The opinion of the court was delivered by: Denise Cote, District Judge
Plaintiff Therapy Products, Inc. d/b/a Erchonia Medical ("Erchonia") and defendants Lionel Bissoon, M.D., d/b/a Mesotherapie & Estetik, Meridian Co., Ltd., Meridian Medical Inc. and Meridian America Medicals, Inc. (collectively, "Meridian") manufacture and market laser devices for medical use. Erchonia and Meridian have used the term "lipolaser" in connection with their respective low-level lasers designed for liposuction procedures. Erchonia has sued Meridian for trademark infringement and false advertising, and Meridian has moved for summary judgment. For the reasons stated below, Meridian's motion is granted.
The undisputed facts of record, or, where disputed, taken in the light most favorable to Erchonia, establish the following. In 2001, Erchonia developed its lipolaser,*fn1 a medical laser that applies low-level light to the skin's surface as part of a process to remove cellular fat content. The lipolaser is used before liposuction to liquefy the fat.*fn2 According to Erchonia's expert, Dr. William B. Locander, the term "lipolaser" suggests a "fat laser machine," and is an approximate literal translation of "fat laser."
Erchonia's Use of the Mark "Lipolaser"
Erchonia has introduced little physical evidence to show how it has used the term "lipolaser" with its product. Evidence depicting the product itself, promotional materials, sales figures, and sales documents show sporadic use of the term. Instead, Erchonia relies principally on assertions by Erchonia President Steven Shanks ("Shanks") that Erchonia has consistently used the term "lipolaser" in a trademark sense since its coinage in 2001.
Erchonia's lipolaser consists of two main components: a handset, which the physician uses to operate the instrument, and a probe, which emits a laser. The top of the handset is a circle with a rectangular LCD digital display screen in the middle; the bottom of the handset is a stylized rectangular touch key pad, resembling the shape of the body of a guitar. Erchonia has submitted three undated exhibits with photographs of the product bearing some version of the term "lipolaser."
One exhibit is a photograph of an overlay decal designed to be used on Erchonia's lipolaser handset. On the overlay for the circular part of the handset, above the space for the LCD display screen is the word "ERCHONIA" and Erchonia's logo: a massive, block-letter "E" placed against a colored circle ("E Logo"). Below the space for the LCD display screen is the phrase "NEIRA 4L."*fn3 The top of the key pad overlay reads "ERCHONIA ACTIVATED LIPO LASER," and the bottom reads "WORLD LEADER IN LOW LEVEL LASER TECHNOLOGY." The overlay for the back of the product displays a large E Logo and reads "WORLD LEADER IN LOW LEVEL LASER TECHNOLOGY." The accompanying declaration asserts that this overlay was used on an Erchonia lipolaser in 2003, that is, two years before Erchonia's application to trademark the mark "NEIRA 4-L."
Erchonia's second exhibit is a photograph of a lipolaser. Like the overlay, this lipolaser displays Erchonia's name and the E Logo above the display screen. The display screen reads "NEIRA 4L LASER BY ERCHONIA." Below the display screen is a stylized "EML," which stands for Erchonia Medical Laser, with a sunburst graphic over the L. The top of the keypad displays "LipoLASER," followed by what appears to be a "TM" and "process and machine patented." The photograph shows no evidence of the date of this lipolaser, and the accompanying declaration makes no assertions about when this machine was made, sold, or photographed.
Erchonia's third exhibit is a photograph of the LCD screen of a lipolaser. The LCD screen reads "NEIRA 4L LIPO LASER."
The display appears to be connected to open circuitry that is not enclosed in any sort of case bearing logos or words. Again, the photograph shows no evidence of the date this was taken, and the accompanying declaration makes no assertions about when this machine was made, sold, or photographed.
