Citations
- 241 F. Supp. 3d 788
Full opinion text
MEMORANDUM OPINION SETTING OUT FINDINGS OF FACT AND CONCLUSIONS OF LAW
Table of Contents
Introduction.. .795
I. Procedural Background... 797
A. The Evidence in the Record... 797
B. The Parties and the Products... 797
C. The Events Leading to this Litigation ...798
II. The Legal Standards... 800
A. Preliminary Injunctions... 800
B. The Lanham Act .. .800
C. The Copyright Act... 801
III. Findings of Fact... 801
A. The Trade-Dress Infringement. . .801
1. Inherent Distinctiveness... 801
2. Secondary Meaning.. .808
a. The Length and Manner of Using the Trade Dress... 812
b. The Sales Volume ... 813
c. The Amount and Manner of Advertising. . .813
d. The Nature of the Use of the Mark or Trade Dress in Newspapers and Magazines.. .814
e. The Consumer-Survey Evidence. . .814
f. Direct Consumer Testimony ...818
g. MedicAlert’s Intent in Selecting the Trade Dress it Used ... 818
h. Weighing the Factors... 819
3. Functionality ... 819
4. Summary on AMID’s Claim of Protected Trade Dress... 821
5. An Additional Problem: Injunctive Relief and Irreparable Harm... 821
B. The Copyright-Infringement Claim... 823
IV. The Motion to Dismiss ... 825
V. Conclusions of Law... 827
VI. Conclusion and Order Setting Hearing. . .828
Introduction
The plaintiff, American Medical ID (AMID), wants to stop the defendant, MedicAlert Foundation United States, from using marketing methods and materials that AMID claims infringe its trade dress and copyright. (Docket Entry No. 5). Both AMID and MedicAlert make medical-identification jewelry. AMID’s jewelry displays the wearer’s critical medical information, so emergency personnel can see the medical conditions on the jewelry itself; MedicAlert’s jewelry displays a toll-free phone number that emergency personnel can call to obtain information on the wearer’s medical conditions.
Both companies market their medical-identification products in part by sending unsolicited mass-mailed countertop displays with tear-off pads attached to doctors’ offices. These displays are intended to be placed in doctors’ waiting rooms or lobbies, where patients gather or pass through. Both companies include a letter to each doctor’s office explaining what to do with the enclosed display and the importance of patients wearing medical-identification jewelry. AMID copyrighted its letter.
AMID asserts that its unsolicited mailings of countertop easel displays is a protected marketing method and that the countertop display is protected as trade dress that MedicAlert is infringing. AMID also alleges that MedicAlert is infringing its copyrighted letter.
This dispute began after a former AMID marketing manager, codefendant Justin Noland, resigned from AMID and went to work at MedicAlert. MedicAlert had sold its medical-identification jewelry since the 1950s, but it had not mailed unsolicited countertop displays to doctors’ offices for the prior six years. MedicAlert resumed the mailings after Noland began working there. AMID alleges that Noland misappropriated the marketing methods and displays and improperly provided them to MedicAlert.
AMID moves for a preliminary injunction on its trade-dress infringement and copyright-infringement claims. (Docket Entry No. 5). AMID seeks to enjoin Medi-cAlert’s use of the unsolicited mass-mailings as a marketing method; use of the packaging that contains the displays; and use of the displays themselves. It also seeks to enjoin MedicAlert’s use of the letter enclosed in those packages that contain the displays. In a three-day evidentia-ry hearing held in October 2016, the court received testimony from witnesses, admitted exhibits, and heard oral argument from counsel. MedicAlert has also moved to dismiss AMID’s Texas common-law unfair-competition claim, arguing that the Texas Uniform Trade Secrets Act preempts it because it is based on alleged trade-secret misappropriation. (Docket Entry No. 24).
Both sides have provided the court with excellent briefs on the legal issues and thorough submissions substantiating their factual claims and defenses. Based on the pleadings, the application for preliminary injunction and the response, the motion to dismiss and the response, the prehearing briefs and submissions, the testimony, the arguments, the exhibits presented at the three-day hearing, the posthearing briefs and submissions, and the applicable law, the court enters the following findings of fact and conclusions of law. For the reasons set out in detail below, the court finds and concludes that:
• AMID has not shown that it is likely to succeed in establishing a protected trade dress in the marketing materials because the trade dress is not inherently distinctive, has not acquired secondary meaning, and is functional, and therefore AMID has not demonstrated a substantial likelihood of success on its trade-dress infringement claim under the Lan-ham Act;
• AMID has shown a substantial likelihood of success on the merits of its copyright-infringement claim but has not shown that the infringement poses a substantial threat of irreparable injury; and • AMID’s common-law unfair-competition tort claim is not preempted because AMID could recover on the tort claim without proving that the information is protected as a trade secret.
AMID’s preliminary-injunction application is denied, (Docket Entry No. 5), and MedicAlert’s motion to dismiss is denied, (Docket Entry No. 24). This case is set for a status conference on April 24, 2017 at 3:00 p.m.
I. Procedural Background
A. The Evidence in the Record
AMID filed this suit in April 2016 and moved for a preliminary injunction. (Docket Entry Nos. 1, 5). AMID submitted affidavits from Rick Russell, AMID’s founder and Chief Executive Officer, and Angela Flowers, AMID’s director of strategic accounts and direct marketing. AMID also submitted photographs of its displays showing the asserted trade dress; the letter that accompanies the displays, with its copyright registration; side-by-side photographs of AMID’s and MedicAlert’s coun-tertop displays and letters; a MedicAlert press release; and a' chart summarizing the results of a telephone survey AMID conducted to detect evidence of confusion by doctors’ office staff. (Docket Entry No. 5, Exs. 1-20).
MedicAlert responded with a brief, (Docket Entry No. 14), and affidavits from David Leslie, MedieAlert’s president and CEO; Melody Howard, MedicAlert’s vice-president of call-center' operations; and Justin Noland, MedicAlert’s senior director of marketing. MedicAlert also submitted newspaper articles about the company and its history; photographs of marketing displays MedicAlert has used over the years; written communications between AMID and MedicAlert; side-by-side photographs of AMID’s and MedicA-lert’s displays; a patent registration for a countertop marketing easel display; photographs of various displays AMID has used; MedicAlert’s advertising-style guide; a screenshot of a Google search for “medical ids”; photographs of the letters both AMID and MedicAlert sent with their displays; and a photograph of another display, sent by a different medical-identification product marketer, also using an easel display with a tear-off pad attached. (Docket Entry No, 14, Exs. 1-23).
