EZ Pedo, Inc. v. Mayclin Dental Studio, Inc.

Filing 60

ORDER signed by District Judge Kimberly J. Mueller on 2/14/2018 GRANTING 42 Motion for Partial Summary Judgment. The DOE defendants are DISMISSED. The Final Pretrial Conference on plaintiff's remaining claims is set for 3/15/2018 at 2:30 p.m., with a jury trial date to be set at the pretrial conference. The parties' joint pretrial statement is due seven days before the conference. (Zignago, K.)

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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EZ PEDO, Inc., a California corporation,

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No. 2:16-cv-00731-KJM-CKD

Plaintiff,
v.

ORDER

MAYCLIN DENTAL STUDIO, INC., a
Minnesota corporation, individually and
dba KINDER KROWNS; and DOES 110,1
Defendants.

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The parties sell similar pediatric dental crowns. Plaintiff EZ-Pedo, Inc. sues

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defendant Mayclin Dental Studio, Inc. for copying the “look and feel” of its dental crown

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advertisements. Specifically, plaintiff brings trade dress and trademark infringement claims, state

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and federal unfair competition and false advertising claims, and deceptive trade practice claims.

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Defendant moves for partial summary judgment, arguing three specific advertisements are not

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Plaintiff has neither identified the DOE defendants, nor shown good cause for their
missing identities. The federal rules provide for dismissing unnamed defendants that, absent
good cause, are not served within 90 days of the complaint. Fed. R. Civ. P. 4(m). Accordingly,
the DOE defendants will be DISMISSED.
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protectable trade dress or trademarks. Mot., ECF No. 42. Plaintiff opposes. Opp’n, ECF No. 45.

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The court heard oral argument on May 5, 2017. ECF No. 48.

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As explained below, the court GRANTS defendant’s motion.
I.

BACKGROUND
A.

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Parties
EZ-Pedo is a California corporation that manufactures and markets “prefabricated

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pediatric zirconia crowns,” which are colorless, durable, all-ceramic crowns that mask

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disfiguration or stains on children’s teeth. See Compl., ECF No. 1, ¶ 5.2 EZ-Pedo sells its

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pediatric zirconia crowns to dentists throughout the United States. Id. ¶¶ 11, 12. Defendant is a

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Minnesota corporation and competitor that sells similar pediatric zirconia crowns under the

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business name Kinder Krowns. Id. ¶ 6.

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B.

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The Parties’ Dispute
EZ- Pedo asserts defendant has intentionally copied four of EZ-Pedo’s dental

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crown advertisements, and brings eight claims: Three federal Lanham Act claims, brought under

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15 U.S.C. § 1051 et seq., three California law claims and two Minnesota law claims. See id.

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¶¶ 48-85 Defendant moves for partial summary judgment on a discrete issue: Whether plaintiff

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owns valid and protectable trademark or trade dress rights in three of the four advertisements it

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alleges defendant copied, as is required to succeed on plaintiff’s Lanham Act claims. See

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generally Mot. Plaintiff’s opposition focuses only on trade dress, not trademark. See generally

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Opp’n. When asked at hearing, plaintiff’s counsel confirmed its focus is solely on trade dress.

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The court thus treats plaintiff’s omission of any trademark discussion as a concession that its

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Lanham Act claims as to the three advertisements at issue here derive exclusively from trade

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dress rights. See United States v. Kitsap Physicians Serv., 314 F.3d 995, 999 (9th Cir. 2002)

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(omitting evidence in summary judgment opposition brief constitutes waiver of arguments

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Because the formal statement of undisputed facts omits basic, undisputed background
information, the court cites plaintiff’s complaint for certain information. See generally Compl.
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relating to that evidence). This order therefore assesses whether a reasonable fact finder could

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find the three advertising campaigns constitute protectable trade dress.

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C.

EZ-Pedo’s Claimed Trade Dress

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1.

