Impossible Foods Inc. v. Impossible X LLC

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United States District Court
Northern District of California
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
IMPOSSIBLE FOODS INC.,
Plaintiff,
v.
IMPOSSIBLE X LLC, et al.,
Defendants.
Case No. 5:21-cv-02419-BLF
ORDER GRANTING-IN-PART AND
DENYING-IN-PART PLAINTIFF’S
MOTION FOR PARTIAL SUMMARY
JUDGMENT AND DENYING
DEFENDANTS’ MOTION FOR
PARTIAL SUMMARY JUDGMENT
[Re: ECF Nos. 259, 262]
This is an action for trademark infringement and unfair competition arising from the
Parties’ use of marks involving the word “IMPOSSIBLE” in connection with their goods and
services. Plaintiff/Counter-Defendant Impossible Foods Inc. (“Impossible”) and
Defendants/Counter-Plaintiffs Impossible X LLC and Joel Runyon (collectively, “IX”) each move
for partial summary judgment, raising separate issues.
Impossible moves for partial summary judgment that (1) IX is not entitled to damages for
any of its counterclaims and (2) IX’s affirmative defenses to Impossible’s claims fail as a matter of
law. ECF No. 259 (“Pl.’s Mot.”); see also ECF No. 282 (“Pl.’s Reply”). IX opposes the motion.
See ECF No. 277 (“Defs.’ Opp.”).
IX moves for partial summary judgment that (1) Impossible’s Lanham Act claims are
factually and legally deficient; (2) Impossible’s common-law unfair competition claim fails as a
matter of law; (3) IX’s marks cannot be declared void for fraud on the United States Patent and
Trademark Office (“PTO”); (4) IX’s marks have not been abandoned; and (5) IX is entitled to
summary adjudication of priority as to certain marks. ECF No. 262 (“Defs.’ Mot.”); see also ECF
No. 287 (“Defs.’ Reply”). Impossible opposes the motion. See ECF No. 274 (“Pl.’s Opp.”).
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The Court held a hearing on the Parties’ motions on October 23, 2025. ECF No. 306. For
the reasons set forth below, the Court GRANTS-IN-PART and DENIES-IN-PART Impossible’s
motion for partial summary judgment and DENIES IX’s motion for partial summary judgment.
I. BACKGROUND
A. The Parties and Their Marks
Impossible develops, markets, and sells plant-based substitutes for meat products. See
Declaration of Caitlyn Hatman (“Hatman Decl.”) ¶¶ 2–3, ECF No. 259-22. Operating since 2011
under various names, including “Maraxi,” Impossible adopted its current name and IMPOSSIBLE
mark in 2015. Id. ¶¶ 4–5. Impossible released its signature product—the Impossible Burger—in
July 2016, and the Impossible Burger is now available in grocery stores and restaurants across the
country. Id. ¶¶ 6–8. Impossible has since expanded to other food products and services, including
the Impossible Sausage, Impossible Pork, and Impossible Taste Place. Id. ¶¶ 9–11. Impossible
also sells a cookbook (the “Impossible Cookbook”) and offers IMPOSSIBLE-branded clothing to
consumers for promotional purposes (“Impossible Swag”). See Declaration of R. Charles Henn Jr.
(“Henn Decl.”) Ex. G (“Palmatier Rep.”) ¶¶ 43–44, ECF No. 259-1; Henn Decl. Ex. Q.
Impossible owns various IMPOSSIBLE and IMPOSSIBLE-formative federal trademark
registrations, including U.S. Trademark Reg. No. 5,370,337, first use in commerce November 3,
2016 (“[p]roviding of food and drink via mobile truck; catering services”), and U.S. Reg.
No. 5,459,255, first use in commerce June 27, 2016 (“[s]ubstitutes for foods made from animals or
animal products, namely, vegetable-based burger patties; meat substitutes”). See Henn Decl.
Ex. R at 12. Impossible also alleges that it holds common-law rights to the presentation of the
IMPOSSIBLE mark depicted below, which it began to use as early as 2016:
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ECF No. 1.1
Mr. Runyon is an entrepreneur, blogger, and fitness enthusiast and the sole member,
owner, and employee of Impossible X LLC. Declaration of Greg Washington (“Washington
Decl.”) Ex. A at 2, ECF No. 262-1. According to Mr. Runyon, his use of the word “impossible”
came to him in 2010, when he had the idea to create a personal “Impossible List” of things that
might seem impossible at first but could be accomplished with hard work. Washington Decl.
Ex. B (“Runyon Dep. Tr.”) at 103:4–14. From that idea, Mr. Runyon created the “Blog of
Impossible Things” to encourage readers to “Do the Impossible.” Id. at 104:10–105:8; see also
Washington Decl. Ex. A. Since launching his blog, Mr. Runyon has expanded to numerous other
ventures—including search engine optimization, social media influencing, and fitness and dieting
advice—using IX as the business vehicle for his Impossible-centered offerings. Through IX,
Mr. Runyon also sells certain clothing products, as well as sleep powders and energy powders (the
“IX Powders”). See Runyon Dep. Tr. at 64:9–14, 145:6–9.
IX also owns various federal trademark registrations using the word IMPOSSIBLE. See
Washington Decl. Exs. O–Y. As relevant here, these include a word mark and motion mark for
IMPOSSIBLE, respectively U.S. Trademark Reg. No. 5,620,625, first use in commerce
September 1, 2011 (“[c]lothing and performance apparel, namely,” “t-shirts, “tank tops”),2 and
US. Trademark Reg. No. 6,571,603, first use in commerce May 29, 2012 (“clothing and
performance apparel, namely, t-shirts, sweatshirts, pants, shorts, tank tips, yoga pants, tights and
underwear”). IX also owns a word mark and design mark for IMPOSSIBLE FITNESS,
respectively U.S. Trademark Reg. No. 5,590,801, first use in commerce January 24, 2014
(“[c]lothing and performance apparel, namely, t-shirts, sweatshirts, pants, shorts, tank tops, yoga
pants, tights”), and U.S. Trademark Reg. No. 5,603,025, first use in commerce January 24, 2014
(“[c]lothing and performance apparel, namely, t-shirts, sweatshirts, pants, shorts, tank tops, yoga
pants, tights”). IX’s marks represent the idea of striking items from one’s “Impossible List” by
1 This presentation is substantially similar in appearance to the design covered by many of
Impossible’s federal trademark registrations. See, e.g., U.S. Trademark Reg. No. 7,179,385.
2 As described infra, IX has amended its IMPOSSIBLE word mark to remove all Class 25 goods
except for t-shirts and tank tops.
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depicting a single-line strikethrough of the word IMPOSSIBLE as depicted below:
U.S. Trademark Reg. No. 5,603,025.
B. Trademark Dispute
On April 1, 2020, Impossible filed an application with the PTO for an IMPOSSIBLE word
mark for goods and services associated with “[p]roviding information about recipes, ingredients
and cooking information; providing an online computer database to consumers featuring
information about recipes, ingredients and cooking information.” U.S. Trademark Application
Serial No. 88,855,875; see also ECF No. 1-2. In response to Impossible’s application, IX sent a
demand letter to Impossible on November 10, 2020. Washington Decl. Ex. KK at 1. In its letter,
IX asserted that it held superior rights to the IMPOSSIBLE mark and explained that, although it
“initially believed that [Impossible’s] use of IMPOSSIBLE solely in connection with plant-based
meat substitutes would not be likely to cause confusion, [Impossible’s] recent encroachment into
spaces either occupied or closely related to goods and services offered by [IX] greatly increases
the likelihood of confusion.” Id. at 1–2. IX concluded the letter by demanding that Impossible
cease using the IMPOSSIBLE mark in certain contexts (e.g., when not accompanied by FOODS)
and limit its use to association with plant-based meat substitutes. Id. at 2–3.
Two weeks after sending the demand letter, IX filed a Notice of Opposition to
Impossible’s application with the Trademark Trial and Appeal Board. ECF No. 1-3. In its notice,
IX asserted that it had “used the IMPOSSIBLE Marks in association with nutrition, food, and
cooking resources since 2010 including publication of guides to different foods, ingredients, diets,
and recipes.” Id. ¶ 2. Impossible initiated this action on April 2, 2021, by filing an initial
complaint asserting a single claim for declaratory relief. ECF No. 1. In its complaint, Impossible
requested that the Court issue an order declaring that Impossible’s use and registration of
IMPOSSIBLE with services related to recipes, food ingredients, and cooking information do not
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infringe upon IX’s rights and that Impossible’s rights in IMPOSSIBLE are superior to IX’s rights.
Id. at 7–8. The Parties have since added numerous claims and counterclaims.
As relevant here, Impossible has added claims for trademark infringement and unfair
competition under the Lanham Act, 15 U.S.C. §§ 1051–1141n, and California common law,
alleging that IX’s use of its IMPOSSIBLE marks in connection with the marketing and sale of the
IX Powders is unlawful. Third Amended Complaint (“TAC”) ¶¶ 104–21, ECF No. 151.
Impossible also seeks cancellation of IX’s IMPOSSIBLE and IMPOSSIBLE FITNESS marks (the
“Challenged Marks”) pursuant to 15 U.S.C. §§ 1064, 1119, 1127 for fraud and abandonment.