In the evidentiary hearing in October 2016, (Docket Entry Nos. 40-42), the witnesses included David Leslie and Melody Howard from MedicAlert; Rick Russell and Angela Flowers from AMID; Sarah Butler, AMID’s survey expert; and Dr. Gary Ford, MedicAlert’s survey expert. The court also admitted exhibits.
The court analyzes the evidence under the applicable law.
B. The Parties and the Products
American Medical ID, or AMID, began in 1994. (Tr.' 3:7). It sells medical identification bracelets and tags with the wearer’s important medical information printed on the jewelry. (Docket Entry No. 5 at ¶ 3; PL Ex. 5; Tr. 1:210-211). MedicAlert Foundation is a § 501(c)(3) charitable nonprofit organization founded in 1956. (Tr. 1:87). Like AMID, MedicAlert sells medical-identification jewelry. {Id. at 1:204-206). MedicAlert’s jewelry displays a toll-free phone number with the wearer’s identification number. {Id.). MedicAlert maintains medical information for individuals who subscribe to its service and provides its subscribers with medical-identification jewelry with a toll-free number and the wearer’s identification number. MedicAlert operates call centers with medically trained staff who answer the toll-free number and provide the subscriber’s medical information to emergency medical or other medical professionals who call. {Id. at 1:203-205). AMID sells its jewelry to patients or their families who place orders and puts the wearer’s important medical conditions on the jewelry. {Id. at 1:210-211).
Justin Noland began working at AMID in March 2011 in the marketing group. He became brand manager in 2012. {Id. at 1:259). Noland learned about AMID’s unsolicited mass-mailings to doctors’ offices during weekly marketing meetings. {Id. at 1:259-60, 1:272-75). In one quarter, No-land himself worked on the displays sent to doctors’ offices and was responsible for the artwork on the attached tear-off order forms. {Id. at 1:261-62). According to AMID, Noland learned about the vendors AMID worked with, the specialities of the doctors who received the AMID displays, and generally about the “entire direct-marketing program.” {Id. at 1:263-64, 1:273-75).
Noland left AMID in May 2014 and began working at MedicAert in June 2014. {Id. at 1:145, 2:7-9, 3:27). AMID contends that Noland violated his employment agreement, which included a noncompete provision. (PI. Ex. 1). AMID employees did not know that Noland was working at MedicAert until about a year after he left AMID. (Tr. 2:8, 3:27). In late June 2015, Angela Flowers, AMID’s director of strategic accounts and direct marketing, learned through a text message sent to a coworker that Noland was working at MedicAert. {Id. at 2:8).
C. The Events Leading to this Litigation
In June 2015, AMID learned that Medi-cAert was mailing to doctors’ offices a display that AMID asserts is among those that infringe its protectable trade dress, with the letter that AMID asserts infringes its copyright. (Id. at 2:11). Angela Flowers checked MedicAlert’s website and found an “order displays” section. (Id.). When Rick Russell viewed the website, he became concerned about MedicAlert’s “strikingly similar display.” (Tr. 3:27-28, 2:11; PI. Ex. 30). Russell told Flowers to continue monitoring the MedicAlert website, following AMID’s practice of monitoring competitors’ websites. (Tr. 3:88, 2:9-10). Around this time, Russell asked Flowers to contact AMID’s outside counsel, Wayne Isaacs. (Id. at 2:36-37, 2:39, 3:73). AMID had used him in prior trademark matters. (Id.).
On July 6, 2015, Russell sent an email to MedicAlert’s board chair, Barton Trethe-way, proposing that AMID and MedicAlert enter into a partnership or other business combination. (Def. Ex. 22). Russell did not mention any concern about MedicAlert’s marketing displays. (Id.). Before he received a response to his July 6,2015 email, Russell made a “more formal complaint,” sending a letter to both Tretheway and to MedicAlert’s new CEO, David Leslie, on July 14, 2015. (PI. Ex. 30; Tr. 3:28-29). In the letter, Russell asserted that MedicA-lert’s marketing director, Justin Noland, who had been AMID’s marketing director from 2012 to April 2014, had violated his noncompete agreement with, and “totally disregarded” his confidentiality obligations to, AMID. (PI. Ex. 30). Russell explained that the “action AMID will take with respect to these breaches is still being evaluated. I just thought you should have knowledge that it took place and that we take it as a serious violation.” (Id.). Russell enclosed a photograph of the MedicAlert display that AMID claimed infringed its protected trade dress. (Id.). Russell’s letter stated that the MedicAlert display was a “virtual carbon copy of a display [AMID has] developed and marketed for many years, well before Noland was a part of the marketing staff here.” (Id.). The letter accused MedicAlert of basing its marketing display on AMID’s “intellectual property” that Noland “may have brought with him and shared with MedicAlert marketing management.” (Id.). Russell described the display shown on MedicAlert’s website as “clearly an extreme knockoff’ of AMID’s display. (Tr. 3:35).
David Leslie, MedicAlert’s new CEO, responded to Russell’s email on July 20. Leslie thanked Russell for his offer of a partnership or other business relationship and explained that MedicAlert was not interested. (Def. Ex. 24). Leslie did not respond to Russell’s infringement allegations. (See id.).
On July 29, 2015, Russell sent Leslie another email, attaching Noland’s employment contract with AMID. (Def. Ex. 25.). The contract had a one-year noncompete that had expired in May 2015. (Id.; PI. Ex. 1). Russell expressed concern about No-land working for MedicAlert, explaining that “our concerns go beyond the non-compete violation itself. It is compounded by the taking and immediately applying of methods, designs, artwork, taglines, etc. developed here by persons other than himself. While much of this is not trademarked or protected formally, it is certainly in a gray area from a legal standpoint. But in the ethical realm, most everyone I’ve mentioned this to outside our organization, reacts that they’ve not often seen anything so blatant.” (Def. Ex. 25). During the preliminary injunction hearing, Russell explained that he was “referring to trade dress” in this email, focusing on the Medi-cAlert marketing display shown on the website. (Tr. 3:34-35). Russell testified that he wanted to emphasize that the “display observed on the website was clearly an extreme knockoff’ of the AMID displays and his “great concerns about the use of [the MedicAlert displays] in the marketplace.” (Id.).