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Plaintiff’s claimed “Beach Girl” trade dress derives from an advertisement that

“Beach Girl”

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centers on a stock photograph of a young girl on the beach that plaintiff downloaded in December

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2013 from a third-party website, iStockphoto.com. Statement of Undisputed Facts (“SUF”) 2,

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ECF No. 43; see also Pl.’s SUF Responses, ECF No. 45-1. Plaintiff did not create or take this

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photograph, see SUF 2-3, nor does the record show plaintiff owns or owned exclusive rights to it.

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Although EZ-Pedo has never printed the Beach Girl image on its product packaging, SUF 14,

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beginning in March 2014, EZ-Pedo used the Beach Girl advertisement in print distributed at the

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2014 annual meetings of the California Society of Pediatric Dentistry (“CSPD”) and the

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American Academy of Pediatric Dentistry (“AAPD”); both organizations also featured the Beach

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Girl advertisement in their trade journals; and EZ-Pedo displayed the image on secondary pages

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of EZ-Pedo’s website. Fisher Decl.,3 ECF No. 45-3, ¶¶ 9-10. For years, pediatric crown

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manufacturers, including plaintiff and defendant, have used photos of children to market and

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promote pediatric crowns, and the photos have appeared in trade journals and magazines.

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SUF 15-16 (citing pediatric dentist trade journal photos of smiling children contained in

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defendant’s Exhibits I and Q attached to ECF No. 44, and deposition excerpts attached as

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Exhibits N, R, P to ECF No. 44).

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Plaintiff contends it stopped investing in this trade dress within four months after

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its first use, in July 2014, after discovering defendant had copied it for use and displayed it in

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AAPD’s July 2014 print journal. Fisher Decl. ¶¶ 13-14.

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Jeffrey Fisher is a co-founder and the director of EZ-Pedo, Inc. Fisher Decl. ¶ 1.
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Plaintiff’s Beach Girl Advertisement

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Defendant’s Alleged Infringing Copy

See id. ¶ 13 (Figure 2).

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2.

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Plaintiff crafted its claimed Gears trade dress in mid-2014. Id. ¶ 17. This design

“Gears”

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appears in an advertisement that depicts a photograph of metal gears plaintiff downloaded from a

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third-party website; the photograph is placed beside the slogan, “engineered for a precision fit,”

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which plaintiff first used in flyers, brochures and on secondary website pages, in mid-2014. SUF

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19, 22. Plaintiff has never used this image on product packaging. SUF 21. Plaintiff contends it

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stopped using this trade dress in June 2015, after discovering defendant had copied it to advertise

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its “Less Prep” crown line on its company website. Fisher Decl. ¶¶ 18-19. As shown below,

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plaintiff’s Gears advertising incorporates images of two white tooth crowns viewed from the side;

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Defendant’s incorporates an image of a blue crown viewed from the bottom.

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Plaintiff’s Gears Advertisement

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See Fisher Decl. ¶ 18 (Figure 4).

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3.

Defendant’s Alleged Infringing Copy

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“Blue CAD”

Plaintiff’s claimed “Blue CAD” trade dress depicts a computer-aided drawing

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(“CAD”) of a deep-blue-colored tooth with visible contours. See Compl. ¶¶ 35-40. The software

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program “3Shape 3D Viewer,” through which the drawing was created, opens in such a manner to

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display images as one of three default color choices: Purple, grey or deep blue, with the actual

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color applied to the image selected by the user. See Vladimir Scherbak Decl., ECF No. 45-6,

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¶ 6(b)-(g). Plaintiff first used this Blue-CAD image at a trade show in mid-2013. Fisher Decl. ¶

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5. Then, in 2014, plaintiff began associating the Blue-CAD image with a specific “V2” crown

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line. Id. ¶ 6. The Blue-CAD image was featured in plaintiff’s print advertising, trade-show

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banners, brochures, flyers and on its website. Id. (“[w]e used it in thousands of printed materials

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that were distributed to pediatric dentists at trade shows, in flyers, and through other media”);