Erchonia's promotional materials show sporadic use of the term "lipolaser." A number of Erchonia's advertisements have omitted the term altogether, marketing the product instead under various permutations of, inter alia, "Erchonia Laser," "EML Laser," and "Neira 4L." Likewise, a list of Erchonia's lasers that appeared in a 2004 or 2005 promotional DVD refers to the lipolaser device as the "Neira 4L," and does not include the term "lipolaser." Erchonia's Vice-President of Marketing, Charlie Shanks, admits that between 2003 and 2006 he chose not to include the term "lipolaser" in several promotional materials for the lipolaser. For instance, he decided to omit the term "lipolaser" from at least one poster used to promote the lipolaser at tradeshows in 2005; on another undated poster bearing the term "3LT" and the same sunburst graphic depicted on the lipolaser described above, Erchonia advertised its lipolaser as follows: "LipoLASERTM: World's First Low Level Lipo Laser Cleared by the FDA." A 2007 or 2008 promotional pamphlet entitled "Erchonia Medical Research Updates" advertises Erchonia's lipolaser as the "Erchonia Laser," and offers a "free DVD or . . . in clinic demo of the Laser Assisted Lipo;" the pamphlet does not use the term "lipolaser."
Erchonia's advertisements that do include the term "lipolaser" use it inconsistently. One exhibit is an undated split-page advertisement. In the center of the page is Erchonia's name, the E Logo followed by an ®, and the phrase "World Leader in Low Level Laser Technology." The upper right-hand quadrant of the page includes text that advertises the "Erchonia dermaLASERTM," and the upper left-hand quadrant shows the word "dermaLASERTM" standing alone. The bottom half of the page mirrors the top-half, with the left-hand quadrant including text that advertises the "Neira 4L," and the right quadrant showing the words "Neira4LTM lipoLASER" standing alone, with no "TM" after "lipoLASER." Another advertisement displays across the top of the page "LASERSculptingTM," with "Sculpting" in cursive font; the middle of the page displays "Neira 4LTM LipoLASERTM; and the bottom of the page includes text, photographs demonstrating the effect the lipolaser has on fat cells, a photograph of the lipolaser, Erchonia's name and the E Logo, and the phrase "World Leader in Low Level Laser TechnologyTM."
A document that appears to be a 2005 promotional press release announcing that Erchonia received "2nd FDA 510(k) Market Clearance for Low Level Lasers" displays the phrase "LipoLASERTM Medical Laser" in a banner at the top of the cover page and atop alternating pages of the report. The cover page also displays the title "Low-Level Laser-Assisted Liposuction: the Neira 4L Technique" and Erchonia's name and the E Logo. The text of the press release refers to "low-level lasers" and "the Neira 4L Technique," but does not use the term "lipolaser."
Erchonia's sales manuals and other sales materials show no more consistent use of the term "lipolaser." The 2005 and 2006 Operation and Maintenance Manuals for the lipolaser repeatedly refer to the product as "The Erchonia EML Laser," "EML Laser," and "The Erchonia Laser."*fn4 Of the fifty-eight sales receipts and invoices Erchonia issued for this product in 2004, only three used the term "lipolaser." Otherwise, no sales documents between 2001 and 2008 make use of the term; instead, they refer to the product principally as an EML or ML laser, which is Erchonia's internal designation for its lipolaser.
Erchonia has offered no business records to show its advertising expenditures on or sales of an item bearing the term "lipolaser" on either its packaging or the instrument itself. The only documentary evidence of Erchonia's advertising expenditures for a lipolaser is an undated spreadsheet that includes seven line-item entries under the title "Marketing"*fn5 and one entry entitled "Advertising," which add up to $1.19 million. A multi-page spreadsheet listing the trade shows and demonstrations Erchonia attended during an unspecified time period does not use the term "lipolaser" anywhere, includes only a handful of entries with the term "lipo" in them, and does not list the amount of money spent to attend each trade show or demonstration. Erchonia's only documentary evidence showing revenue it made from the lipolaser is a spreadsheet entitled "LipoLaser Sales," which shows the total dollar amount earned on ...