Leslie responded to Russell’s infringement concerns in a letter dated August 27, 2015. (Def. Ex. 26.). Leslie told Russell that MedicAlert would not fire Noland because the noncompete clause in the employment agreement with AMID had already expired. (Id,). Leslie noted that MedicAlert would “remain mindful of all the operating boundaries concerning, marketing materials between our. two companies....” (Id.). Leslie did not agree to recall, stop using, or change the MedicA-lert marketing displays or other marketing materials.
On September 4, 2015, Russell responded to Leslie’s August 27 letter. (Def.' Ex. 27). Most of Russell’s response was a pro■posal for MedicAlert and AMID to form a marketing partnership. Russell responded to-Leslie’s letter, stating that it “[s]ounds like the matter is closed in your mind, but I may come back to you with some final thoughts.” (Id.), Russell did not ask Medi-cAlert to stop distributing the displays, recall them, or change them. (See id.). Russell did not write to Leslie again about his infringement concerns. (Tr. 1:227-28).
On January 6, 2016, Flowers received a text message from an AMID coworker who.had seen a MedicAlert display in a doctor’s office in Austin, Texas. Flowers told Russell about the text message. (Id. at 2:12-13, 3:89). The MedicAlert display described in the text message is the same one that Flowers had seen on MedicAlert’s website in June 2015 and that Russell cited in his July 14,2015 letter. (Id.-, PI. Ex. 17). Also on January 6, Flowers called the doctor’s office in Austin and asked a staff member about the MedicAlert display. (PI. Ex. 20). That same day, Russell contacted Leslie to propose a “business combination” with, or “asset acquisition” from, MedicA-lert. (Def. Ex. 28). Despite knowing that the MedicAlert marketing display had been sent to doctors’ offices and was on MedicAlert’s website, Russell said nothing in the January 6 email about MedicAlert’s display or the accompanying letter, Medi-cAlert’s website, or its continued employment of Noland. (Id.-, Tr. 3:89-90, 1:227-28). Leslie did not respond to the January 6,2016 email.
AMID and Russell filed this lawsuit on April 27, 2016. (Docket Entry No. 1). Nearly eleven months elapsed between when -AMID first saw the allegedly infringing MedicAlert- displays on the website and when AMID filed this suit.
II. The Legal Standards
A. Preliminary Injunctions
A preliminary injunction is an “extraordinary remedy.” Texans for Free Enter. v. Tex. Ethics Comm’n, 732 F.3d 535, 536 (5th Cir. 2013). A court may grant a preliminary injunction “only if the movant establishes (1) a substantial likelihood of success on the merits, (2) a substantial threat of irreparable injury if the injunction is not issued, (3) that the threatened injury if the injunction is denied outweighs any harm that will result if the injunction is granted, and (4) that the grant of an injunction will not disserve the' public interest.” Id. at 536-37 (quoting Byrum v. Landreth, 566, F.3d 442, 445 (5th Cir. 2009)).
B. The Lanharh Act
The Lanham Act provides trademark protection under two separate sections. First, under § 2, 15 U.S.C. § 1052, a party can protect its trademark by registering it with the United States Patent and Trademark Office. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Registration “entitles the owner to a presumption that its mark is valid.” Id. To establish trade-dress infringenaent under § 43(a) for an unregistered mark, a plaintiff must first demonstrate that its trade dress is either inherently distinctive or that it has acquired distinctiveness through secondary meaning. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). An otherwise inherently distinctive trade dress is entitled to protection only if it is also nonfunctional. Id. Second, to establish infringement, a plaintiff must show that a defendant’s trade dress creates a likelihood of confusion with the plaintiffs. Id. at 769-70, 112 S.Ct. 2753.
C. The Copyright Act
To show copyright infringement, AMID must show both (1) ownership of the copyright material, which neither party disputes, and (2) copying by MedicAlert. Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772, 790 (5th Cir. 1999). A copy is legally actionable if the alleged infringer used the copyrighted material to create his own work, and substantial similarity exists between the two works. Id. “A side-by-side comparison must be made between the, original and the copy to determine whether a layman would view the two works as substantially similar.” General Universal Systems, Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004). While the standard is “of necessity vague,” infringement exists if an “ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.” Stutts v. Texas Saltwater Fishing Magazine, Inc., Civ. No. 6:13-cv-10, 2014 WL 1572736, at *3 (S.D. Tex. Apr. 18, 2014) (Costa, J.) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).
III. Findings of Fact
A. The Trade-Dress Infringement Claim
Because AMID did not register its claimed trade dress, it is not entitled to the presumptions registration provides. AMID must show that its claimed trade dress is valid, distinctive, and not functional. Wal-Mart, 529 U.S. at 210-11, 120 S.Ct. 1339.
“Trade dress refers to the total image and overall appearance of a product and may include features such as the size, shape, color, color combinations, textures, graphics, and even sales techniques that characterize a particular product.” Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 251 (5th Cir. Tex. 2010) (citing Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks omitted)); accord ‘RESTATEMENT § 16, at 156 (“The design of elements that constitute the appearance or images of goods or services as presented to prospective purchasers, including.. .displays [and] decor,...is eligible for protection as ⅜ mark.”). Trade-dress protection has been extended to the overall “motif’ of a restaurant, Two Pesos, 505 U.S. at. 765, 112 S.Ct. 2753, and to the layout of a golf course, Pebble Beach, 155 F.3d at 537, “The purpose of trade dress protection, like trademark protection, is to ‘secure the owner of the trade,.dress the goodwill of his business and to protect the ability of consumers to distinguish among competing products.’” Amazing. Spaces, 608 F.3d at 251 (quoting Two Pesos, 505 U.S. at 774, 112 S.Ct. 2753).