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SUF 25. Plaintiff has never displayed the Blue-CAD image on its physical products or product

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packaging. Plaintiff says it did start placing small blue dots on its V2 crowns in 2014; these dots,

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however, are not depicted in the summary judgment record, and there is no representation they

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are shaped like a tooth. See Fisher Decl. ¶ 7; see also Pl.’s Ex. A (attached to Fisher Decl.), ECF

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No. 45-4. Plaintiff contends defendant began copying the Blue-CAD advertisement in May 2014,

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by using the image shown below on its website, www.kinderkrowns.com, to market and sell its

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own line of “Less Prep” crowns. Fisher Decl. ¶ 8.

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Plaintiff’s Blue-CAD Image

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Defendant’s Alleged Infringing Copy

See id. (Figure 1).

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As noted, defendant moves for summary judgment on all Lanham Act claims

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deriving from these three advertisements, contending plaintiff has not shown any of them

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constitutes protectable trade dress.

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II.

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LEGAL STANDARDS
A.

Summary Judgment
A court will grant summary judgment “if . . . there is no genuine dispute as to any

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material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).

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The “threshold inquiry” is whether “there are any genuine factual issues that properly can be

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resolved only by a finder of fact because they may reasonably be resolved in favor of either

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party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).

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The moving party bears the initial burden of showing the district court “there is an

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absence of evidence to support the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S.

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317, 325 (1986). Then the burden shifts to the non-movant to show “there is a genuine issue of

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material fact . . . .” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585 (1986).

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In carrying their burdens, both parties must “cit[e] to particular parts of materials in the

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record . . .; or show [] that the materials cited do not establish the absence or presence of a

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genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.”

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Fed. R. Civ. P. 56(c)(1); see also Matsushita, 475 U.S. at 586 (“[the non-movant] must do more

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than simply show that there is some metaphysical doubt as to the material facts”). Also, “[o]nly

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disputes over facts that might affect the outcome of the suit under the governing law will properly

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preclude the entry of summary judgment.” Anderson, 477 U.S. at 247-48.

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In deciding summary judgment, the court draws all inferences and views all

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evidence in the light most favorable to the non-movant. Matsushita, 475 U.S. at 587-88. “Where

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the record taken as a whole could not lead a rational trier of fact to find for the [non-movant],

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there is no ‘genuine issue for trial.’” Id. at 587 (quoting First Nat’l Bank of Ariz. v. Cities Serv.

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Co., 391 U.S. 253, 289 (1968)).

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B.

Trade Dress Protection
The Lanham Act is the federal statute governing trademark and trade dress

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protection, unfair competition and false advertising. See 15 U.S.C. § 1051 et seq. The Act

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defines when trademark and trade dress owners are entitled to federal judicial protection against

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infringement. A trademark can be a word, such as the brand name “McDonald’s”; a phrase, such

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as “I’m lovin’ it”; a logo, such as golden arches; a symbol; or some other mark that identifies the

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mark’s owner as a product’s source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,

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209 (2000) (citing 15 U.S.C. § 1127 for legal definition of trademark, which says “any word,

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name, symbol, or device, or any combination thereof [used or intended to be used] to identify and

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distinguish [a producer’s] goods . . . from those manufactured or sold by others and to indicate the

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source of the goods . . . .”). The Act prohibits competitors from copying trademarks another

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competitor has registered, if such copying would confuse consumers about the product’s origin.

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15 U.S.C. § 1114 (2006) (trademark infringement).

