US appeals court breathes fresh life into ‘Impossible’ trademark lawsuit

Ninth Circuit revises case for lack of personal jurisdiction involving Impossible Foods and Impossible X, run by ‘digital nomad’
Impossible Foods corporate headquarters in Silicon Valley

Shutterstock; Sundry Photography

Meat substitute company Impossible Foods has persuaded a federal appeals court to reverse a  district court dismissal of its trademark lawsuit against a one-person company called Impossible X.

On 12 September, the appeals court, the US Court of Appeals for the Ninth Circuit reversed the decision of the district court in California, which In November 2021 had dismissed Impossible Foods’ trademark declaratory judgment action for lack of personal jurisdiction in California.

The appeals court in a majority opinion given by Judge Daniel Bress, remanded the case back to the district court to consider the merits of Impossible Foods’ claims.

The trademark dispute between the two parties began in 2020, when Impossible X filed a notice of opposition before the USPTO for one of Impossible Foods’ trademark applications.

Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego.

In April 2021, Impossible Foods filed the declaratory judgment action in the federal court in California. In its complaint, Impossible Foods sought a declaration that its use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights, and that Impossible Foods’ rights to the mark were superior.

The USPTO proceedings were stayed pending resolution of this lawsuit. Following jurisdictional discovery, the district court dismissed the case for lack of personal jurisdiction.

The district court had acknowledged that Impossible X (Runyon) did have business contacts in California, but that the trademark dispute dates from June 2016, at which point Runyon had already left San Diego in California. In the district court’s view, because the parties had a live dispute only as of June 2016, Impossible X’s contacts with California prior to that time were irrelevant to personal jurisdiction.

A majority opinion, however, said on Tuesday Impossible X was subject to specific personal jurisdiction in California because it “previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process”.

Impossible X sells apparel, nutritional supplements, diet guides and a consulting service through its website and various social media channels. It opposed Impossible Foods’ intent to use the IMPOSSIBLE mark in connection with “recipes, ingredients and cooking information”.

In March 2021, with the USPTO proceedings ongoing, Impossible Foods proposed a settlement agreement, but Impossible X declined it.

Kilpatrick Townsend & Stockton’s William H. Brewster, Theodore H. Davis, Jr. and Gia L. Cincone represented Impossible Foods.

Wiley Rein’s Thomas M. Johnson, Jr., David E. Weslow, Adrienne J. Kosak and Markun Zusman Freniere & Compton’s Kevin K. Eng represented Impossible X.

Wiley Rein's David Weslow and Tom Johnson said: “We agree with Judge VanDyke’s strong dissent in this case, which explained why the district court correctly concluded that it is both unlawful and unfair for Impossible Foods to sue our client, a Texas single-member LLC, in California courts. We are reviewing the decision and weighing our options for further review.”

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