1. Inherent Distinctiveness
A claim under § 43(a) for an unregistered mark requires the plaintiff to show that the “[the] identifying mark ... is inherently distinctive or ... has acquired distinctiveness through secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 769, 112 S.Ct. 2753. Marks whose “intrinsic nature serves to identify their particular source” are inherently distinctive. Wal-Mart, 529 U.S. at 210, 120 S.Ct. 1339. If a mark is not inherently distinctive, it is protected if “it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.” Id. at 211, 120 S.Ct. 1339. The parties dispute whether AMID’s claimed trade dress is inherently distinctive; whether this court must or may move to a secondary-meaning analysis; and whether it has acquired secondary meaning.
The law relating to whether a trademark is inherently distinctive is more developed for word marks than for trade dress. Forney Indus., Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 1245 (10th Cir. 2016). In Two Pesos, 505 U.S. at 773-74, 112 S.Ct. 2753, the Supreme Court resolved a circuit split and held that a product’s trade dress, like other forms of trademark, could be protected under the Lanham Act if the trade dress was inherently distinctive. Courts have since struggled to devise a test for when a trade dress achieves that status. See generally 1 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR Competition § 8:13 (4th ed.) (McCarthy).
Some courts have used the framework for word marks set out in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 12 (2d Cir. 1976). The Abercrombie test separates word marks into five categories to assist in determining whether a particular mark is inherently distinctive: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Id. at 9-11 <& n.12. Because that framework was designed for word marks, it can be difficult to apply in the trade-dress context. See Amazing Spaces, 608 F.3d at 243 (“Both the Supreme Court and scholars have questioned the applicability of the Aber-crombie test to marks other than words.”); 1 McCarthy, supra, § 8:13 (“Courts have had considerable difficulty in trying to apply to trade dress the traditional spectrum of marks categories which were created for word marks — the Abercrombie test .. .The problem is that the Abercrombie spectrum was specifically developed for word marks and does not translate into the world of shapes and designs.”); cf. Wal-Mart Stores, 529 U.S. at 210-13, 120 S.Ct. 1339 (the Abercrombie test has been applied “[i]n the context of word marks,” but not attempting to apply it to a trade-dress infringement claim).
The Fifth Circuit has moved away from, though not abandoned, the Aber-crombie test in cases not involving word marks. See Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527, 540 (5th Cir. 2015) (“[W]e recently embraced the Seabrook Foods test to determine the inherent distinctiveness of a design mark, although we did not ‘go so far as to hold that the Abercrombie test is eclipsed every time a mark other than a word is at issue.’”) (quoting Amazing Spaces, 608 F.3d at 243). The Fifth Circuit uses the Seabrook Foods factors to determine whether a design is arbitrary or distinctive:
(1) whether it was a common basic shape or design; (2) whether it was unique or unusual in a particular field; (3) whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or (4) whether it was capable of creating a commercial impression distinct from the accompany words.
Amazing Spaces, 608 F.3d at 243 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1978)). The first three Seabrook Foods factors “are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin — a trademark.” Id. “The issue is whether the trade dress is of such an unusual design that a buyer will immediately rely on it to differentiate the source of the product.” 1 McCarthy, supra, at § 8.13.
Although the Supreme Court has held that trade dress can be inherently distinctive, it has given little guidance on what is required. Two Pesos did not adopt a specific test for inherently distinctive trade dress, in upholding the lower court’s ruling that the trade dress for the Mexican-themed restaurant chain was inherently distinctive. The Court’s opinion did not explain the key elements to establish inherent distinctiveness or whether the trade dress in that case was inherently distinctive. See 505 U.S. at 770, 112 S.Ct. 2753 (whether the trade dress was inherently distinctive “is [not] before us”). The Court addressed only whether trade dress can be inherently distinctive. The answer was “yes,” but the “when” and “how” questions remained. See id. at 773-76, 112 S.Ct. 2753.
The Supreme Court has been more definitive in saying when trade dress cannot be inherently distinctive. See Forney Industries, 835 F.3d at 1247. Since Two Pesos, the Court has carved out certain types of trade dress that by their nature are not inherently distinctive and can be protected only if they have secondary meaning. First, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995), the Court considered whether the green-gold color of dry-cleaning press pads was entitled to Lanham Act protection. See id. at 161, 115 S.Ct. 1300. The Court resolved a circuit split and held that the Lanham Act “permits the registration of a trademark that consists, purely and simply, of a color.” Id. at 160-61, 115 S.Ct. 1300. “[A] product’s color is unlike ‘fanciful,’ ‘arbitrary,’ or ‘suggestive’ words or designs, which almost automatically tell a customer that they refer to a brand.” Id. at 162-63, 115 S.Ct. 1300. But the Court could see no reason why a product’s color should or could not be protected if it had acquired secondary meaning. See id. at 163-66, 115 S.Ct. 1300.
Second, in Wal-Mart, the Court held that a product design could not be inherently distinctive. 529 U.S. at 212, 120 S.Ct. 1339. The Court reaffirmed that “color[ ] is not inherently distinctive,” without distinguishing between the color of a product package or of a product itself. Id. “The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.” Id. But “[i]n the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist.” Id. at 213, 120 S.Ct. 1339. The Court emphasized the need for clear rules about what can be inherently distinctive:
Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness. How easy it is to mount a plausible suit depends, of course, upon the clarity of the test for inherent distinctiveness, and where product design is concerned we have little confidence that a reasonably clear test can be devised.
Id.; see id. at 214, 120 S.Ct. 1339 (“Competition is deterred.. .not merely by successful suit but by the plausible threat of successful suit.”).
Acknowledging that there may be close cases in which courts will have “to draw difficult lines between product-design and product-packaging trade dress,” the Court instructed lower courts to “err on the side of caution and • classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Id. at 216, 120 S.Ct. 1339. “The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning.” Id.
Describing AMID’s trade dress is the start of determining whether it is inherently distinctive. AMID’s motion for a preliminary injunction listed seven elements that make up its asserted protected trade dress:
1.marketing plan of counter display order forms package for easy mailing and delivery to health care professional offices and others;
2. metallic-looking bracelet or tag components on the display;
3. see-through opening in display cover as shipped;
4. banner wrapper around order forms;
5. integral pull-off order form with photos of products, including metal-tag elements and bracelets;
6. clear wrapper enclosing display mailer; and
7. easy customer display setup for counter use.
