusions or unsupported

conclusions of fact.” Hickey v. O’Bannon, 287 F.3d 656, 658 (7th Cir. 2002); see also Atlas IP,

2
The allegations in Count Two of Plaintiff’s FAC are based on Federal Unfair Competition under
the Lanham Act, while Counts Three through Five are based on claims under Illinois law.
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LLC v. Exelon Corp., 189 F. Supp. 3d 768, 771 (N.D. Ill. 2016), aff’d sub nom. Atlas IP, LLC v.

Commonwealth Edison Co., 686 F. App’x 921 (Fed. Cir. 2017) (citation omitted) (‘“[L]egal

conclusions or conclusory allegations that merely recite a claim’s elements’ are not entitled to any

presumption of truth.”); Brooks, 578 F.3d at 581 (“[I]n considering the plaintiff’s factual

allegations, courts should not accept as adequate abstract recitations of the elements of a cause of

action or conclusory legal statements.”).

II. PLAINTIFF’S TRADE DRESS INFRINGEMENT CLAIMS WARRANT

DISMISSAL

To plead a viable trade dress infringement claim, Plaintiff must show that: (1) its trade

dress is nonfunctional; (2) the trade dress has acquired secondary meaning; and (3) a likelihood of

confusion exists between its trade dress and the defendant’s trade dress. See Incredible Tech. Inc.

v. Virtual Tech., Inc., 400 F.3d 1007, 1015 (7th Cir. 2005). “As a threshold requirement in proving

that a trade dress is worthy of protection, [a] plaintiff must first clearly identify ‘the discrete

elements’ that make up the trade dress.” E&G Franchise Sys., Inc. v. Janik, No. 18-cv-416-WMC,

2018 WL 5630589, at *4 (W.D. Wis. Oct. 31, 2018) (citation omitted);

Here, Plaintiff alleges trade dress infringement in both its product packaging and in the

product configuration of its gel beads. However, as demonstrated below, Plaintiff fails to clearly

articulate its trade dress, and does not adequately plead a factual basis for the elements required to

establish a claim of trade dress infringement. Accordingly, Plaintiff’s trade dress infringement

claims should be dismissed for failing to state a claim upon which relief may be granted. See

Homeland Housewares, LLC v. Euro-Pro Operating LLC, No. CV 14-03954 DDP MANX, 2014

WL 6892141, at *3 (C.D. Cal. 2014) (dismissing the plaintiff’s trade dress infringement claim,

finding that the plaintiff failed to “sufficiently identify the particular elements of the packaging

that they seek to protect.”).

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A. PLAINTIFF FAILS TO STATE A CLAIM FOR PRODUCT

CONFIGURATION TRADE DRESS INFRINGEMENT

1. Plaintiff fails to clearly articulate its product configuration

trade dress.

To plead a viable claim for trade dress infringement, a plaintiff must clearly articulate its

claimed trade dress. See E&G Franchise Sys., Inc., 2018 WL 5630589, at *5; see also Planet

Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 890 (N.D. Ill. 1999),

opinion clarified, No. 96-cv- 4660, 1999 WL 1186802 (N.D. Ill. Dec. 9, 1999) (“The Court must

consider not only the general labels used to identify each element of trade dress, but must also

consider the specific manner in which each element is implemented.”). “Only then can the court

and the parties coherently define exactly what the trade dress consists of and determine whether

the trade dress is valid and if what the accused is doing is infringement.” Homeland Housewares,

LLC, 2014 WL 6892141, at *3.

Plaintiff’s FAC, however, fails to identify the purported product configuration trade dress

with any certainty. In the FAC, Plaintiff appears to present two alternative descriptions of its

product configuration trade dress. See FAC, ¶11. First, Plaintiff attempts to broadly describe its

product configuration trade dress as “the appearance of the gel beads of its products[.]” (Id.) But

that descriptions fails to articulate what, if any, specific aspects of the appearance of the beads

constitute the trade dress. The “appearance” of a gel bead could include many things, including,

size, shape, color, etc. Indeed, throughout other portions of its FAC, Plaintiff makes various

references to such features, including bead size (id. at ⁋⁋ 26, 30, 34, 36), bead design (id. at ⁋ 43),

and bead shape (id. at ⁋ 1); however, Plaintiff never describes which, if any, of these features is

the purported product configuration trade dress.