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The Lanham Act also protects against infringing upon a seller’s unregistered trade

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dress. 15 U.S.C. § 1125(a) (2012); see also Wal-Mart Stores, Inc., 529 U.S. at 209 (citing

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15 U.S.C. § 1125(a)). Trade dress protection is broader than that for trademarks: Trade dress

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protection pertains to a product’s image and overall impression; trademark protection pertains to a

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product’s particular features. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992);

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Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th Cir. 2001) (“Trade dress

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refers generally to the total image, design, and appearance of a product and may include features
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such as size, shape, color, color combinations, texture, or graphics.”) (citation and quotations

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omitted). At trial, a trade dress infringement plaintiff has the burden to prove, by a

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preponderance of the evidence, that (1) its claimed trade dress is distinctive; (2) plaintiff owns the

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claimed trade dress; (3) the trade dress is nonfunctional; and (4) the defendant’s use of a similar

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trade dress, without plaintiff’s consent, is likely to cause consumer confusion as to “the source,

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sponsorship, affiliation, or approval” of plaintiff’s goods. See 9th Cir. Model Civ. Jury Instr. 15.7

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(2017) (citing 15 U.S.C. § 1125(a)(1)).

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Trade dress most commonly pertains to tangible items such as product design and
product packaging. See, e.g., Qualitex v. Jacobson Prods., 514 U.S. 159, 166 (1995) (dry

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cleaning pads’ green-gold color scheme); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792,

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808 (9th Cir. 2003) (Barbie doll’s distinctive appearance); Vision Sports, Inc. v. Melville Corp.,

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888 F.2d 609, 613-15 (9th Cir. 1989) (clothing logo’s color scheme and graphics); Ambrit, Inc. v.

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Kraft, Inc., 812 F.2d 1531, 1535-37 (11th Cir. 1986) (Klondike ice cream bar’s size; silver, blue

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and white wrapper; the foil’s pebbled texture; polar bear and sunburst images). But unique

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arrangements and displays may also constitute trade dress. See, e.g., Two Pesos, 505 U.S. at 763

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(Mexican restaurant chain’s look and décor); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526,

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542 (5th Cir. 1998) (golf course layout); Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F.

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Supp. 2d 431 (S.D.N.Y. 2000) (wine shop bottle display).

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Although the parties have not identified, and the court has not found, any case law

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extending trade dress protection to promotional flyers or advertisements, as EZ-Pedo contends the

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court should do here, the closest analogues appear to be the Eleventh Circuit’s extension of trade

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dress protection to a “marketing idea,” in Orig. Appalachian Artworks, Inc. v. Toy Loft, Inc.,

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684 F.2d 821, 831 (11th Cir. 1982), and the increasing acceptance of trade dress protection for a

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website’s overall look and feel, see, e.g., Lepton Labs, LLC v. Walker, 55 F. Supp. 3d 1230, 1239

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(C.D. Cal. 2014) (website’s features and functionality).

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Despite the potential breadth of trade dress protection, this Lanham Act provision

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is not an invitation to shotgun litigation: Claimants bear a strenuous burden to show the claimed

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trade dress serves the role of identifying the owner as a source, either by showing the trade dress
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is inherently distinctive or that over time it has acquired distinctiveness, also known as secondary

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meaning. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 (2001); Wal-Mart, 529

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U.S. at 211.

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III.

ANALYSIS

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Defendant through its motion challenges EZ-Pedo’s ability to claim that trade

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dress protection applies to its Blue CAD, Beach Girl and Gears images. The core dispute centers

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on whether EZ-Pedo can satisfy the essential requirement of distinctiveness by meeting its burden

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to show the images are distinctive, either inherently or by virtue of having attained secondary

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meaning.

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A.

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Inherent Distinctiveness
EZ-Pedo argues each one of its three advertisements qualifies as inherently

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distinctive trade dress because each contains “beautiful, glamorous, fanciful, recognizable”

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imagery. Opp’n at 7.