Impossible alleges that all four Challenged Marks were procured by fraud and that three of the
Challenged Marks (not the IMPOSSIBLE word mark) were abandoned. In its revised answer and
counterclaims, IX asserts affirmative defenses of laches, waiver, acquiescence, estoppel, and
unclean hands, as well as counterclaims for trademark infringement and unfair competition under
the Lanham Act and California common law, alleging that Impossible’s use of its IMPOSSIBLE
marks in connection with the Impossible Cookbook and Impossible Swag is unlawful. See
Answer to Third Amended Complaint (“Answer”) at 53–54, ECF No. 241; Counterclaims to Third
Amended Answer (“Countercls.”) ¶¶ 62–78, 89–99, ECF No 241.
II. LEGAL STANDARD
Federal Rule of Civil Procedure 56 governs the standards for both motions for summary
judgment and motions for partial summary judgment, which are identical. See E.piphany, Inc.,
v. St. Paul Fire & Marine Ins. Co., 590 F. Supp. 2d 1244, 1250 (N.D. Cal. 2008). “A party is
entitled to summary judgment if the ‘movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.’” City of Pomona v. SQM
N. Am. Corp., 750 F.3d 1036, 1049 (9th Cir. 2014) (quoting Fed. R. Civ. P. 56(a)). A fact is
“material” if it “might affect the outcome of the suit under the governing law,” and a dispute as to
a material fact is “genuine” if there is sufficient evidence for a reasonable trier of fact to decide in
favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
The moving party bears the initial burden of proving the absence of a genuine issue of
material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); In re Oracle Corp. Sec. Litig.,
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627 F.3d 376, 387 (9th Cir. 2010). To meet its burden, “the moving party must either produce
evidence negating an essential element of the nonmoving party’s claim or defense or show that the
nonmoving party does not have enough evidence of an essential element to carry its ultimate
burden of persuasion at trial.” Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102
(9th Cir. 2000). If the nonmoving party bears the burden of proof at trial, the moving party need
only demonstrate that there is an absence of evidence to support the nonmoving party’s case.
Celotex, 477 U.S. at 325; see also Fed. R. Civ. P. 56(c)(1)(B).
“Where the moving party meets that burden, the burden then shifts to the non-moving
party to designate specific facts demonstrating the existence of genuine issues for trial.” In re
Oracle, 627 F.3d at 387. “[T]he non-moving party must come forth with evidence from which a
jury could reasonably render a verdict in the non-moving party’s favor.” Id. The court must view
the evidence in the light most favorable to the nonmovant and draw all reasonable inferences in
the nonmovant’s favor. Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1257 (9th Cir.
2001). “To survive summary judgment, a party does not necessarily have to produce evidence in a
form that would be admissible at trial, as long as the party satisfies the requirements of Federal
Rule of Civil Procedure 56.” Block v. City of Los Angeles, 253 F.3d 410, 418–19 (9th Cir. 2001).
“Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving
party, there is no ‘genuine issue for trial.’” Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986) (quoting First Nat’l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288–
89 (1968)).
“Because of the intensely factual nature of trademark disputes, summary judgment is
generally disfavored in the trademark arena.” Am. Auto. Ass’n of N. Cal., Nev. & Utah v. Gen.
Motors LLC, 367 F. Supp. 3d 1072, 1088 (N.D. Cal. 2019) (quoting Interstellar Starship Servs.,
Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir. 1999)); see also Yuga Labs, Inc. v. Ripps,
144 F.4th 1137, 1167 (9th Cir. 2025) (collecting cases).
III. IMPOSSIBLE’S MOTION
Impossible does not request partial summary judgment as to any of the Parties’ claims or
counterclaims but instead seeks to knock out IX’s demands for damages and its affirmative
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defenses.3 The Court finds that Impossible is entitled to partial summary judgment as to IX’s
demand for reputational damages and its five affirmative defenses, but that triable issues of fact
preclude partial summary judgment as to IX’s demands for corrective advertising damages and
punitive damages.
A. Damages
1. Corrective Advertising Damages
Impossible requests that the Court grant partial summary judgment that IX is not entitled to
corrective advertising damages. Impossible argues that IX cannot establish entitlement to
corrective advertising damages because it has failed to adduce any evidence that the value of IX’s
marks was damaged by the Impossible Cookbook and Impossible Swag. Pl.’s Mot. at 4. IX
responds that Mr. Runyon’s 30(b)(6) deposition testimony, together with the expert opinions of
Dr. Palmatier and Dr. Vanderhart, see Henn Decl. Ex. H (“Vanderhart Rep.”), creates a triable
issue of fact as to whether IX’s goodwill, reputation, and business have been injured because of
Impossible’s use of its IMPOSSIBLE marks in connection with the Impossible Cookbook and the
Impossible Swag. Defs.’ Opp. at 9.
“An award of the cost of corrective advertising, like compensatory damage awards in
general, is intended to make the plaintiff whole. It does so by allowing the plaintiff to recover the
cost of advertising undertaken to restore the value plaintiff’s trademark has lost due to defendant’s
infringement.” Adray v. Adry-Mart, Inc., 76 F.3d 984, 988 (9th Cir. 1995). “Such an award,
however, is ‘appropriate only where a plaintiff has shown that in fact it has been injured,’ or, put
another way, ‘that the mark lost value.’” Fortinet, Inc. v. Fortanix, Inc., No. 20-cv-6900-MMC,
2022 WL 1128723, at *11 (N.D. Cal. Apr. 15, 2022) (quoting Marketquest Grp., Inc. v. BIC
3 At oral argument, it became apparent that one of Impossible’s theories for why it was entitled to
partial summary judgment as to punitive damages went to the merits of IX’s underlying common-
law unfair competition claim. While Impossible indicated in its notice of the motion that it
intended to move for partial summary judgment as to IX’s common-law unfair competition claim,
see ECF No. 259, this was not included in the table of contents, and it was not readily apparent
from the moving papers that Impossible sought summary judgment on the underlying claim. The
Court finds that Impossible’s failure to clearly identify this ground for summary judgment raises a
notice issue and that consideration of Impossible’s argument would be prejudicial. Cf. Ortiz
v. Lopez, 688 F. Supp. 2d 1072, 1076 n.1 (E.D. Cal. 2010).
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Corp., 316 F. Supp. 3d 1234, 1301 (S.D. Cal. 2018)). A plaintiff seeking corrective advertising
damages must demonstrate that (1) it enjoys an established goodwill and reputation, (2) it has
suffered harm to that goodwill and reputation because of the defendant’s infringing activities, and
(3) corrective advertising is appropriate to restore that harm. Skydive Ariz., Inc. v. Quattrocchi,
673 F.3d 1105, 1113 (9th Cir. 2012). While the plaintiff “need not show a specific measure of
harm,” it “must present non-speculative evidence that goodwill and reputation . . . was damaged in
some way.” Quia Corp. v. Mattel, Inc., No. 10-cv-1902-JF-HRL, 2011 WL 2749576, at *6
(N.D. Cal. July 14, 2011); see also Int’l Oddities v. Record, No. 12-cv-3934-CAS, 2013 WL
3864050, at *14 (C.D. Cal. July 22, 2013).
Impossible argues that Mr. Runyon’s deposition testimony—which is binding on IX—
conclusively establishes that IX’s marks have not been harmed at all. See Pl.’s Mot. at 5–6.
Impossible points out that Mr. Runyon was unable to state what the value of his business or marks
were at any point in the last ten years and repeatedly confirmed that IX’s reputation “is” and has
“always been very good” among its target “consumers, just everyday people.” Id. (quoting
Runyon Dep. Tr. at 305:2–306:12). In this respect, Impossible seeks to analogize this case to Wag
Hotels, Inc. v. Wag Labs, Inc., No. 20-cv-1326-BLF, 2023 WL 3605977 (N.D. Cal. May 22,
2023), where the plaintiff’s CFO testified that the plaintiff “ha[d] not done any particular analysis
on” whether the defendant had done anything to impact the company’s financial performance, and
the plaintiff’s CEO testified that no analysis had been done as to whether defendant’s alleged
misconduct impacted the value of the plaintiff’s goodwill. Id. at *9. In Wag Hotels, the Court
concluded that the defendant was entitled to summary judgment on the issue of corrective
advertising damages because the plaintiff had “provided no evidence of any damage to the value
of its mark.” Id. at *10.
In opposing the motion, IX first points to other portions of Mr. Runyon’s 30(b)(6)
deposition testimony, where he testified to several specific instances of actual consumer
confusion. For example, he stated that, at a festival, “approximately half a dozen people were
confused” when he approached them, explaining that their association of his brand with
Impossible caused them to be “cautious[]” in their dealings with him. Runyon Dep. Tr. at 285:4–
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286:17. Mr. Runyon also stated that, on a separate occasion, upon seeing his IMPOSSIBLE t-shirt
a customer asked him: “It’s not that Impossible meat company? You’re in the wrong place if do
[sic] that.” Id. at 288:17–21. Mr. Runyon explained that the harm caused by this confusion has
been that he has had to “counteract[ customers’] impulse negative reaction[s],” and that this
difficulty has been compounded by reduced search rankings on Google and has required IX to
increase its advertising expenses. Id. at 311:4–18, 312:14–313:8.