As an alternative, the Plaintiff also suggests that the product configuration trade dress rights

also, “independently, include the distinct blue color for the gel beads[.]” FAC, ⁋ 11. But this

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allegation does not cure the defects discussed above because Plaintiff’s use of the phrase “includes”

creates the same ambiguity as to whether Plaintiff is claiming trade dress in the color alone or in

combination with other unspecified aspects of the “appearance of the gel beads.” See Mike Vaughn

Custom Sports, Inc. v. Piku, 15 F. Supp. 3d 735, 746 (E.D. Mich. 2014) (dismissing plaintiff’s

trade dress claim, holding that the plaintiff’s “allegations are insufficient to provide the defendant

notice as to the plaintiff’s trade dress, which products the defendant infringed, and what aspect of

the plaintiff’s trade dress the defendant infringed.”).

The confusion as to what constitutes Plaintiff’s alleged product configuration trade dress

is further exacerbated by other portions of the FAC. For example, Plaintiff alleges that Veridian

infringes “Therapearl’s trade dress rights by using a clear outer shell filled with visible blue gel

beads and having the same rectangular-pack dimensions.” FAC, ⁋ 26. By making such an

allegation, Plaintiff appears to be taking yet a third approach to its purported product configuration

trade dress, that is, Veridian is somehow infringing based on a combination of the gel bead design

with the shape the pack, even though the FAC is void of any allegations that Therapearl has trade

dress rights in the shape of the pack itself. This kind of shifting-sands approach to its trade dress

demonstrates that Plaintiff has failed to sufficiently allege trade dress infringement claim here. See

e.g., Sleep Sci. Partners v. Lieberman, No. 09-cv-04200, 2010 WL 1881770, at *4 (N.D. Cal. May

10, 2010) (dismissing the plaintiff’s trade dress infringement claim, finding that the “[p]laintiff

has not clearly articulated which [components] constitute its purported trade dress” and that the

“[p]laintiff employs language suggesting that these components are only some among many, which

raises a question of whether it intends to redefine its trade dress at a future stage of litigation.

Without an adequate definition of the elements [of plaintiff’s alleged trade dress the defendant] is

not given adequate notice.”).

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Accordingly, Plaintiff fails to allege a viable claim for trade dress infringement, and as

such, the Court should dismiss Plaintiff’s trade dress claim, Count Two. See, e.g. Sleep Sci.

Partners, 2010 WL 1881770, at *3 (dismissing trade dress allegations because “Plaintiff has not

clearly articulated which [of the elements of the system] constitute its purported trade dress.”).

2. Plaintiff fails to establish that its alleged product configuration

trade dress is non-functional.

To state a viable trademark infringement claim, a plaintiff must also allege that the

elements of its purported trade dress in its product configuration are non-functional. See E&G

Franchise Sys., Inc., 2018 WL 5630589, at *5 (“It is plaintiff’s burden to demonstrate that the

trade dress is not ‘functional’ …. this element appears missing from plaintiff’s amended

complaint.”) (citation omitted); see also Incredible Tech. Inc., 400 F.3d at 1015 (7th Cir. 2005)

(“To prevail on a trade dress claim, [the plaintiff] must establish that its trade dress is

nonfunctional”). Supreme Court and Seventh Circuit precedent establish that “a product feature

is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the [product]

or if it affects the cost or quality of the [product].” TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23, 24 (2001) (internal citation and quotation omitted); Jay Franco & Sons, Inc. v. Franek,

615 F.3d 855, 857 (7th Cir. 2010) (“if a design enables a product to operate, or improves on a

substitute design in some way … then the design cannot be trademarked; it is functional because

consumers would pay to have it rather than be indifferent toward or pay to avoid it.”).

Here, Plaintiff suggests that the size and shape of its gel beads are at least two of the

elements of its trade dress, as Plaintiff expressly relies on these aspects of the gel beads in its

infringement allegations. See, e.g., FAC, ⁋ 26 (“Veridian’s adoption of a pack appearance …

including the same bead color, bead size, and relative pack dimensions and thickness, is likely to

cause confusion with, and therefore infringes, TheraPearl’s trade dress rights.”) However, Plaintiff

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fails to explain how these characteristics are non-functional. See FAC, ¶¶ 11, 53 (providing

nothing more than a conclusory and unsupported statement that the product configuration trade

dress is non-functional.) The purpose of the products at issue is to allow the product to contour to

an area on a person’s body to provide hot/cold therapy. The size and shape of the beads are critical

features for performance of such function. For example, if large square beads were utilized instead

of small round ones, the product would not be able to perform as intended.

Accordingly, the FAC lacks sufficient allegations of non-functionality, and therefore, the

Court should dismiss Plaintiff’s trademark infringement claim, Count Two. See e.g., Shock-Tek,

L.L.C. v. Trek Bicycle Corp., No. 01-cv-71986, 2001 WL 1680191, at *2 (E.D. Mich. Dec. 18,

2001), aff’d, 120 F. App’x 346 (Fed. Cir. 2005) (dismissing the plaintiff’s trade dress claim,

finding, inter alia, that the plaintiff failed to allege that the features of bicycle glove at issue were

not functional).