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Proving inherent distinctiveness is demanding. To be inherently distinctive,

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claimed trade dress must be so unique, in context, that a buyer will rely on it to differentiate the

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source of the product with which it is associated. Wal-Mart, 529 U.S. at 213; cf. AmBrit, Inc.,

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812 F.2d at 1536 (emphasizing uniqueness of ice cream wrapper; explaining it is “not a basic

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shape or common design. Rather . . . [the] wrapper with its square size, bright coloring, pebbled

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texture, polar bear and sunburst images, and distinctive style of printing is a complex composite

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of size, color, texture and graphics.... [creating] a distinctive visual impression[.]”) (citation

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omitted). The Supreme Court has cautioned against applying vague tests for inherent

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distinctiveness, noting such tests “facilitate[] plausible threats of suit against new entrants based

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upon alleged inherent distinctiveness[,]” which in turn stifles competition. Wal–Mart, 529 U.S. at

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213; cf. Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987)

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(explaining, before Wal-Mart decided, that “overall impression may receive protection,” but

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denying such protection where the claimed trade dress “was simply not the sort of arbitrary or

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uncommon trade dress that might qualify as inherently distinctive.”) (citation omitted)).

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Since Wal-Mart, the Ninth Circuit has not revisited the articulation of a trade dress

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claimant’s burden in proving inherent distinctiveness, but district courts within the circuit have

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interpreted the term as requiring manifestly unique arrangements. See Morton & Bassett, LLC v.

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Organic Spices, Inc., No. 15-CV-01849-HSG, 2017 WL 1425908, at *6 (N.D. Cal. Apr. 21,

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2017) (defining the ultimate question as “whether the . . . combination of elements is so unique,

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unusual or unexpected in this market that one can assume without proof that it will automatically

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be perceived by customers as an indicator of origin[.]”) (citations and quotations omitted);

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Homeland Housewares, LLC v. Euro-Pro Operating LLC, 2014 U.S. Dist. LEXIS 156675, at

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*8-9 (C.D. Cal. Nov. 5, 2014) (faulting plaintiff for not “clearly articulat[ing] what comprises

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their claimed trade dress” and “not sufficiently identify[ing] the particular elements of the

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packaging that they seek to protect”); Spark Indus., LLC v. Kretek Int’l, Inc., No. CV 14-5726-

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GW ASX, 2014 WL 4365736, at *8 (C.D. Cal. Aug. 28, 2014) (“Spark is left with a fairly routine

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color scheme, graphic layout, and choice of font. . . .if the Court were to presume source

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identification based on these mundane differentiating characteristics, the Court does not see what

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types of trade dress would not be inherently distinctive.”) (original emphasis).

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Courts elsewhere also have required a claimant do more than just point to the

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“overall look”; it must “articulat[e] the specific elements which comprise its distinct dress.”

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Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997); see also Fair

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Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 306 (3d Cir. 2014) (“[I]t is the plaintiff’s duty to

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articulate the specific elements which comprise its distinct dress.”) (brackets and quotations

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omitted); Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) (requiring

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specific list of elements that comprise trade dress; warning “[i]t will not do to solely identify in

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litigation a combination as ‘the trade dress.’”) (citation omitted); see also J. Thomas McCarthy,

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McCarthy on Trademarks and Unfair Competition § 8:3 (4th ed. 2014) (“[T]he discrete elements

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which make up the [trade dress claim] should be separated out and identified in a list.”).

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Here, EZ-Pedo has not done enough to withstand summary judgment based on
inherent distinctiveness. EZ-Pedo merely brands each advertisement in its entirety as trade dress,

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rather than defining what shapes, sizes, dimensions or specific elements within each

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advertisement combine to create a distinctive trade dress. See Opp’n at 8.

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Specifically, EZ-Pedo’s claimed Beach Girl trade dress contains a single stock

Beach Girl

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photograph of a child on a beach that plaintiff downloaded from a third-party website. SUF 3, 5.

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Also, just below the photograph, there are white tooth composites, dark-colored text describing

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these zirconia crowns and EZ-Pedo’s logo and contact information. SUF 3, 5; Opp’n at 10.

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Although EZ-Pedo describes the advertisement using adjectives like “unique” and “distinctive,”

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without specificity the court cannot evaluate whether the claimed trade dress is inherently

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distinctive. As currently defined, the court and competitors remain in the dark as to what

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EZ-Pedo purports to own. Are competitors never to advertise using the same third-party stock

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photograph? Can they use the same photograph, but pair it with different text, logo and company

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information?