While the Court agrees that Mr. Runyon’s testimony in isolation would be unlikely to
create a genuine factual dispute as to harm to IX’s marks, IX also identifies portions of its expert
reports describing IX’s performance and brand value. In his expert report, Dr. Palmatier opined
that IX’s expenditures with respect to its IMPOSSIBLE brand “allowed [IX] to generate brand
awareness and a unique brand identity,” Palmatier Rep. ¶ 24, further stating that “[a]ny negative or
unwanted associations due to consumer confusion that are linked to the [IX’s] brand or other
damage to [its] brand would typically require restorative marketing investments (e.g., corrective
advertising) to rebuild [IX’s] brand equity.” Id. ¶ 6; see also id. ¶ X (“Impossible Foods’ sales and
promotion of Impossible-branded clothing and cookbooks viewed by [IX’s] customers or potential
customers would damage [IX’s] brand equity.”). In her expert report, Dr. Vanderhart showed that
IX’s income decreased after the release of the Impossible Cookbook and Impossible Swag.
Vanderhart Rep. Ex. C-2; see also id. ¶¶ 50–51.
The Court concludes that Mr. Runyon’s testimony, taken together with Dr. Palmatier and
Dr. Vanderhart’s expert reports, is sufficiently nonspeculative for purposes of summary judgment.
To the extent that Impossible argues that Mr. Runyon’s failure to provide a precise valuation of
IX’s trademarks or profits bars corrective advertising damages as a matter of law, the Ninth
Circuit has made it clear that a plaintiff is not required to “provide a specific mathematical
formula.” Skydive Ariz., 673 F.3d at 1112. Similarly, Mr. Runyon’s opinion that IX enjoys a
positive reputation with its customers does not as a matter of law negate the other portions of his
testimony in which he stated that customers falsely associated IX with Impossible and drew
negative inferences against him because of that association. Although Impossible will be free to
argue at trial that these portions of Mr. Runyon’s testimony are contradictory, it is for the jury—
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not the Court at summary judgment—to make a final credibility determination, and the jury is
“entitled to . . . hear the full evidence” rather than “isolated sentences” from Mr. Runyon’s
deposition. Snapp v. United Transp. Union, 889 F.3d 1088, 1103 (9th Cir. 2018).
Relatedly, Impossible argues that, even if there is evidence of harm to IX’s reputation and
goodwill, IX has failed to show that such harm was caused by Impossible’s alleged infringing
conduct (i.e., the Impossible Cookbook and Impossible Swag), as opposed to Impossible’s
legitimate use of its IMPOSSIBLE (i.e., in connection with its line of plant-based meat
substitutes). Pl.’s Mot. at 13. In this respect, Impossible identifies portions of Dr. Palmatier’s
deposition testimony in which he testified that he did not “isolate the effect [of] Impossible Foods’
distribution of free clothing” and the Impossible Cookbook on IX’s marks. Henn Decl. Ex. I
(“Palmatier Dep. Tr.”) at 192:3–10. Impossible’s argument—which it styles as an objection that
IX has not sufficiently set forth evidence showing causation—amounts at bottom to an attack on
the weight of the evidence, which is not a ground for summary judgment.
While the Court agrees that a reasonable jury could infer from the record that any harm to
IX was caused by Impossible’s legitimate use of its marks, it is not for the Court to make this
determination at the summary judgment stage. This case is unlike Wag Hotels, where the Court
noted that the plaintiff solely relied upon evidence of consumer confusion and failed to present
any competent evidence that “this confusion resulted in damage to the value of its mark by
comparing its profits before and after the infringement.” Wag Hotels, 2023 WL 3605977, at *9.
Here, in contrast, IX “compare[d its] historical sales and profits before and after the infringement
and calculated[] lost profits that could be attributable to this confusion.” Marketquest,
316 F. Supp. 3d at 1301. “Although certainly there could be other explanations for this loss,” the
Court agrees with IX that “this is sufficient information to put the theory in front of the jury for
determination.” Id.
While the Court agrees that IX certainly faces an uphill battle at trial, the Court concludes
that a reasonable jury could find that IX experienced a financial decline following the release of
the Impossible Cookbook and Impossible Swag that was attributable to harm to IX’s goodwill and
reputation. Accordingly, Impossible’s request for partial summary judgment that IX is not entitled
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to corrective advertising damages is DENIED.
2. Reputational Damages
Impossible also requests that the Court grant partial summary judgment that IX is not
entitled to reputational damages. Pl.’s Mot. at 17. Impossible argues that, because IX did not
provide a computation in its initial disclosures of such damages pursuant to Federal Rule of Civil
Procedure 26, see Henn Decl. Ex. S, dismissal of its demand for reputational damages is
appropriate under Rule 37(c)(1)(C). Pl.’s Mot. at 17. IX does not contest the point.
Rule 26 requires that a party provide a “computation of each category of damages claimed
by the disclosing party” in its initial disclosures. Fed. R. Civ. P. 26(b)(1)(A)(iii). The purpose of
the computation requirement is to apprise defendants of their potential exposure and to enable
defendants to make informed decisions as to settlement and discovery. City & Cty. of San
Francisco v. Tutor-Saliba Corp., 218 F.R.D. 219, 221 (N.D. Cal. 2003). “Rule 37 ‘gives teeth’ to
Rule 26’s disclosure requirements by forbidding the use at trial of any information that is not
properly disclosed.” Goodman v. Staples the Off. Superstore, LLC, 644 F.3d 817, 827 (9th Cir.
2011) (quoting Yeti by Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (2001)).
“[W]here a party fails to disclose information required in Rule 26(a) and that failure is not
harmless, a party may not be permitted to use that evidence at trial.” Colombini v. Members of Bd.
of Dirs. of Empire Coll. Sch. of L., No. 97-cv-4500-CRB, 2001 WL 1006785, at *8 (N.D. Cal.
Aug. 17, 2001), aff’d sub nom., Colombini v. Members of Bd. of Dirs., 61 F. App’x 387 (9th Cir.
2003). This is based on the straightforward recognition that “[d]efendants are not required to
compute damages[ because] Rule 26 requires plaintiffs to do so.” Villagomes v. Lab’y Corp. of
Am., 783 F. Supp. 2d 1121, 1129 (D. Nev. 2011).
There is no dispute that IX failed to comply with Rule 26’s disclosure requirement with
respect to reputational damages: Its initial disclosure makes no reference to reputational damages.
See Henn Decl. Ex. S at 14 (“[IX] seeks disgorgement of profits under 15 U.S.C. § 1117(a), as
well as punitive and exemplary damages as the Court finds appropriate to deter any future willful
infringement.”). The Court agrees with Impossible that IX’s failure to provide any information
about the computation of reputational damages is prejudicial to Impossible because it deprives
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Impossible of the opportunity to reasonably respond to the demand. Because it is “wholly unclear
how [IX is] to determine the damages to . . . reputation” the Court agrees that “exclusion of this
damages theory is warranted.” Int’l Metaphysical Ministry, Inc. v. Wisdom of Heart Church,
No. 21-cv-8066-KAW, 2022 WL 19691043, at *6 (N.D. Cal. Dec. 19, 2022). Having determined
that all such evidence would be excluded at trial, the Court finds that IX cannot present any
evidence to show any disputed facts with respect to reputational damages. Accordingly,
Impossible’s request for partial summary judgment that IX is not entitled to reputational damages
is GRANTED.
3. Punitive Damages
Impossible requests that the Court grant partial summary judgment that IX is not entitled to
punitive damages with respect to its common-law infringement claim. Impossible argues that IX
cannot establish entitlement to punitive damages because it has failed to create a triable issue of
fact that (1) IX is entitled to actual damages, (2) IX has superior common-law rights in California,
and (3) Impossible acted with oppression, fraud, or malice. Pl.’s Mot. at 17–18. As described
supra, the Court finds that IX has met its burden of raising a triable issue of fact as to actual
damages; the Court also declines to consider Impossible’s merits-based argument that IX’s
underlying common-law unfair competition claim fails because of the lack of notice to IX.
Accordingly, the Court limits its analysis to Impossible’s third argument, to which IX responds
that there is sufficient evidence for a reasonable jury to conclude that Impossible intentionally
adopted IX’s trademark in conscious disregard of IX’s rights. Defs.’ Opp. at 23.
Under California law, a party may be awarded punitive damages only if “there is some
evidence of fraud, malice, express or implied, or oppression.” Spinks v. Equity Residential
Briarwood Apartments, 171 Cal. App. 4th 1004, 1052 (2009). Punitive damages must be proven
by ‘clear and convincing’ evidence.” Am. Airlines, Inc. v. Sheppard, Mullin, Richter & Hampton,
96 Cal. App. 4th 1017, 1050 (2002) (quoting Cal. Civ. Code § 3294). “In the usual case, the
question of whether the defendant’s conduct will support an award of punitive damages is for the
trier of fact, since the degree of punishment depends on the peculiar circumstances of each case.”
Spinks, 171 Cal. App. 4th at 1053; see also Hannon Eng’g, Inc. v. Reim, 126 Cal. App. 3d 415,
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431 (1981).
The Court finds no good reason to diverge from the general principle that punitive
damages awards are a question for the trier of fact. A reasonable jury could find, for example, that
Impossible’s alleged infringement of a much smaller competitor’s intellectual property is
oppressive, fraudulent, or malicious. See QS Wholesale, Inc. v. World Mktg., Inc., No. 12-cv-451,
2014 WL 12586120, at *4 (C.D. Cal. Jan. 7, 2014). Accordingly, Impossible’s request for partial
summary judgment that IX is not entitled to punitive damages is DENIED.