(Docket Entry No. 5 at 12-13).
In its proposed findings of fact and conclusions of law filed before the preliminary injunction hearing, AMID changed its trade-dress definition. (Docket Entry No. 34 at 17). AMID’s proposed findings and conclusions listed the revised trade-dress definition as:
1. marketing plan of counter display order forms package for easy mailing and delivery to health care professional offices and others. This plan includes the active participation of healthcare providers and their staff in utilizing the counter display in their offices;
2. metallic-looking bracelet or tag components on the display arranged in a carefully determined configuration;
3. see-through opening in' display cover as shipped;
4. banner wrapper around order forms with the trademark “Medical IDs save lives!”;
6. integral pull-off order form with photos of products, including metal-tag elements and bracelets;
6. transmittal letter outlining a complementary medical ID program for providers, identifying end users who may benefit from a medical ID, and listing institutions that recommend using a medical ID;
7. clear wrapper enclosing display mailer with transmittal letter that can be read without opening the package; and
8. easy customer display setup for counter use.
(Id.).
During the preliminary-injunction hearing, when asked to address the elements of the claimed trade dress, AMID’s witnesses and counsel reaffirmed that the earlier seven-part list made up what AMID claimed as its trade dress. As the court noted, the trade-dress definition had a “moving-target aspect” to it. (Tr. 3:138).
In its proposed findings of fact and conclusions of law submitted after the preliminary-injunction hearing, AMID again changed its trade-dress definition. (Docket Entry No. 49 at 3-4). For the first time, AMID asserted that it had three “independent trade dress claims.” (Id. at 3). The first was a “Marketing Plan and Scheme” that included:
a. unsolicited mass-mailing to doctor and other professional offices of display;
b. an easel display with integral order forms;
e. real jewelry facsimiles in the upper portion of the display;
d. an introductory letter;
e. a see-through cardboard cover over the jewelry with one medal visible; and
f. a clear mailing wrapper.
(Id.). AMID’s second trade-dress claim included the “[pjackaging as received by the professional office of the mailed [djisplay”:
a. • a three-panel display with top panel, followed by a larger panel containing real jewelry facsimiles, with an order form pad taking up approximately 2/3 of the display face;'
b. a see-through cardboard cover over the jewelry with one item visible;
c. an introductory letter on the backside of the mailer;
d. a banner wrapper around the lower portion about the order forms; and
e. a clear wrapper around the entire display.
(Id. at ,4). AMID’s third trade-dress claim included the “display as used in the professional offices”:
a. an easel display having three panels on the front portion of the display;
b. a top panel, followed by a larger central panel with real jewelry facsimiles followed by an order form on the lower portion of the display; and
c. an order form pad below the central panel taking up approximately 2/3 of the display face with photographs of jewelry on the face of the order form.
(Id.).
A court and the parties cannot “coherently define exactly what the trade dress consists of and determine whether that trade dress is valid and if what the accused is doing is an infringement” until after the party seeking trade-dress protection submits the “discrete elements” making up the its claimed trade dress. 1 McCarthy, supra, § 8:3. AMID has provided not one, not two, but three distinct sets of claimed trade-dress elements. (See Docket Entry No. 5 at 12-13; Docket Entry No. 34 at 17; Docket Entry No. 49 at 3-4). The three sets have common elements, but they are not identical. The third set separates its claim into three trade dresses that include for the first time the proportion of space taken up by the order form pad, photographs of jewelry, and the number, position, and size of the panels.
It is unclear to what extent a plaintiff can change its definition of the allegedly protected and infringed trade dress without amending the complaint. 1 McCarthy, supra, § 8:3. “In the law of Patents, the Supreme Court has observed that a patent is a property right and like any property right, its boundaries should be clear. The same is true of trade dress.” Id. The need to identify trade-dress elements is well-recognized. “Without... a precise expression of the character and scope of the claimed trade dress, litigation will be difficult, as courts will be unable to evaluate how unique and unexpected the design elements are in the relevant market” or to “shape narrowly-tailored relief if they do not know what distinctive combination of ingredients deserves protection.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997). “And if a court is unable to identify what types of designs will infringe a trade dress, how is a competitor.. .to know what new designs would be subject to challenge by [the trademark holder]?” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001). The problem exists here. Which of AMID’s definitions of its protectable trade dress should the court use to identify whether the elements are distinctive, much less otherwise protected, or to fashion a remedy for infringement?
The Tenth Circuit has addressed inconsistently defined trade dress in a case involving product packaging. In Forney Industries, the court noted that the “failure in the description cannot be blamed on any shortcoming in counsel’s power of expression. It is probably the best that one could do, given the variety of packaging that [the plaintiff] has used on its products over the years.” 835 F.3d at 1251-53. Heeding the Supreme Court’s statement in Wal-Mart “to be cautious about applying vague, litigation-friendly tests for inherent distinctiveness,” the Tenth Circuit found that the plaintiff had failed to establish an inherently distinctive trade dress. Id. at 1253; Wal-Mart Stores, 529 U.S. at 215, 120 S.Ct. 1339.
Like the plaintiff in Forney, AMID has changed its marketing materials over the years. This may be one reason for the “moving target” of AMID’s claimed trade dress. AMID’s witnesses testified that all variations of the display and packaging it had used, and any similar display or packaging were included in its protectable trade dress because they all shared a “family look.” (Tr. 1:284 — 86). AMID’s counsel stated in his opening statement at the injunction hearing that MedicAlert’s displays “infringes on our family look,” {Id. at 1:18), and that AMID has “developed this particular family look over an extensive period of time, and it’s essentially been fixed with some minor modifications, but is essentially a recognizable look.” {Id. at 1:6).