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2.

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EZ-Pedo’s claimed Gears trade dress is also vaguely defined. The Gears

Gears

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advertisement depicts a graphic of gears accompanied by an “engineered for” slogan. Plaintiff

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has not shown what elements combine with this slogan to create protectable trade dress. For

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instance, is plaintiff claiming to own the right to arrange any image of metallic gears next to a

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slogan containing the words “engineered for”? Does the font matter? Do the color, size and

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shape of the gears matter? Can the word “engineered” be used without the preposition “for”?

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3.

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The Blue CAD trade dress likewise lacks detail. It is unclear whether plaintiff’s

Blue CAD

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claimed trade dress focuses on computer-aided shaded teeth with the same vertices and angles, or

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only when depicted in the same deep-blue color. Can a competitor use the same image, but in

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deep red?

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4.

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Without the requisite specificity plaintiff’s trade dress claims cannot proceed to

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Conclusion

trial under an inherent distinctiveness theory. See Savant Homes, Inc. v. Collins, 809 F.3d 1133,
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1149 (10th Cir. 2016) (affirming summary judgment denial; emphasizing no genuine triable issue

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where claimant specifically listed purportedly distinctive elements but advanced no “facts

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indicating that these nine elements are original or unique so as to make the alleged trade dress

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inherently source-identifying.”). Courts routinely refuse to advance such vaguely defined claims

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because “[w]ithout . . . a precise expression of the character and scope of the claimed trade dress

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. . . courts will be unable to evaluate how unique and unexpected the design elements are in the

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relevant market.” Landscape Forms, 113 F.3d at 381 (vacating preliminary injunction). ”Courts

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will also be unable to shape narrowly-tailored relief if they do not know what distinctive

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combination of ingredients deserves protection.” Id. “And if a court is unable to identify what

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types of designs will infringe a trade dress, how is a competitor . . . to know what new designs

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would be subject to challenge . . . ?” Yurman Design, 262 F.3d at 117 (citation omitted) (partially

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reversing court’s judgment notwithstanding verdict); see also Jeffrey Milstein, Inc. v. Greger,

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Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995) (affirming dismissal with prejudice; warning

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courts against overextending trade dress protection to overgeneralized ideas, as doing so could

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“t[ie] up a product or marketing idea” and “undermine” laws designed to avoid monopolizing

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products and ideas). Vague descriptions may also cause “jurors viewing the same line of

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products [to] conceive the trade dress in terms of different elements and features” and so the

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verdict may drive from “inconsistent findings.” Yurman Design, 262 F.3d at 117.

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In sum, because it has not clearly defined its claimed trade dress, plaintiff has

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raised no triable issue as to inherent distinctiveness. See Abercrombie & Fitch Stores, Inc. v. Am.

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Eagle Outfitters, Inc., 280 F.3d 619, 634 (6th Cir. 2002) (explaining the inability to describe

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exactly which design aspects merit protection signals an improperly general claim) (citation

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omitted). The court grants summary judgment for defendant on this theory.

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B.

Secondary Meaning
Even if a claimed trade dress is not inherently distinctive, a claimant may prove

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acquired distinctiveness over time, also known as “secondary meaning.” Wal–Mart Stores, 529

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U.S. at 211. Trade dress develops secondary meaning “when in the minds of the public, the

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primary significance of the [claimed trade dress] is to identify the source of the product rather
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than the product itself.” Id. (citation and quotations omitted). To survive summary judgment, the

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claimant must file sufficient evidence to allow a reasonable juror to find that a “substantial

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segment of consumers and potential consumers” associate the alleged trade dress with a single

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source of the product. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985)

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(citation and quotations omitted); see also Savant Homes, 809 F.3d at 1141 (granting summary

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judgment where plaintiff raised no factual issue as to secondary meaning); PaperCutter, Inc. v.