B. Affirmative Defenses
1. Laches
IX contends that Impossible’s Lanham Act and common-law unfair competition claims
challenging the IX Powders are barred by laches based on Impossible’s “longstanding actual
and/or constructive knowledge of [IX’s] use of IMPOSSIBLE with edible products.” Answer
at 53. Impossible requests that the Court grant partial summary judgment that the claims are not
barred by laches because IX cannot prove the elements of the claim. Impossible supports this
argument with evidence showing that (1) Impossible asserted its claims two years after IX began
selling the IX Powders in 2022, and (2) there is no evidence of prejudice. Pl.’s Mot. at 20. IX
responds that it began selling krill oil under the IMPOSSIBLE brand in 2017, such that Impossible
delayed seven years in asserting its claims. Defs.’ Opp. at 24.
“Laches is an equitable time limitation on a party’s right to bring suit.” Jarrow Formulas,
Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002) (quoting Boone v. Mech. Specialties
Co., 609 F.2d 956, 958 (9th Cir. 1979)). The doctrine is animated by the concern that “one who
seeks the help of a court of equity must not sleep on his rights.” Id. (citation omitted). To prevail
on the affirmative defense of laches, a defendant must establish that (1) the plaintiff unreasonably
delayed in suing and (2) such delay is prejudicial to the defendant. Miller v. Glenn Miller Prods.,
Inc., 454 F.3d 975, 997 (9th Cir. 2006).
Noting the “strong presumption against laches” in cases where a claim is brought within
four years of the date a plaintiff “knew (or should have known) of the allegedly infringing
conduct,” Impossible argues that summary judgment is appropriate because it moved to assert its
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claims two years after IX began selling the IX Powders in 2022. Id. at 20 (quoting Eat Right
Foods Ltd. v. Whole Foods Mkt., Inc., 880 F.3d 1109, 1115 (9th Cir. 2018)). “Determining
whether a plaintiff delayed unreasonably consists of (1) assessing the length of the delay and then
(2) determining whether the delay was reasonable.” Kiva Health Brands LLC v. Kiva Brands Inc.,
439 F. Supp. 3d 1185, 1191 (N.D. Cal. 2020). IX adduces no evidence that Impossible had actual
or constructive notice of IX’s use of the IMPOSSIBLE mark in connection with its krill oil, so any
delay by Impossible was presumptively reasonable. See Reno Air Racing Ass’n. v. McCord,
452 F.3d 1126, 1139 (9th Cir. 2006) (explaining that laches requires more than a “mere handful of
limited sales . . . [with] no evidence of knowledge”).
The Court notes that, at oral argument, IX represented that there is evidence in the record
that Impossible apparently monitored IX for inspiration around the time it began rebranding in the
early 2010s. IX did not identify any evidence, however, that Impossible was still monitoring IX at
the time that IX began offering krill oil, which it began selling years later. In any event, IX did
not raise this argument in its opposition brief, so it is waived. See In re Online DVD Rental
Antitrust Litig., No. 09-cv-2029-PJH, 2011 WL 5883772, at *12 (N.D. Cal. Nov. 23, 2011)
(explaining that, absent unusual circumstances, failure to respond to argument on merits “viewed
as grounds for waiver or concession of the argument”).
IX having failed to adduce any evidence of unreasonable delay, the Court concludes that
Impossible is entitled to partial summary judgment that its claims are not barred by laches.
Moreover, the Court concludes that partial summary judgment is independently warranted because
of IX’s failure to even suggest that any delay by Impossible in asserting its claims has been
prejudicial. See Adidas Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1072 (D. Or.
2008) (granting summary for failure to show prejudice). Courts generally recognize two forms of
prejudice in the context of laches: (1) expectations-based prejudice and (2) evidentiary prejudice.
“‘Expectations’ based prejudice occurs when a defendant ‘took actions or suffered consequences
that it would not have, had the plaintiff sued promptly.’ ‘Evidentiary prejudice includes such
things as lost, stale, or degraded evidence, or witnesses whose memories have faded or who have
died.’” EEOC v. Timeless Invs., Inc., 734 F. Supp. 2d 1035, 1067 (E.D. Cal. 2010) (citation
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omitted) (quoting Grand Canyon Tr. v. Tucson Elec. Power Co., 391 F.3d 979, 988 (9th Cir.
2004)). There is no evidence that Impossible’s failure to bring suit in 2017 caused IX to act to its
detriment or impaired its ability to defend itself in these proceedings. Indeed, IX practically
conceded that it failed to meet its burden as to prejudice at oral argument. Accordingly,
Impossible’s request for partial summary judgment as to laches is GRANTED.
2. Waiver
IX contends that Impossible’s trademark cancellation claims are barred by waiver based on
Impossible’s “actual and constructive use of [IX’s] use and trademark of the IMPOSSIBLE-
formative mark in relation to non-edible products since at least 2013.” Answer at 53. Impossible
requests that the Court grant partial summary judgment that the claims are not barred by waiver
because IX has not provided any evidence of an affirmative act by Impossible, as is required for an
affirmative defense of waiver. Pl.’s Mot. at 20–21. IX’s only response—which is its sole
response to Impossible’s motion as to each of IX’s remaining affirmative defenses—is that
“Impossible Foods fails to carry its burden of production because it does not cite any evidence to
negate an essential element of the defenses or show that [IX] lacks evidence to support them.”
Defs.’ Opp. at 25.
IX’s position is untenable as a matter of law. Impossible provided the Court with IX’s full
explanation of the evidence underlying the acquiescence defense (which overlaps significantly
with waiver and estoppel), see Henn Decl. Ex. T, which is more than sufficient to “show that the
nonmoving party does not have enough evidence of an essential element to carry its ultimate
burden of persuasion at trial.” Unicorn Energy AG v. Tesla Inc., 740 F. Supp. 3d 930, 940
(N.D. Cal. 2024); see also Nissan, 210 F.3d at 1102 (“[T]he nonmoving party does not have
enough evidence of an essential element to carry its ultimate burden of persuasion at trial.”). IX’s
non-response necessarily compels summary judgment in Impossible’s favor. The Court addresses
each remaining affirmative defense solely for the sake of completeness.
Waiver is “the intentional relinquishment or abandonment of a known right.” Lynch
v. Cal. Coastal Com., 3 Cal. 5th 470, 475 (2017). For a court to find that a party has waived its
rights, the court must find “an existing right, the waiving party’s knowledge of that right, and the
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party’s ‘actual intention to relinquish the right.’” Id. (quoting Bickel v. City of Piedmont,
16 Cal. 4th 1040, 1053 (1997)). “Waiver always rests upon intent.” Id. (quoting City of Ukiah
v. Fones, 64 Cal. 2d 104, 107 (1966)).
Because IX “has provided no evidence that [Impossible] knew of [its conduct], much less
that it intentionally and knowingly abandoned any rights . . . because of such knowledge,”
Impossible is entitled to partial summary judgment that its claims are not barred by waiver. LL B
Sheet 1, LLC v. Loskutoff, 362 F. Supp. 3d 804, 823 (N.D. Cal. 2019). The Court accordingly
GRANTS Impossible’s request for partial summary judgment as to waiver.
3. Acquiescence
IX contends that Impossible’s trademark cancellation claims are barred by the doctrine of
acquiescence “based on [Impossible’s] active representation that it would not assert a right or
claim against [IX] for their use of the IMPOSSIBLE-formative mark.” Answer at 53. Impossible
requests that the Court grant partial summary judgment that the claims are not barred by
acquiescence because IX has not provided any evidence of an active representation. Pl.’s Mot.
at 21.
“To establish a claim for acquiescence, defendant must prove that plaintiff knew of facts
giving it notice of its trademark infringement claim.” Nat’l Grange of the Ord. of Patrons of
Husbandry v. Cal. State Grange, 115 F. Supp. 3d 1171, 1180 (E.D. Cal. 2015), aff’d sub nom.,
Nat’l Grange of Ord. of Patrons of Husbandry v. Cal. State Grange, 715 F. App’x 747 (9th Cir.
2018). The defendant must demonstrate that “(1) the senior user actively represented that it would
not assert a right or a claim; (2) the delay between the active representation and assertion of the
right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.” Eat
Right Foods, 880 F.3d at 1121 (quoting Seller Agency Council, Inc. v. Kennedy Ctr. for Real Est.
Educ., Inc., 621 F.3d 981, 989 (9th Cir. 2010)).
To the extent that IX implies that Impossible’s purported delay or failure to act is
tantamount to an active representation, that is simply not the case. See, e.g., PetConnect Rescue,
Inc. v. Salinas, 656 F. Supp. 3d 1131, 1180 (S.D. Cal. 2023); Tri-Union Seafoods LLC v. Otis
McAllister, Inc., No. 17-cv-6646-JSW, 2020 WL 1550233, at *4 (N.D. Cal. Jan. 8, 2020)
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(“Acquiescence requires ‘active consent’ while laches implies ‘merely passive consent.’” (quoting
Tillamook Country Smoker, Inc. v. Tillamook Cty. Creamery Ass’n, 311 F. Supp. 2d 1023, 1031
n.2 (D. Or. 2004), aff’d, 465 F.3d 1102 (9th Cir. 2006))). The Court accordingly GRANTS
Impossible’s request for partial summary judgment as to acquiescence.