What this “family look” includes remains unclear. Flowers’s testimony about what AMID included in the “family look” was elastic and expansive. Flowers defined the “family look” as a “general look and feel that we have kept our packages to look like since around — I mean, really, from very early on, but typically this — the general family look that we are using, we have been using since 2010.” {Id. at 1:275-76). Flowers testified that the “family look” was shown in Plaintiffs Exhibit 23. {Id. at 2:6). But that exhibit shows varying displays AMID used from 2009 to the present. (PI. Ex. 23 at 62-67). Flowers testified that AMID sent many packages, but she insisted that they all had “our look and feel.” (Tr. 2:77). Flowers testified that the “ugly cardboard” was part of the “family look of materials,” but later she acknowledged that was no longer included in the marketing displays. (Id. at 2:58). She testified that “[consistent throughout would be the — the cardboard around the top of it,” but she admitted that “now it is a more sleek-looking black. At one time, that little peephole wasn’t even there, but we wanted to make this, again, kind of stand out to the folks opening the mail. We have added the — the band around the paper wrapper around the forms, again, to kind of make it pop.” (Id. at 1:285). Flowers testified that it was “the marketing team’s decision to make tweaks and changes to the family look of our artwork and our materials over time,” but insisted that those “tweaks” did not impact the overall “family look.” (Id. at 2:61) (“I would consider that a part of our family look.”). Flowers claimed that 80 percent of the displays distributed since 2012 had this “family look.” (Id. at 1:275-76,1:286). It is unclear what makes up the other 20 percent.
Flowers acknowledged that it was “hard to keep all of this straight.” (Id. at 2:77). One problem is that the “family look” encompasses displays with clearly different shapes, sizes, text size and font, color, artwork, layout, and materials. E.g., one display has tear off-sheets but no facsimile jewelry, (PI. Ex. 44; Def Ex. 32, Def. Ex. 33); one has an ad with the slogan, “A Medical ID speaks for you when you can’t,” (Def. Ex. 34); ad likely “displayed in a rotating capacity on one of [AMID’s] websites,” (Tr. 2:110-111); there are brochures in lucite holders, without facsimile jewelry, designed for Publix, (Def. Ex. 39); there is a double-pad, vertical, white-and-green display, (Def. Ex. 71); There are 20,000 copies of Defendant’s Exhibit 71, a blue-and-green easel display that advertised both One Call Alert and AMID’s products, had likely been mailed out as a “test pilot,” (Tr. 2:92-93); and a blue-and-white display that had been created for CVS, (Def. Ex. 73). There are numerous photos showing changing displays from 2006 to the present, (PI. Ex. 23).
Some of the AMID displays do not contain any of the elements AMID now identifies as defining its trade dress. For example, a display created for Publix has a lucite holder, rather than an easel display, brochures instead of tear-off sheets, and no facsimile jewelry, (Def. Ex. 39), while a display created for Walgreens has no tear-off sheets and no facsimile jewelry, (Def. Ex. 29). Flowers explained that instead of the easel display, AMID sometimes sent brochures. (Tr. 2:101).
As she acknowledged, “it could be a variety of things.” (Id.).
AMID’s claim that this changing “family look” is its protected trade dress has inconsistently and broadly defined elements. Courts have rejected this approach. “Several courts have adopted a requirement that a plaintiff seeking to protect its unregistered trade dress do more than just point to the ‘overall look’ of its trade dress; it must ‘articulare] the specific elements which comprise its distinct dress.’ ” Forney Indus., 835 F.3d at 1252 (quoting Landscape Forms, Inc., 113 F.3d at 381); see also, e.g., Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014) (“[I]t is the plaintiffs duty to articulate the specific elements which comprise its distinct dress.” (brackets and internal quotation marks omitted)); Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) (“It will not do to solely identify in litigation a combination as ‘the trade dress.’ Rather, the discrete elements which make up that combination should be separated out and identified in a list.” (brackets and internal quotation marks omitted)). It is AMID’s burden to identify its claimed trade dress. It has failed to do so with sufficient clarity or consistency.
There is another problem in finding that one or more versions of AMID’s claimed trade dress is inherently distinctive. While certain types of product packaging can be inherently - distinctive, product design is protected only on a showing of secondary meaning. Wal-Mart, 529 U.S. at 215-216, 120 S.Ct. 1339. In Wal-Mart, the Court acknowledged that there would be “hard cases at the margin,” in which courts would struggle to classify product packaging or product design as protectable trade dress. Id. at 215, 120 S.Ct. 1339. But “[t]o the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Id This guidance helps. AMID argues that its trade dress “is akin to product packaging.” AMID’s products are bracelets 'or dog tags, but AMID’s purported trade' dress does not “package” the actual jewelry AMID sells. The consumer cannot buy any AMID products from the displays themselves. AMID’s displays show photos or facsimiles of products, but do not contain the products to sell. Packaging, as the word implies and as the cases cited by AMID demonstrate, contains or accompanies the product to be sold. Cf. Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 702-703 (5th Cir. 1981) (a bottle for gardening supplies considered product packaging); Sicilia Di R. Biebow & Co v. Cox, 732 F.2d 417, 423 (6th Cir. 1984) (bottles containing lemon and lime , juice were product packaging); Regal Jewelry Co., Inc. v. Kingsbridge Int’l, Inc., 999 F.Supp. 477, 481 (S.D.N.Y. 1998) (colored boxes containing novelty items were product packaging). , • ■
Nor does this case involve the design of the products — the medical-identification jewelry that AMID sells.
AMID’s claimed trade dress falls somewhere in the middle-of the product-packaging and product-design spectrum. Wal-Mart, 529 U.S. at 215, 120 S.Ct. 1339. The First Circuit has followed Wal-Mart’s guidance and found that trade dress falling between product design and product packaging must have secondary meaning to be protected under the Lanham Act. In Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 41 (1st Cir. 2001), the plaintiff sought Lanham Act trade-dress protection for “all the trappings associated with the sale of the candle — i.e., the candle-holders, the Vertical Display System, the labels, and the catalog.” Id. at 40. The First Circuit held that while the labels on the candles were product packaging and may be inherently distinctive, “when combined with actual candle features, candle containers, the catalog, and the in-store display system, the claim is no longer a product-packaging one.” Id. at 40-41. Nor could the claim be categorized as one for product or design configuration, “as that term has generally been defined to be limited to features inherent to the actual physical product: here, the candles.” Id. at 41. Because the claimed trade dress was “at the margin,” the First Circuit required the plaintiff to show secondary meaning. Id.
The1 court follows the Supreme Court’s guidance and the First Circuit’s helpful application, and finds that to prevail on its trade dress-infringement claim, AMID must show that its trade dress has acquired secondary meaning. See Wal-Mart, 529 U.S. at 215, 120 S.Ct. 1339; Yankee Candle Co., 259 F.3d at 41.