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Fay’s Drug Co., 900 F.2d 558, 564 (2d Cir. 1990) (“The existence of secondary meaning is a

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question of fact with the burden of proof on the party claiming exclusive rights in the

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designation.”). Secondary meaning can be established through direct evidence, such as consumer

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surveys or consumer testimony, or through circumstantial evidence, such as the “length of time

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the mark has been used, the extent of advertising, and the volume of sales[.]” Levi Strauss & Co.

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v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985) (citation and quotations omitted).

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Evidence the defendant deliberately copied the claimed trade dress may, when accompanied by

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other corroborating evidence, permit the court to infer the trade dress had acquired secondary

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meaning. Fuddruckers, 826 F.2d at 844-45 (explaining evidence of copying, without more, does

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not prove secondary meaning; “[c]ompetitors may intentionally copy product features for a

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variety of reasons unrelated to secondary meaning”); cf. Clicks, 251 F.3d at 1262, 1264 (claimant

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entitled to inference of secondary meaning based on evidence of intentional imitation paired with

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“substantial evidence” from consumer surveys showing “trade dress . . . had acquired secondary

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meaning.”).

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Here, EZ-Pedo raises no triable issue regarding secondary meaning. Not one of its

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promotional advertisements was on the market for more than a year before the alleged

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infringements happened. Fisher Decl. ¶¶ 5, 8, 13, 17-18; Braun Inc. v. Dynamics Corp. of Am.,

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975 F.2d 815, 826 (Fed. Cir. 1992) (“A claim of trade dress infringement fails if secondary

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meaning did not exist before the infringement began). Rather, EZ-Pedo concedes its Blonde Girl

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trade dress had been in use for only four months, from March to July of 2014, before discovering

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defendant’s similar image, id. ¶¶ 13-14; its Gears trade dress had been in use for less than a year,

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from mid-2014 through June 2015, before the alleged infringement, id. ¶¶ 17-19; and its Blue
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CAD trade dress, though first used in mid-2013, was only consistently displayed beginning in

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2014, and the alleged infringement occurred in May 2014, id. ¶¶ 5-8. Considering secondary

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meaning is something acquired through “long use and favorable acceptance,” the short timeframe

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of EZ-Pedo’s use alone is potentially fatal to its claims. Vuitton Et Fils S.A. v. J. Young Enterp.,

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Inc., 644 F.2d 769, 777 (9th Cir. 1981); see also Co-Rect Prod., Inc. v. Marvy! Advert.

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Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 1985) (“To establish secondary meaning, the

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user must show that the mark or symbol by long and exclusive use[.]”) (citations and quotations

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omitted).

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Courts frequently reject secondary meaning claims based on similarly short

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periods. See, e.g., Braun, 975 F.2d at 826 (rejecting secondary meaning argument despite

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evidence of unsolicited media coverage, television and newspapers advertisements, and sales

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success; noting “it is difficult for a product to acquire secondary meaning during an 18-month

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period.”); Cicena Ltd. v. Columbia Telecomm. Grp., 900 F.2d 1546, 1551 (Fed. Cir. 1990) (use

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for only 18 months is “evidence pointing strongly away from a finding of secondary meaning”);

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Burke–Parsons–Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 595–96 (6th Cir.

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1989) (characterizing 20 months as “very short” and deeming it strong evidence against inferring

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secondary meaning); Co–Rect Products, 780 F.2d at 1332 (affirming summary judgment for

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defendant; finding “ten months is simply not sufficient time to establish secondary meaning in the

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market place.”) (citation omitted).

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Compounding this potential fatality is the weak nexus between the claimed trade

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dress and the source the trade dress purportedly identifies. First, there is no consistent theme

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between the three advertisements, thus diminishing the possibility that consumers associated

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these advertisements with the same source. Indeed, each advertisement drastically differs from

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the other two—a blonde girl on the beach, a deep-blue-shaded tooth, and gears next to an

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“engineered for” slogan. Second, not one of these advertisements was ever placed on EZ-Pedo’s

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product or product packaging, further weakening any association. Although plaintiff maintains it

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started placing small blue dots on some of its smaller dental crowns to associate the product with

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the Blue-CAD campaign, this argument is unavailing considering plaintiff has filed no evidence

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or images pertaining to these alleged blue dots. See Fisher Decl. ¶ 7 & Ex. A.