4. Estoppel
IX contends that Impossible’s trademark cancellation claims are estopped “based on
[Impossible’s] actual knowledge that [IX was] using the IMPOSSIBLE formative-mark [sic] with
the non-edible products and services at issue in those claims.” Answer at 53. Impossible requests
that the Court grant partial summary judgment that the claims are not estopped because IX has not
adduced evidence as to any of the elements required for estoppel. Pl.’s Mot. at 21.
The elements of equitable estoppel are as follows: “(1) the party to be estopped must be
apprised of the facts; (2) he must intend that his conduct shall be acted upon, or must so act that
the party asserting the estoppel has a right to believe it was so intended; (3) the other party must be
ignorant of the true state of facts; and (4) he must rely upon the conduct to his injury.” Schafer
v. City of Los Angeles, 237 Cal. App. 4th 1250, 1261 (2015).
For the same reasons that the Court finds that Impossible is entitled to summary judgment
as to IX’s waiver and acquiescence affirmative defenses, the Court concludes that Impossible is
entitled to summary judgment as to IX’s estoppel affirmative defense. Namely, there is no
evidence that Impossible was apprised of IX’s alleged fraud or abandonment, and IX has not
adduced any evidence of injury. The Court accordingly GRANTS Impossible’s request for partial
summary judgment as to estoppel.
5. Unclean Hands
IX contends that Impossible’s trademark cancellation claims are barred by the doctrine of
unclean hands “based on [Impossible’s] inequitable conduct.” Answer at 53. Impossible requests
that the Court grant partial summary judgment that the claims are not barred by the doctrine of
unclean hands because there is no evidence that Impossible acted inequitably with respect to its
cancellation claims. Pl.’s Mot. at 21.
“The unclean hands doctrine ‘closes the doors of a court of equity to one tainted with
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inequitableness or bad faith relative to the matter in which he seeks relief.’” Jarrow Formulas,
304 F.3d at 841 (quoting Precision Instr. Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814
(1945)). To make out an unclean hands defense, a trademark defendant “must demonstrate that
the plaintiff’s conduct is inequitable and that the conduct relates to the subject matter of its
claims.” Japan Telecom, Inc. v Japan Telecom Am. Inc., 287 F.3d 866, 870 (9th Cir. 2002)
(emphasis added) (quoting Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 847
(9th Cir. 1987)).
IX fails to point to any evidence that Impossible acted inequitably with respect to the fraud
and abandonment claims. More fundamentally, it is not even clear how Impossible could not have
engaged in any inequitable conduct that relates to IX’s alleged fraudulent acts in registering its
marks and then abandoning them. The Court accordingly GRANTS Impossible’s request for
partial summary judgment as to unclean hands.
IV. IX’S MOTION
IX moves for partial summary judgment on Impossible’s claims for trademark
infringement, unfair competition, and trademark cancellation. IX also requests summary
adjudication that its marks have priority as to goods and services in what it styles the “Nutrition
and Fitness Category.” Triable issues of fact preclude summary judgment for IX as to any of
Impossible’s claims, so the Court denies IX’s motion in its entirety.
A. Lanham Act Claims
IX requests that the Court grant partial summary judgment as to Impossible’s Lanham Act
claims for trademark infringement and unfair competition. IX argues that Impossible has failed to
create a genuine dispute as to likelihood of confusion, urging that the IX Powders are so different
from Impossible’s offerings that no reasonable jury could find in Impossible’s favor. Defs.’ Mot.
at 7. Impossible responds that IX’s argument ascribes too much weight to this one factor and that
it has met its burden of producing evidence showing disputed facts as to likelihood of confusion.
Pl.’s Opp. at 11.
To prevail on a claim arising under the Lanham Act, a plaintiff must prove that (1) it has a
protectible ownership interest in the mark and (2) the defendant’s use of the mark is likely to
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confuse consumers. Network Automation, Inc. v. Adv. Sys. Concepts, 638 F.3d 1137, 1144
(9th Cir. 2011); Dep’t of Parks & Rec. v. Bazaar Del Mundo, Inc., 448 F.3d 1118, 1124 (9th Cir.
2006). The likelihood of confusion inquiry turns on whether a “reasonably prudent consumer in
the marketplace is likely to be confused as to the origin of the good or service bearing one of the
marks.” Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).
Courts in the Ninth Circuit consider the following so-called Sleekcraft factors in evaluating
likelihood of confusion:
1. strength of the mark;
2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be exercised by the
purchaser;
7. defendant’s intent in selecting the mark; and
8. likelihood of expansion of the product lines.
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979).
Application of the Sleekcraft factors is “fluid,” and the plaintiff “need not satisfy every
factor, provided that strong showings are made with respect to some of them.” Surfvivor Media,
Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005). “‘Given the open-ended nature of this
multi-prong inquiry’ summary judgment on likelihood of confusion grounds is ‘generally
disfavored.’” Roblox Corp. v. WowWee Grp. Ltd., No. 22-cv-4476-SI, 2024 WL 4051751, at *6
(N.D. Cal. Sept. 3, 2024) (quoting Rearden LLC v. Rearden Comm., Inc., 683 F.3d 1190, 1210
(9th Cir. 2012)). IX argues that, applying certain Sleekcraft factors, there can be no likelihood of
confusion as a matter of law; Impossible offers evidence of disputed facts on those and other
factors.
1. Relatedness of Products and Evidence of Actual Confusion
IX dedicates a significant amount of its briefing to the argument that Impossible’s plant-
based meat substitutes and the IX Powders are so dissimilar that there is no likelihood of
confusion as a matter of law. Defs.’ Mot. at 7–9. IX argues that this dissimilarity, combined with
the lack of evidence of actual consumer confusion in the record, entitles it to partial summary
judgment. A reasonable jury could come out either way, and Impossible presents sufficient
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evidence of disputed material facts.
“For related goods, the danger presented is that the public will mistakenly assume there is
an association between the producers of the related goods, though no such association exists.”
Sleekcraft, 599 F.2d at 350. In assessing relatedness, the Court considers whether the goods at
issue are (1) complementary, (2) sold to the same class of purchasers, or (3) similar in use and
function. Reeves v. Gen. Nutrition Ctrs., Inc., No. 10-cv-1654-JAK, 2012 WL 13018362, at *4
(C.D. Cal. Apr. 2, 2012). IX makes much of Impossible’s corporate designee’s deposition
testimony that “nutritional supplements are not the same types of products as plant-based meat
products.” Washington Decl. Ex. BB (“Hatman Dep. Tr.”) at 298:2–5.
Ms. Hatman’s testimony certainly may imply that the goods are not particularly
complementary, but “the law does not demand complete identity of goods.” His & Her Corp.
v. Shake-N-Go Fashion Inc., No. 11-cv-5323-CAS, 2015 WL 13604255, at *7 (C.D. Cal. Apr. 6,
2015). “[T]he concept of relatedness . . . . does not mean that customers would necessarily
consider the products as interchangeable.” Nimbus Data Sys., Inc. v. Nimble Storage, Inc.,
No. 11-cv-5323-CAS, 2011 WL 13261995, at *3 (N.D. Cal June 27, 2011). Although the Court
agrees that a reasonable jury could find that the goods belong to different sides of the spectrum of
edible food products, they do have some similarities, such as emphasizing nutrition. Cf. San
Miguel Pure Foods Co. v. Ramar Int’l Corp., No. 11-cv-9747-RGK, 2012 WL 13227045, at *6
(C.D. Cal. Nov. 27, 2012) (“Courts have found a likelihood of confusion in seemingly unrelated
food items, such as . . . bakery products and frozen chicken.”).
There is also conflicting evidence as to whether the goods are directed to similar customer
bases. On one hand, IX persuasively demonstrates that the Parties’ offerings are directed to
entirely different constituencies, pointing out that Ms. Hatman testified that Impossible’s offerings
target consumers concerned with “the ethical or environmental consequences that may come with
eating animal meat,” Hatman Dep. Tr. at 169:9–16, while the IX Powders are directed to
consumers interesting in enhancing physical performance, Runyon Dep. Tr. at 347:3–18. On the
other hand, Impossible points to evidence showing that that other well-known companies sell both
types of products, see Declaration of Bruce Nelson (“Nelson Decl.”) Exs. A–L, supporting the
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inference that consumers could expect meat substitutes and energy supplements to be sold by the
same company. Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1117 (Fed. Cir. 2024)
(“[T]estimony that third-party companies sell both types of goods is pertinent to the relatedness of
the goods.”).4
With regard to evidence of actual confusion, which Impossible concedes there is little, see
Pl.’s Opp. at 16, “the absence of such evidence is not dispositive.” Sunsauce Foods Indus. Corp.
v. Son Fish Sauce USA Corp., No. 22-cv-8973-PCP, 2024 WL 4933346, at *6 (N.D. Cal. Dec. 2,
2024) (quoting Off. Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1393 (9th Cir. 1993)); see also
Acad. of Mot. Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1456
(9th Cir. 1991). The paucity of evidence of actual confusion is not dispositive in this case. See
Gallo Winery, 967 F.2d at 1292 (explaining that the absence of evidence of actual confusion “need
not create an inference that there is no likelihood of confusion”). Indeed, the lack of actual
evidence is hardly surprising given IX’s small number of customers. See Flemming Decl. Ex. X.
