Impossible Foods Inc. v. Impossible X LLC
- Beth Freeman
- 5:21-cv-02419
- U.S. District Court · Northern District of California
- 8
In Impossible Foods v. Impossible LLC, Judge Freeman denied ILLC’s motion and partly granted and partly denied the sealing request.
Impossible LLC’s ability to add the proposed counterfeiting counterclaim was affected because the court denied its motion to amend. Impossible Foods’s confidential trademark-clearance information received limited sealing protection, while the motion and Exhibit O were not sealed under the ruling. The public’s access to the judicial materials was also affected by the approved redactions.
What happened
In Impossible Foods Inc. v. Impossible LLC et al., