In a recent turn of events, the US Court of Appeals for the Ninth Circuit has overturned a district court's dismissal of Impossible Foods' trademark complaint against the one-person startup, Impossible X. The initial dismissal, which occurred in November 2021, cited lack of personal jurisdiction as the primary reason. However, this decision was reversed on September 12, breathing new life into the trademark dispute.
In 2020, Joel Runyon's one-man startup Impossible X opposed one of Impossible Foods' trademark applications, which sparked the dispute. Runyon, a self-described "digital nomad" from San Diego, transformed Impossible X into a Texas LLC over the course of two years.
Impossible Foods, a prominent player in the plant-based food industry, responded by filing a federal declaratory judgment action in California in April 2021. Their objective was to demonstrate that their use of the IMPOSSIBLE mark did not infringe upon Impossible X's trademark rights and to assert the superiority of their own rights in the matter.
The district court's original dismissal was based on the notion that the trademark dispute only became live after Runyon's departure from California in June 2016. Therefore, any business ties Impossible X had in California prior to this date were deemed irrelevant to establishing personal jurisdiction.
However, the majority opinion of the Ninth Circuit found Impossible X to be subject to specific personal jurisdiction in California. This decision hinged on the fact that Impossible X had previously operated and built its brand in California, making their activities in the state sufficiently linked to the underlying trademark dispute.
Impossible X, which provides a range of products and services including clothing, supplements, diet instructions, and coaching, contested Impossible Foods' use of the IMPOSSIBLE mark for specific purposes related to recipes, ingredients, and cooking information.
Despite ongoing proceedings at the US Patent and Trademark Office (USPTO), Impossible Foods extended an olive branch in March 2021 by proposing a settlement. Regrettably, Impossible X declined the offer, choosing instead to continue the legal battle.
Representing Impossible Foods in this legal tussle were attorneys from Kilpatrick Townsend & Stockton, including William H. Brewster, Theodore H. Davis, Jr., and Gia L. Cincone. On the other side, Wiley Rein's legal team, consisting of Thomas M. Johnson, Jr., David E. Weslow, Adrienne J. Kosak, and Kevin K. Eng, stood in defense of Impossible X.
David Weslow and Tom Johnson of Wiley Rein expressed their agreement with Judge VanDyke's dissent in response to the appellate court's ruling, highlighting the alleged unlawfulness and unfairness of the lawsuit Impossible Foods brought against a Texas single-member LLC in California courts. They are currently evaluating the decision and contemplating further action.
In light of these recent developments, the trademark battle between Impossible Foods and Impossible X is poised to continue as both parties remain steadfast in their positions. The outcome of this case could potentially set significant precedents in trademark law.