A reasonable jury could find, however, that the “‘scant evidence of actual confusion in the
record[]’ . . . favors [the] defendant.” La Canada Ventures, 2024 WL 3643082, at *3 (quoting
Surfvivor Media, 406 F.3d at 633); accord Top Brand LLC v. Cozy Comfort Co. LLC, 143 F.4th
1349, 1366 (Fed. Cir. 2025).
2. Strength and Similarity of Marks
Impossible argues that there is evidence in the record from which a reasonable jury could
determine that there is a likelihood of confusion, particularly with respect to its marks’ strength
and the similarity of the marks. The Court agrees and accordingly finds that there is a triable
factual dispute precluding partial summary judgment.
“The stronger a mark—meaning the more likely it is to be remembered and associated in
the public mind with the mark’s owner—the greater the protection it is accorded by the trademark
laws.” Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1058 (9th Cir. 1999).
4 IX objects to evidence of third parties offering both products on the ground that Impossible did
not disclose it during discovery. Defs.’ Reply at 2–3. The objection is meritless, as this
information is publicly available.
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A mark’s strength is evaluated along two axes: conceptual strength and commercial strength.
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000).
“To determine a mark’s conceptual strength, we classify a mark along a spectrum of five
categories ranging from strongest to weakest: arbitrary, fanciful, suggestive, descriptive, and
generic. Arbitrary and fanciful marks, which employ words and phrases with no commonly
understood connection to the product,” are the strongest. JL Beverage Co. v. Jim Beam Brands
Co., 828 F.3d 1098, 1107 (9th Cir. 2016) (citation omitted). A reasonable jury could conclude
that Impossible’s marks are arbitrary, i.e., “actual words with no connection to the product.”
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1033
(9th Cir. 2010). Because the word “impossible” arguably does not describe or suggest any
specific qualities of Impossible’s plant-based meat substitutes, a jury could reasonably conclude
that marks are conceptually strong and should be accorded significant protection. See JL
Beverage Co., 828 F.3d at 1108.
Commercial strength “is based on ‘actual marketplace recognition,’ and thus ‘advertising
expenditures can transform a suggestive mark into a strong mark.’” Network Automation,
638 F.3d at 1149 (quoting Brookfield Commc’ns, 174 F.3d at 1058). Impossible has adduced
evidence that it has used its marks extensively in connection with advertising and promoting its
plant-based offerings since 2016. See, e.g., Declaration of H. Forrest Flemming (“Flemming
Decl.”) Ex. F at 8, ECF No. 274-1. A reasonable jury could determine that IMPOSSIBLE’s marks
command significant actual recognition in the marketplace.
IX does not dispute that Impossible’s marks are strong, instead baldly asserting that this
factor “does not even merit attention” because the Parties’ “product lines are so distinct that the
strength of the mark at issue is simply not relevant.” Defs.’ Mot. at 11. Not so. The Ninth Circuit
has endorsed a “sliding scale approach as to the weight that relatedness will carry dependent upon
the strength of the trademark holder’s mark.” Entrepreneur Media, 279 F.3d at 1148; see also
Dermfx, Inc. v. Obagi Med. Prods., Inc., No. 15-cv-1999-JVS, 2017 WL 2684548, at *8
(C.D. Cal. Mar. 24, 2017) (“When the disputed mark is weak, the ‘proximity’ or ‘relatedness’
factor carries less weight in the likelihood of confusion analysis.” (quoting Entrepreneur Media,
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279 F.3d at 1148)). A reasonable jury could find that this factor weighs in Impossible’s favor.
Similarity of marks “is ‘critical’ to any likelihood-of-confusion analysis because
‘[o]bviously, the greater the similarity between the two marks at issue, the greater the likelihood of
confusion.’” Yuga Labs, 144 F.4th at 1169 (alteration in original) (quoting GoTo.com, 202 F.3d
at 1205–06). The fact finder must consider the marks “as a whole, as they appear in the
marketplace,” E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992), on
three levels: sight, sound, and meaning. See, e.g., Good Meat Project v. GOOD Meat, Inc.,
716 F. Supp. 3d 783, 800 (N.D. Cal. 2024). As with the strength of Impossible’s marks, IX does
not dispute the marks’ similarity.
Impossible points to the evidence of similarity between the marks—a fact finder could
determine that they are “strikingly similar.” Trader Joe’s Co. v. Trader Joe’s United, 150 F.4th
1040, 1051 (9th Cir. 2025); see also La Canada Ventures, Inc. v. MDalgorithms, Inc., No. 22-cv-
7197-RS, 2024 WL 3643082, at *5 (N.D. Cal. Aug. 2, 2024) (“The common use of this dominant
element tends to show similarity in the parties’ marks.” (quoting Alpha Indus., Inc. v. Alpha Steel
Tube & Shapes, Inc., 616 F.2d 440, 444 (9th Cir. 1980))). While IX’s marks include a
strikethrough that is not present in Impossible’s mark, the Court concludes that a reasonable jury
could conclude that this factor “weighs in [Impossible’s] favor as similarities in marks ‘weigh
more heavily than differences.’” Id. (quoting Alpha Indus., 616 F.2d at 444). Courts have
routinely found that marks were identical in similar contexts. See Brookfield Commc’ns, 174 F.3d
at 1055 (collecting cases). By virtue of being the same word, the marks also have the same sound
and meaning. A reasonable jury could find that this factor weighs in Impossible’s favor.
3. Remaining Factors
The Parties dedicate some briefing to the remaining Sleekcraft factors. Based on its review
of the remaining factors, the Court concludes that there are significant factual disputes that require
fact finding, rendering partial summary judgment inappropriate.
a. Marketing Channel Convergence. “Just as visual, aural, and semantic similarities
between marks increase the likelihood of confusion, so too do convergent marketing
channels. In assessing marketing channel convergence, courts consider whether the
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parties’ customer bases overlap and how the parties advertise and market their
products.” Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1130 (9th Cir. 2014)
(citation omitted). This factor looks to whether consumers are likely to be confused by
encountering the parties’ goods in similar contexts. La Quinta Worldwide LLC
v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 876–77 (9th Cir. 2014). Neither party
dedicates much briefing to this factor. Impossible meekly argues the Court should find
that this factor tilts in its favor because both Parties sell their goods on Amazon and use
social media marketing. See Pl.’s Opp. at 15. Generally, little weight is accorded to
“the shared use of . . . ubiquitous marketing channel[s].” Lerner & Rowe PC v. Brown
Engstrand & Shely LLC, 119 F.4th 711, 726 (9th Cir. 2024), cert. denied, 145 S. Ct.
2732 (2025) (quoting Network Automation, 638 F.3d at 1151). The evidence presented
by the Parties does not suggest much overlap between the Parties’ marketing channels,
so “the trier of fact should determine what weight to afford it when considering the
totality of the circumstances.” Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 1150,
1167 (9th Cir. 2021).
b. Purchasers’ Degree of Care. “In analyzing the degree of care that a consumer might
exercise in purchasing the parties’ goods, the question is whether a ‘reasonably prudent
consumer’ would take the time to distinguish between the two product lines.”
Surfvivor Media, 406 F.3d at 634 (quoting Brookfield Commc’ns, 174 F.3d at 1060).
The two primary instances in which courts have found that consumers are likely to
exercise a greater degree of care—thereby making confusion less likely—is when the
consumers themselves are particularly knowledgeable about the goods at issue or when
the goods are expensive. See, e.g., Network Automation, 638 F.3d at 1152; Brookfield
Commc’ns, 174 F.3d at 1060; Monster, Inc. v. Dolby Lab’ys Licensing Corp.,
920 F. Supp. 2d 1066, 1074 (N.D. Cal. 2013). There is evidence in the record that
favors both parties. IX argues that by the very nature of Impossible’s offerings, its
customers are likely to exercise a higher degree of care than the average consumer,
since individuals interested in purchasing plant-based meat alternatives often do so for
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health, environmental, or ethical reasons. Defs.’ Mot. at 11. This is certainly
plausible, as consumers motivated by such considerations may be more likely to
exercise a higher degree of discernment in making their purchases. At the same time,
however, there is evidence that Impossible intends to target both vegetarian and non-
vegetarian consumers. Henn Decl. Ex. E (“Krogius Dep. Tr.”) at 113:1–20.
Impossible argues that the goods are inexpensive, analogizing them to grocery store
foods that have been held to demand a lesser standard of care from consumers. Pl.’s
Opp. at 16 (citing ECF No. 138-7 at 9–20); see Gallo Winery, 967 F.2d at 1293
(holding that this factor weighed toward confusion in the context of wine and cheese).
But there is no evidence how the prices of the goods compare to similar offerings.