2. Secondary Meaning
Trade dress acquires distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning.-This-occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores, 529 U.S. at 211, 120 S.Ct. 1339 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)). “[T]he mark must denote to the consumer a single thing coming from a single source to support a finding of secondary meaning.” Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527, 543 (5th Cir. 2015). “The inquiry is one of the public’s mental association between the mark and the alleged mark holder.” Amazing Spaces, 608 F.3d at 247-48 (quoting Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008)). “Because the primary element of secondary meaning is a mental association in buyerfs’] minds between the alleged mark and a single source of the product, the determination whether a mark or dress has acquired secondary meaning is primarily an empirical inquiry.” Id. at 248 (quoting Sunbeam Prod., Inc. v. W. Bend Co., 123 F.3d 246, 253 (5th Cir. 1997)).
The general and varying nature of AMID’s trade-dress definition is again problematic. In its varying trade-dress definitions, AMID asserts as protected the manner in which its displays are shipped and used in doctors’ offices. It asserts protection for its “marketing plan of counter display order forms package for easy mailing and delivery to health care professional offices and others.” (Docket Entry No. 5 at 12-13); (Docket Entry No. 34 at 17). In its motion for preliminary injunction and preliminary proposed findings of fact and con-elusions of. law, four of the seven- trade-dress elements were packaging designed to be removed before putting it out for potential buyers to see:
(1) see-through opening in display cover as shipped;
(2) banner wrapper around order forms;
(3) clear wrapper enclosing display mailer; and
(4) easy customer display setup for counteruse;
(Docket Entry No. 5 at 12-13); (Docket Entry No. 34 at 17). Many of these elements are removed by the doctor’s staff when they open the mail and are not on the display when the doctors or the patients or family members might encounter them in a waiting room or lobby.
AMID’s posthearing proposed findings of fact and, conclusions of law similarly included in its list of trade-dress elements that may not be seen by most doctors or by any potential, buyers, the patients. In AMID’s first trade-dress definition, the “marketing plan and scheme” includes:
(1) unsolicited mass mailing to doctor and other professional offices;
(2) an introductory letter;
(3) a see-through cardboard cover over the jewelry with one medal visible; and
(4) a clear mailing wrapper.
(Docket Entry No. 49 at 3-4).
AMID’s second trade-dress definition, the “packaging as received by the professional office of the mailed display,” specifies elements again not seen by most doctors or the patients who are the ultimate purchasers. These include:
(1) a see-through cardboard cover over the jewelry with one item visible;
(2) an introductory letter on the backside of the mailer;
(3) a banner wrapper around the lower portion about the order forms;
(4) a clear wrapper around the entire display.
(Id. at 4). The evidence is undisputed that these elements are designed to be thrown away by the doctors’ staff who open the mail. This may be before the doctors, and clearly before the patients, see the display. (Tr. 1:12). AMID contends that these elements are nonetheless protectable because they are seen by the “gatekeepers” — the staff in the medical office who make the decision to place the display on a counter visible to the “end users,” the patients.
In its final version of its claimed trade-dress elements, AMID included a separate claim of trade dress in the “display as used in the professional offices,” which is seen by patients, family members, or other visitors to doctors’ offices. This claim included:
(1) an easel display having three panels on the front portion of the display;
(2) a top panel, followed by a larger central panel with real jewelry facsimiles, followed by an order form on the lower portion of the display; and
(3) an order-form pad below the central panel, taking up approximately 2/3 of the display face, with photographs of jewelry on the order-form face.
(Docket Entry No. 49 at 4). This “display” trade dress is seen by, and intended for, the buying public — patients and family members who may purchase medical-identification jewelry. These purchasers of medical-identification jewelry are relevant to the secondary-meaning inquiry. Nola Spice Designs, L.L.C., 783 F.3d at 545 (the secondary meaning analysis focuses on the effectiveness of “altering the meaning of [the trade dress] to the consuming public”).
The doctors’ office staff acts as “gatekeepers”; it stretches current law to analyze them as the relevant consumer in the secondary-meaning inquiry. The patients and family members who, as the buying public, clearly are the relevant consumers. Where do the doctors fit in? They are not the intended purchasers of medical-identification jewelry, but they can serve an important role if they are involved in deciding whether to place the display in their waiting room or whether to recommend medical-identification jewelry. The letters AMID and MedicAlert enclose in their displays explain to doctors why such jewelry may be medically necessary to at-risk patients. (See PI. Ex. 2; Def. Ex. 11). In this role, doctors are acting as one of the “gatekeepers” of the medical-identification jewelry. In the second role, doctors are acting as a different type of gatekeeper. See Bonito Boats, 489 U.S. at 157, 109 S.Ct. 971; Nola Spice Designs, L.L.C., 783 F.3d at 545. Out of an abundance of caution, both office staff and doctors, as well as patients, are considered in the analysis.
AMID’s “gatekeeper” argument stretches the concept of secondary meaning beyond what the cases seem to support. Secondary meaning reflects the consumers’ perception of product source. Courts must “consider the marks in the context that a customer perceives them in the marketplace ...." Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 485-86 (5th Cir. 2004); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989) (“The law of unfair competition has its roots in the common-law tort of deceit: its general concern is with protecting consumers from confusion as to source.”); 1 McCarthy, supra, § 2:8 (“Today, the keystone of that portion of unfair competition law which relates to trademarks is the avoidance of a likelihood of confusion in the minds of the buying public”) (emphasis added). The relevant question in evaluating secondary meaning “is not the extent of the promotional efforts, but their effectiveness in altering the meaning of [the trade dress] to the consuming public.” Nola Spice Designs, L.L.C., 783 F.3d at 545. The “gatekeeper” office staff is not a consumer of medical-identification jewelry. The packaging elements AMID claims in its trade dress may only be seen by these “gatekeepers,” or perhaps by the doctors, and cannot have acquired secondary meaning because they are never seen by the consuming public. See id.