B. PLAINTIFF’S ALLEGATIONS FOR PRODUCT PACKAGING

TRADE DRESS INFRINGEMENT FAIL TO STATE A CLAIM

1. Plaintiff fails to clearly articulate its product packaging trade

dress.

As with its product configuration trade dress claims, Plaintiff also fails to clearly articulate

the alleged trade dress in its product packaging. Since the outset of this case, Plaintiff has

described its purported product packaging trade dress in no less than three different ways. First,

in its original Complaint, Plaintiff alleged that its packaging trade dress included five different

elements of the packaging, and all but one focused on color as a feature. (See ECF No. 1, ⁋ 10).

Then Plaintiff, implicitly acknowledging that its packaging trade dress claim was insufficient,

amended its complaint to include additional allegations, such as, that the word Therapearl is

“cradled by a curved, grey ornamental element,” “the appearance of a circular ornamental feature

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in the lower half of the packaging” and “an aligned three-bullet point list of treatment suggestions.”

FAC, ⁋ 10. Further, as third alternative, Plaintiff alleges that the packaging trade dress is the “the

collective impression that such trade dress elements supply to a consumer.” (Id.) Additionally,

Plaintiff improperly leaves open the possibility of further shifting its defined trade dress, by noting

the trade dress “includes” the articulated elements, rather than constitutes them. (Id.)

Despite Plaintiff’s amendment and improper, scattershot approach to pleading, Plaintiff

still fails to state a viable packaging trade dress claim. Specifically, Plaintiff’s abstract and

undefined descriptions of its alleged packaging trade dress are inadequate to provide Veridian

proper notice of exactly what Plaintiff is claiming as its alleged trade dress and how Veridian’s

own product packaging allegedly infringes. See e.g., Homeland Housewares, LLC, 2014 WL

6892141, at *3. Accordingly, Plaintiff fails to set forth a viable packing trade dress claim, and as

such, the Court should dismiss Count Two. See e.g., Piku, 15 F. Supp. 3d at 746 (E.D. Mich.

2014).

2. Plaintiff fails to adequately plead that its product packaging

trade dress has acquired secondary meaning.

To be entitled to legal protection, a plaintiff’s trade dress must either be inherently

distinctive or have acquired secondary meaning in the public’s mind. See Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 769 (1992); see also Thomas & Betts Corp. v. Panduit Corp., 138

F.3d 277, 284–85 (7th Cir. 1998). Product design “is not inherently distinctive,” and therefore,

those asserting rights in product-design trade dress, like Plaintiff, must establish secondary

meaning. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212-13, 15 (2000)

(“[A] product’s design is distinctive, and therefore protectable, only upon a showing of secondary

meaning.”).

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A trade dress acquires secondary meaning when “[t]he design or packaging of a product

[acquires] a distinctiveness which serves to identify the product with its manufacturer or source[.]”

TrafFix Devices, Inc., 532 U.S. at 28. Here, however, Plaintiff fails to allege any significant

development, advertising, promotion, or recognition that would result in its packaging acquiring

secondary meaning. Rather, Plaintiff only discusses efforts to develop, market, and sell its product.

See generally FAC. Such allegations patently fail to show how Plaintiff’s packaging has achieved

secondary meaning. For example, Plaintiff devotes several paragraphs to its product marketing

efforts (see FAC, ⁋⁋ 14-19), including that it “has spent millions of dollars promoting and selling

its … products[;]” however, the FAC is void of any allegation that Plaintiff has undertaken any

such efforts with regard to its packaging and Plaintiff fails to allege how its purported product

marking efforts relate to Plaintiff’s alleged packaging trade dress claim. See id. (emphasis added).

Plaintiff also states that its “products have also appeared in television programs[;]” (id. ⁋ 16) but

again Plaintiff fails to contend or even suggest that these television appearances included the

product packaging, as opposed to just the product itself. Further, Plaintiff contends that it and its

licensees have been the “exclusive source of gel bead-containing hot and cold packs” in the United

States for “more than nine years” (id., ⁋ 14); however, Plaintiff never contends that it and “its

licensees” utilize the same or similar packaging. See id. Moreover, Plaintiff claims that others

have licensed the product configuration trade dress, but Plaintiff makes no similar claim about the

product packaging. See id., ⁋ 17. Finally, as evidenced by the FAC, Plaintiff encourages customers

to focus on the gel beads as opposed to its packaging, as Plaintiff states that “since 2012,

TheraPearl’s website and electronic advertisements have both directed consumers to ‘look for’

TheraPearl’s beads, because they are TheraPearl’s source identifier. FAC, ⁋ 12. Plaintiff further

states that “[t]he distinct ornamental appearance of our pearls is our trademark, and it’s how

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consumers recognize our product in stores. (Id. (emphasis in original).) Therefore, Plaintiff’s

packaging is not is source identifier.