Because neither party “offers any factual evidence to support its allegations about their
respective customers[, t]here is therefore a genuine dispute as to this factor,” and it
does not favor either party. Sunsauce Foods, 2024 WL 4933346, at *4.
c. Defendant’s Intent. “When the alleged infringer knowingly adopts a mark similar to
another’s, reviewing courts presume that the defendant can accomplish his purpose:
that is, that the public will be deceived.” Sleekcraft, 599 F.2d at 354. While “an intent
to confuse consumers is not required for a finding of trademark infringement,”
Brookfield Commc’ns, 174 F.3d at 1059, it can be “strong evidence of a likelihood of
confusion,” Entrepreneur Media, 279 F.3d at 1148. IX conclusorily argues that it “did
not seek to cause confusion between the marks at issue.” Defs.’ Mot. at 10. The Court
accords this argument little weight. Surfvivor Media, 406 F.3d at 634 (“[A]bsence of
malice is no defense to trademark infringement[] . . . .” (alterations in original) (internal
citation omitted)). In any case, IX’s argument is inappropriate at the summary
judgment stage, where the Court must draw all inferences in the non-moving party’s
favor: “[A]lthough the relative weight of permissible and impermissible motives may
emerge at trial, [courts] must be careful about untangling them at summary judgment,
where we must draw all reasonable inferences in [the non-movant’s] favor.” Yuga
Labs, 144 F.4th at 1173.
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d. Likelihood of Expansion. “Inasmuch as a trademark owner is afforded greater
protection against competing goods, a ‘strong possibility’ that either party may expand
his business to compete with the other will weigh in favor of finding that the present
use is infringing.” Sleekcraft, 599 F.2d at 354. The primary inquiry in evaluating this
factor is to determine whether the existence of the allegedly infringing mark poses the
possibility of hindering the trademark holder’s plans to expand its offerings.
Entrepreneur Media, 279 F.3d at 1152. Impossible argues that this factor weighs in its
favor because Mr. Runyon stated that IX has an interest in expanding its product line to
include whey protein powder. See Runyon Dep. Tr. at 348:13–16, 349:16–19. In
response, IX argues that, since whey is derived from animals, no reasonable jury could
find that this expansion would compete with Impossible. But this argument is at
bottom a request for the Court to weigh the evidence, which the Court declines to do
here. In any event, the Court does not find this factor to be particularly important at
this stage, since Impossible does not point to any other evidence suggesting a
likelihood of expansion, and mere speculation by Mr. Runyon is not evidence. See
Paladin Assoc., Inc. v. Mont. Power Co., 328 F.3d 1145, 1161 (9th Cir. 2003).
Summary judgment is not appropriate because the evidence suggests that Impossible has a
strong mark, that the Parties’ marks are similar, and that there is a genuine factual dispute whether
the Parties’ goods are related. See Top Brand, 143 F.4th at 1365–66 (reviewing likelihood of
confusion based on mark strength, mark similarity, and evidence of actual confusion); Rearden,
683 F.3d at 1209 (“A determination may rest on only those factors that are most pertinent to the
particular case before the court[] . . . .”); Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 257
(9th Cir. 1986) (reversing district court’s finding of no likelihood of confusion for similar marks,
even where other six factors favored the defendant); cf. Dreamwerks, 142 F.3d at 1130 (“Three of
the Sleekcraft factors are pivotal here: (1) arbitrariness of the mark; (2) similarity of sight, sound
and meaning; and (3) relatedness of the goods.”). “[C]onflicting facts render it unclear whether a
likelihood of confusion exists, [so] summary judgment is inappropriate.” Ironhawk, 2 F.4th
at 1161–62. Accordingly, IX’s request for partial summary judgment as to Impossible’s Lanham
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Act claims is DENIED.
B. California Common Law Unfair Competition
IX requests that the Court grant partial summary judgment as to Impossible’s common-law
unfair competition claim. IX contends that it is entitled to summary judgment on Impossible’s
common law unfair competition claim because Impossible has not sufficiently demonstrated that
IX intended to “pass off” the IX Accused Products as Impossible’s. Defs.’ Mot. at 12–13.
Impossible responds that its common-law unfair competition claim rises and falls with its Lanham
Act claims. Pl.’s Opp. at 17.
The “ultimate test” of a common-law unfair competition claim under California law is
“whether the public is likely to be deceived or confused by the similarity of the marks.”
Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988) (quoting New West
Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1201 (9th Cir. 1979)); see also Glydways, Inc. v. Glyd,
Inc., No. 23-cv-203-EJD, 2025 WL 2988642, at *4 (N.D. Cal. Oct. 23, 2025); Ingrid & Isabel,
LLC v. Baby Be Mine, LLC, 70 F. Supp. 3d 1105, 1119 (N.D. Cal. 2014). Unfair competition
claims “are subject to the same test” whether they be brought under the Lanham Act or the
common law, and “the critical determination is ‘whether an alleged trademark infringer’s use of a
mark creates a likelihood that the consuming public will be confused as to who makes what
product.’” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008) (quoting Brother
Recs., Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003)).
To the extent that IX argues that a common-law claim for unfair competition is distinct
from a claim under the Lanham Act in that it requires a plaintiff to separately prove “passing off,”
IX is mistaken. The case that it cites for this proposition states in full that unfair competition must
be proven by “acts analogous to ‘passing off,’ such as the sale of confusingly similar products.”
Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1147 (9th Cir. 1997) (emphasis added).
The Ninth Circuit “has consistently held that state common law claims of unfair competition . . .
are ‘substantially congruent’ to claims made under the Lanham Act.” Cleary v. News Corp.,
30 F.3d 1255, 1263 (9th Cir. 1994).
IX also appears to argue that Impossible’s common-law unfair competition claim requires
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it to separately prove a “competitive injury.” Defs.’ Mot. at 15–16. IX’s argument rests on an
additional misapprehension of the law. Under California law, if there is a likelihood of confusion,
then “injury has occurred.” Ball v. Am. Trial Laws. Ass’n, 14 Cal. App. 3d 289, 304 (1971).
Impossible’s common-law unfair competition claim rises and falls with its Lanham Act claims, so
the Court DENIES IX’s request for partial summary judgment as to Impossible’s common-law
unfair competition claim.
C. Procurement by Fraud
IX requests that the Court grant partial summary judgment as to Impossible’s claim for
cancellation of the Challenged Marks for fraud on the PTO. IX focuses its motion not on the
merits of the claim but instead argues that it is entitled to summary judgment because
(1) Impossible lacks standing to assert its claim or, in the alternative, (2) Impossible’s claim is
moot. Defs.’ Mot. at 16. Impossible responds that it has standing under 15 U.S.C. § 1064(c)
based on IX’s wielding of the Challenged Marks against Impossible and that IX’s amendments to
certain of its marks do not moot Impossible’s claim. Pl.’s Opp. at 8.
1. Standing
IX argues that Impossible lacks Article III standing to pursue its claim because 15 U.S.C.
§ 1119 authorizes cancellation of a trademark registration only when the claimant is also asserting
an infringement claim against that same registration. Defs.’ Mot. at 17–18. According to IX,
section 1119 is “a strictly remedial measure imposed to address trademark infringement under the
Lanham Act, not a standalone claim to be freely asserted against another party's registered marks
absent infringement.” Id. at 18. While the Court agrees that section 1119 does not create a
freestanding private cause of action for any party to seek cancellation of a trademark registration,
Impossible plainly has standing to assert its claim for cancellation under 15 U.S.C. § 1064(c).
A party seeking trademark cancellation for fraud on the PTO pursuant to 15 U.S.C.
§§ 1064(c), 1119 must show “a false representation regarding a material fact, the registrant’s
knowledge or belief that the representation is false, the intent to induce reliance upon the
misrepresentation, and reasonable reliance thereon, and damages.” Hokto Kinoko Co. v. Concord
Farms, Inc., 810 F. Supp. 2d 1013, 1041 (C.D. Cal. 2011) (citations omitted), aff’d, 738 F.3d 1085
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(9th Cir. 2013). Cancellation under sections 1064(c) and 1119 may be “sought if there is already
an ongoing action that involves a registered mark.” Airs Aromatics, LLC v. Victoria’s Secret
Stores Brand Mgmt., 744 F.3d 595, 599 (9th Cir. 2014).
A party has standing to pursue cancellation so long as the party believes that it “is or will
be damaged by the registration of the mark.” Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 735 F.2d
346, 348 (9th Cir. 1984) (emphasis omitted) (quoting 15 U.S.C. § 1064); see also Corcamore,
LLC v. SFM, LLC, 978 F.3d 1298, 1305 (Fed. Cir. 2020). This is a low bar and “requires only”
that the party show a “real interest” in the proceeding. Star-Kist Foods, 735 F.2d at 349; see also
Blue Bottle Coffee, LLC v. Liao, No. 21-cv-6083-CRB, 2024 WL 2061259, at *8 (N.D. Cal.
May 7, 2024) (“All that is needed is a real interest in the outcome of the proceeding beyond the
general public.”). The Court finds that Impossible has satisfied its burden by demonstrating a
particularized, concrete injury by IX’s wielding of the Challenged Marks. See Hokto Kinoko,
738 F.3d at 1097. Had the Court granted partial summary judgment for IX as to Impossible’s
Lanham Act claims, this result might have been different.
2. Mootness
IX argues in the alternative that, even if Impossible has standing to pursue its claim for
cancellation of the Challenged Marks, “there is no remedy for the Court to provide . . . because
Impossible LLC has already amended its registrations to remove the disputed goods at issue.”
Defs.’ Mot. at 19. IX argues that, because it amended some of its registrations to remove some of
the goods from Class 25, there is no live case or controversy between the parties as to
Impossible’s cancellation claim.