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Moreover, the record is completely devoid of direct evidence suggesting any

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consumer, let alone “a substantial portion” of consumers, associates any of the alleged trade dress

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with the EZ-Pedo brand. Cf. Clicks, 251 F.3d at 1262 (finding “substantial evidence” of

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secondary meaning; “Chief among this evidence was a survey . . . purporting to demonstrate that

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patrons associated the look of Clicks with that establishment and not others.”). Instead, EZ-Pedo

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has filed a single declaration from its founder, stating “[t]he pediatric dentistry community has

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come to associate the Blue Crown CAD imagery with EZ-Pedo’s products. I know this . . . from

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specific conversations I have had with purchasing pediatric dentists who have stated they

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recognize the Blue Crown CAD as symbolizing our products.” Fischer Decl. ¶ 7. This vague,

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self-serving declaration pertaining to a single advertisement, without any consumer confirmation,

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raises no triable issue. See Seirus Innovative Accessories, Inc. v. Gordini U.S.A. Inc., 849 F.

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Supp. 2d 963, 985 (S.D. Cal. 2012) (rejecting similarly vague, self-serving declaration).

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While EZ-Pedo’s founder also emphasizes how frequently EZ-Pedo printed and

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disbursed the claimed trade dress and highlights which trade journals featured the trade dress, this

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effort does not salvage these claims. See Fisher Decl. ¶ 6. Although sales success, advertising

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expenditures and media coverage may show consumers were so exposed to trade dress that they

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have come to associate it with a single source, the evidence here does not support the possibility

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of such a finding. EZ-Pedo’s evidence again consists solely of the one self-serving declaration

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containing vague, conclusory facts without any supporting evidence. Fisher Decl. ¶¶ 3, 6 (citing

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“thousands” of printouts and claiming EZ-Pedo spent “substantial time and energy” promoting

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the imagery). Second, that each advertisement was on the market a year at most tempers

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EZ-Pedo’s claim that it expended “substantial” time and money acquiring an association in

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consumers’ minds between it and its products. Third, “prominent display” in a trade journal, see

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Fisher Decl. ¶ 12, is not the kind of media coverage that shows the “enthusiasm and loyalty” of

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plaintiff’s customers. Cicena Ltd. v. Columbia Telecommunications Grp., 900 F.2d 1546, 1551

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(Fed. Cir. 1990).
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1

Based on the record before the court, no reasonable juror could find EZ-Pedo’s

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claimed Beach Girl, Gears or Blue CAD trade dress has acquired secondary meaning. The court

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therefore will not infer secondary meaning based on the evidence that defendant imitated the

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claimed trade dress. See Fuddruckers, 826 F.2d at 844-45 (”Competitors may intentionally copy

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product features for a variety of reasons unrelated to secondary meaning”).. Summary judgment

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for defendant is warranted as to this theory as well.

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IV.

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CONCLUSION
Because plaintiff raises no triable issues regarding either inherent or acquired

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distinctiveness as to its claimed Beach Girl, Gears and Blue CAD trade dress, the court GRANTS

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defendant’s partial summary judgment motion. Plaintiff’s Lanham Act claims remain only to the

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extent they derive from the one advertising campaign defendant’s motion does not address,

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plaintiff’s lavender advertising campaign.

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The DOE defendants are DISMISSED.

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This resolves ECF No. 42. The Final Pretrial Conference on plaintiff’s remaining

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claims is set for March 15, 2018 at 2:30 p.m., with a jury trial date to be set at the pretrial

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conference. The parties’ joint pretrial statement is due seven days before the conference.

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IT IS SO ORDERED.
DATED: February 14, 2018.

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UNITED STATES DISTRICT JUDGE
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