AMID also cites cases that it contends protect sales techniques, such as the sales technique of mailing unsolicited wrapped displays to doctors’ offices. (Docket Entry No. 49 at 20-21) (citing John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983) (trade dress “involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”); Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 831 (11th Cir. 1982) (trade-dress protection for sales technique for doll “adoption”); Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 633 (6th Cir. 2002) (Abercrombie’s in-store displays and its sales-associate team constitute a “particular sales technique.”)). These cases do not go as far as AMID urges. The “sales techniques” in the cited cases could be protected trade dress in part because the techniques were aimed at, and seen by, the buying public entering the store. See Abercrombie & Fitch Stores, Inc., 280 F.3d at 633; see also Original Appalachian Artworks, Inc., 684 F.2d at 831 (the doll-adoption procedure “represents a sales technique designed to make the product readily identifiable to consumers, and unique in the marketplace,” and was part of the product packaging). The parties have not cited cases in which a court found protectable trade dress, when, as here, most of the purported trade-dress elements are never seen by members of the buying public.
“[I]t is the total combination of elements of the ‘trade dress’ as defined by the plaintiff that is at issue.” ■ 1 McCarthy, supra, § 8:2. AMID’s displays enclosed in their packaging are first seen by the “gatekeeper” office staff, who receive and sort mail, presumably opening the packages and discarding the wrapping. By the time members of the buying public — the patients or their family members — see the displays, much of what AMID claims as its protected trade dress has been removed and discarded. Because many elements of AMID’s claimed trade dress are the packaging that is discarded by the “gatekeeper” office staff, it is difficult for AMID to show that the combination, or totality of the trade-dress elements it claims is seen by, much less is distinctive in, the minds of the consumers. Amazing Spaces, 608 F.3d at 249 (“[C]ompetitors may use individual elements in Taco Cabana’s trade dress, but the law protects the distinctive totality.”) (quoting Taco Cabana Int'l Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1120 (5th Cir. 1991)); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1050 (9th Cir. 1998) (“[T]he proper inquiry is not whether individual features of a product are functional or nondistinctive but whether the whole collection of features taken together are functional or nondis-tinctive.”)-
The Fifth Circuit has identified seven factors for courts to consider in- determining whether a claimed trade dress has acquired secondary meaning. The factors are the:
(1) length and manner of use of the mark or trade dress, (2) -volume of sales,
(3) amount and manner of advertising,
(4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant’s intent in copying the trade dress.
Amazing Spaces, 608 F.3d at 248 (quoting Smack Apparel, 550 F.3d at 476). “In considering this evidence, the focus is on how it demonstrates that the meaning of the mark or trade dress has been altered in tlie minds of consumers.” Id. (quoting Pebble Beach Co., 155 F.3d at 541 and citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983) abrogated by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004) (“ ‘[T]he question is not the extent of promotional efforts, but their effectiveness in altering the meaning of the term to the consuming public.’ ”))' Each factor is considered below.
a. The Length and Manner of Using the Trade Dress
AMID presented evidence that it has used the “family look” for its marketing displays since 2010. (Tr. 2:284-86). There is no evidence of how long the specific trade dress it claims consumers saw was' consistently used. Flowers testified that the displays could vary in elements but were in the “family look.” (Id. at 1:284-86). “Consistent throughout would be the — the cardboard around the top of it. Of course, now it is a more sleek-looking black. At one time, that little peephole wasn’t even there, but we wanted to make this, again, kind of stand out to the folks opening the mail. We have added the — the band around the paper wrapper around the forms, again, to kind of make it pop.” (Id. at 1:285). But these are packaging elements and are seen primarily and perhaps only by the office staff, who discard them before putting the display in a waiting room or lobby. This packaging cannot havé secondary meaning for the members of the buying public.
Flowers also testified that it was “the marketing team’s decision to make tweaks and changes to the family look of [AMID’s] artwork and [ ] materials over time.” (Id. at 2:61, 1:284-85). The artwork on the face of the order form changed over time but, according to Flowers, is all within the “family look.” (Id. at 1:284-86). This runs counter to AMID’s claim ‘ that its trade dress includes “photographs of jewelry on the face of the order form.”.
Both Flowers and AMID’s CEO, Rick Russell, admitted that, in addition to the varying displays admitted into evidence at the preliminary-injunction hearing, there were more variations not presented to the court. As Russell stated, AMID has “used so many variations.” (Tr. 3:61; see. id. at 2:79 (Plaintiffs Exhibit 23 does not show every type of AMID display); id.- at 2:87— 88 (“I don’t believe that I left out any display style that we have done to show our look,” but admitting that Defendant’s Exhibit 31-1, showing a different display, was. left out of Plaintiffs Exhibit 23, which purported to compile AMID’s displays from 2009 to present); id. at 2:89-90 (asserting that a lucite display made for Pub-lix was part of the “family look,” but nonetheless was omitted from Plaintiffs Exhibit 23); id. at 3:61 (when asked if AMID had provided “all the displays that AMID has used over the last ten years,” Russell testified “[pjrobably not. We have used so many variations, but we do have a very core family that we have presented, yes.”)).
AMID did not present evidence showing that mass-mailed countertop easel displays have .been consistent or that sufficiently consistently displays have been used for a long period. This factor weighs against finding secondary meaning. Compare T-Mobile US, Inc. v. AIO Wireless LLC, 991 F.Supp.2d 888, 905-906 (S.D Tex. 2014) (the plaintiff established secondary meaning in part because it had used a distinctive magenta color in all its ads, displays, and all other marketing for over ten years) with Forney Indus., 835 F.3d at 1254 (the plaintiff could not establish continued use with a vague description of trade dress that had changed significantly over 20 years). AMID’s varying displays over time weakens its secondary-meaning claim, whether the consumers are considered doctors’ staff, doctors, or patients,
b. The Sales Volume
AMID presents no evidence of the sales volume associated with the various displays it claims are protected. AMID instead cites the number of displays with the “family look” it' shipped. How many displays have been sent does not equate to the number of displays placed in doctors’ offices. Nor does it reveal the volume of associated or resulting sales to patients viewing the displays. See Test Masters Educ. Servs. v. Singh, 46 Fed.Appx. 227 (5th Cir. 2002) (failing to introduce evidence of sales or revenues weighs against finding secondary meaning). This factor weighs against finding secondary meaning.
c.