The sole case that IX cites for its argument is Already, LLC v. Nike, Inc., 568 U.S. 85
(2013). The case has nothing to do with fraud, merely confirming that there is no Article III case
or controversy where a plaintiff dismisses its infringement claims with prejudice and enters a
covenant not to sue. Id. at 93. Moreover, courts have rejected similar arguments that such post-
hoc partial amendments somehow moot cancellation claims. See, e.g., Sunsauce Foods, 2024 WL
4933346, at *10 (“Correcting an overstatement is not enough to rectify fraud.”); One True Vine,
LLC v. Wine Grp. LLC, No. 09-cv-1328-MHP, 2009 WL 3707512, at *3 (N.D. Cal. Nov. 4, 2009)
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(“[P]laintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by
now amending its trademark registration.”).
In any case, as Impossible notes, IX has only deleted a few apparel goods from within
Class 25 in the Challenged Marks that it has now amended. There is no dispute that the Court
may cancel the entirety of Class 25 in those registrations. A “trademark cancellation claim is
equitable in nature,” meaning that it is for the Court to determine whether and to what extent IX’s
marks must be cancelled for fraud. Amarte USA Holdings, Inc. v. Kendo Holdings Inc., No. 22-
cv-8958-CRB, 2024 WL 4093910, at *13 (N.D. Cal. Sept. 4, 2024). Accordingly, the Court
DENIES IX’s request for partial summary judgment as to Impossible’s fraud claims.
D. Abandonment
IX requests that the Court grant partial summary judgment as to Impossible’s claim for
cancellation of the Challenged Marks for abandonment. IX argues that it is entitled to judgment as
a matter of law because the evidence indisputably shows that it has continuously used its marks
without an attempt to abandon them. Defs.’ Mot. at 18. Impossible responds that no such
evidence of continuous use exists. Pl.’s Opp. at 24.
The Lanham Act sets forth the conditions under which a trademark is subject to
cancellation for abandonment: “When its use has been discontinued with intent not to resume
such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of abandonment. ‘Use’ of a mark means the bona fide use of
such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.”
15 U.S.C. § 1127. “Because abandonment of a trademark is ‘in the nature of forfeiture, [it] must
be strictly proved.’” Marketquest, 316 F. Supp. 3d at 1281 (alteration in original) (quoting
FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 515 (9th Cir. 2010)). A party makes out
a prima facie case of non-use by demonstrating that a mark has not been used for three
consecutive years. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir.
2000).
IX argues that it is entitled to partial summary judgment as to abandonment because “the
undisputed material facts show [that it] has consistently prepared and sold apparel products
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bearing the challenged marks, including within the last three years,” urging that even a single bona
fide use of a mark is sufficient to defeat cancellation for abandonment. Defs.’ Mot. at 21. IX’s
argument fails because the record evidence simply does not reflect what IX claims it does. In
support of its motion for partial summary judgment, IX identifies a 2011 blog post by Mr. Runyon
announcing the sale of t-shirts, a 2023 “merch drop” of hoodies, and a portion of Mr. Runyon’s
30(b)(6) deposition testimony in which he states that t-shirts are available for purchase on his
website. See Washington Decl. Exs. G, N; Runyon Dep. Tr. at 145:5–9 (“Q. Can you buy a T-
shirt through impossiblefitness.com? A. You can see a T-shirt, you can click on it, and you can
buy it.”). IX apparently contends that evidence that it offered for sale disparate products in 2011,
2023, and at the time of Mr. Runyon’s deposition in 2025—without even identifying which of the
Challenged Marks were featured on the apparel—forecloses Impossible’s abandonment claim.
The argument borders on the offensive.
As a preliminary matter, Mr. Runyon has conceded that IX never offered many of the
goods covered by the relevant marks. See, e.g., Runyon Dep. Tr. at 131:2–3; 133:11–16; 133:18–
134:4; 166:17–169:3; 201:4–202:8. The record similarly contains no evidence of use of the marks
in connection with any of the other goods and services listed in the registrations for at least three
years, triggering the presumption of non-use. Flemming Decl. Ex. H. There is even a factual
dispute as to whether the products Mr. Runyon testified were on sale at the time of his deposition
were actually available for purchase on his website. See Flemming Decl. Ex. Z (showing no menu
items for shop or apparel), Ex. AA. At bottom, even if the Court were to credit that IX was using
the marks in 2011, 2023, and 2025, IX has not met its moving burden and is not entitled to partial
summary judgment. Accordingly, the Court DENIES IX’s request for partial summary judgment
as to Impossible’s abandonment claims.
E. Priority
IX argues that it is entitled to summary adjudication of priority of use of the
IMPOSSIBLE-formative marks” in a category that it terms the “Diet and Nutrition Category,”
which includes “fitness, health, recipes, cookbooks, and nutrition advisory services.” Defs.’ Mot.
at 22. According to IX, it is entitled to priority because (1) IX has continuously used
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IMPOSSIBLE-formative marks in connection with the Diet and Nutrition Category since 2012;
(2) IX has engaged in substantial non-commercial advertising and promotional activity to support
its offerings; and (3) Impossible’s use of the IMPOSSIBLE-formative marks in the Diet and
Nutrition Category occurred more than eight years after IX’s first use. See id. Impossible
responds as a threshold matter that IX is not entitled to summary adjudication of priority of use
with respect to this nebulously defined category, noting that the Impossible Accused Products
represent a narrow set of goods and services, i.e., cookbooks, recipes, apparel, and philanthropy.
Pl.’s Opp. at 22. Impossible further argues that IX fails to tie its evidence to any particular mark
and cannot prove prior and continuous use. See id. at 22–24.
“It is axiomatic in trademark law that the standard test of ownership is priority of use,”
such that “the party claiming ownership must have been the first to actually use the mark in the
sale of goods or services.” Sarieddine v. Alien Visions E-Juice, Inc., No. 18-cv-3658-PA,
2019 WL 1966661, at *4 (C.D. Cal. Apr. 12, 2019) (quoting Rearden, 683 F.3d at 1202–03). To
establish priority, the party must have been the first to actually use the mark in the sale of the
relevant goods or services. See Brookfield Commc’ns, 174 F.3d at 1051 (“The Lanham Act grants
trademark protection only to marks that are used to identify and to distinguish goods or services in
commerce—which typically occurs when a mark is used in conjunction with the actual sale of
goods or services.”).
IX appears to take the position that it is entitled to priority in this broad category of goods
and services based on its introduction of two services in 2012. First, in February 2012, IX
published the “Impossible TRI Triathlon Guide” (“Impossible TRI”), which includes an associated
cookbook and nutrition guide and features IMPOSSIBLE-formative marks. Washington Decl.
Exs. F, XX at 22–23. Second, in September 2012, IX published “Impossible Abs,” a health and
fitness program that includes food, nutrition, and recipe sections, which it marketed to its
customers. Washington Decl. Exs. H, AAA, BBB, XX at 22–23. These offerings, however, do
not map neatly onto IX’s defined Diet and Fitness category, which comprises fitness, health,
recipes, cookbooks, and nutrition advisory services. For example, Mr. Runyon testified that IX
does not offer any nutrition advisory services. Runyon Dep. Tr. at 61:22–62:1. He further
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explained that IX’s offerings in the fitness category are limited to online exercise programs and a
physical fitness blog. Id. at 113:1–17. Finally, regarding cookbooks, Mr. Runyon explained that
IX has not actually published any cookbook: IX apparently appears to be referencing downloads
of recipes from its website or from third-party apps. Id. at 63:15–19.
Apart from the apparent discrepancy between IX’s actual offerings and the breadth of
goods and services for which it claims priority, it is also unclear to the Court at this stage whether
there is evidence in the record establishing continuous use. “A mark is deemed to be used in
commerce on goods when: (A) it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto . . . and (B) the goods are sold
or transported in commerce.” Macy’s Inc. v. Strategic Marks, LLC, No. 11-cv-6198-EMC,
2016 WL 374147, at *6 (N.D. Cal. Feb. 1, 2016) (quoting 15 U.S.C. § 1127). “In determining
whether the two prongs of the ‘use in commerce’ test have been satisfied, we have generally
followed a ‘totality of the circumstances’ approach.” Rearden, 683 F.3d at 1205. It is not at all
clear that IX has demonstrated continuous use in commerce with respect to any of the marks or
categories. While IX cites sales revenue from third-party affiliates, it has not shown that any of
those offerings bear an IMPOSSIBLE-formative mark (let alone identified which one). See
Brookfield Commc’ns, 174 F.3d at 1052 (explaining that use in commerce must “identify or
distinguish the marked goods in an appropriate segment of the public mind as those of the adopter
of the mark”).
IX has not met its initial burden. Accordingly, the Court DENIES IX’s request for
summary adjudication of priority.
V. ORDER
For the foregoing reasons, IT IS HEREBY ORDERED that:
(1) Impossible’s motion for partial summary judgment is GRANTED as to IX’s third
affirmative defense (laches), fourth affirmative defense (waiver), fifth affirmative
defense (acquiescence), sixth affirmative defense (estoppel), and tenth affirmative
defense (unclean hands).
(2) Impossible’s motion for partial summary judgment is GRANTED as to IX’s demand
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for reputational damages.
(3) Impossible’s motion for partial summary judgment is DENIED as to IX’s demands for
corrective advertising damages and exemplary damages.
(4) IX’s motion for partial summary judgment is DENIED.
(5) This order terminates ECF No. 259 and ECF No. 262.
Dated: November 3, 2025
______________________________________
BETH LABSON FREEMAN
United States District Judge
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