Accordingly, Plaintiff fails to adequately plead facts that would plausibly support a finding

that its product packaging has achieved secondary meaning, and therefore, Plaintiff’s product

packaging trade dress claims must be dismissed. See e.g., Urban Grp. Exercise Consultants, Ltd.

v. Dick's Sporting Goods, Inc., No. 12-cv-3599, 2013 WL 866867, at *3 (S.D.N.Y. Mar. 8, 2013)

(dismissing plaintiff’s trade dress claim, finding that the complaint did “not contain allegations

sufficient to plead the existence of secondary meaning for the alleged trade dress”); see also

Heptagon Creations, Ltd. v. Core Grp. Mktg. LLC, No. 11-cv-01794 LTS, 2011 WL 6600267, at

*7 (S.D.N.Y. Dec. 22, 2011), aff’d, 507 F. App’x 74 (2d Cir. 2013) (holding that the plaintiff

“failed to allege that the claimed trade dresses have secondary meaning” and dismissing the

plaintiff’s trade dress claim); Eyal R.D. Corp. v. Jewelex New York Ltd., 784 F. Supp. 2d 441, 448

(S.D.N.Y. 2011) (dismissing the plaintiff’s trade dress infringement claim, finding, inter alia, that

the complaint “alleged no facts to support a plausible inference that the [product at issue] has

acquired secondary meaning”).

C. PLAINTIFF’S UNFAIR COMPETITION CLAIMS FAIL FOR THE

SAME REASONS AS ITS LANHAM ACT CLAIMS

Counts Three, Four, and Five allege deceptive practices and unfair competition claims

under Illinois law. See FAC, ⁋⁋ 56-78. Each of these claims relies, in part, on the same trade dress

allegations alleged in Count Two under the Lanham Act. Id. at ⁋⁋ 59, 67, 76. Where a plaintiff’s

allegations for its Illinois Uniform Deceptive Trade Practices Act and Illinois Consumer Fraud Act

claims also form the basis for plaintiff’s claim under the Lanham Act, the legal inquiry is the same.

See MJ & Partners Rest. Ltd. P’ship v. Zadikoff, 10 F. Supp. 2d 922, 929 (N.D. Ill. 1998) (“the

legal inquiry is the same under the Lanham Act as under the Consumer Fraud Act and the

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Deceptive Trade Practices Act.”). Furthermore, “[a] common law unfair competition claim need

not be separately addressed since it is codified by the Deceptive Trade Practices Act.” Id. Thus,

Plaintiff’s unfair competition and deceptive business practices claims should be resolved according

to the principles set forth under the Lanham Act. See SB Designs v. Reebok Int’l, Ltd., 338 F.

Supp. 2d 904, 914 (N.D. Ill. 2004). As demonstrated above, Plaintiff’s trademark infringement

claim (Count Two) fails, and therefore, Plaintiff’s unfair competition and deceptive business

practices claims also fail. Accordingly, the Court should dismiss Counts Three, Four, and Five of

the FAC. See Spex, Inc. v. Joy of Spex, Inc., 847 F. Supp. 567, 579 (N.D. Ill. 1994) (holding that

because the plaintiff’s Lanham act claim failed, the [p]laintiff cannot prevail on its claims under

the Deceptive Trade Practices Act or The Consumer Fraud and Deceptive Business Practices

Act.”).

CONCLUSION

For the foregoing reasons, Defendant respectfully requests that the Court grant its Motion

and enter an order dismissing Counts Two through Five of the First Amended Complaint with

prejudice.

Dated: December 13, 2018 DENTONS US LLP

By: /s/ Timothy J. Carroll

Timothy J. Carroll
Kristine M. Schanbacher
233 South Wacker Drive, Suite 5900
Chicago, IL 60606
Tel.: (312) 876-2544
Fax.: (212) 768-6800

Brian R. McGinley (pro hac vice)

Kate E. Hart
4520 Main St., Ste. 1100
Kansas City, MO 64111
Tel.: (816) 460-2400
Fax.: (816) 531-7545

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CERTIFICATE OF SERVICE

I, Timothy J. Carroll, an attorney, hereby certify that on December 13, 2018, I caused a copy

of the foregoing to be filed with the Court’s CM/ECF system, which will automatically serve and

send e-mail notification of such filing to all registered attorneys of record.

/s/ Timothy J. Carroll

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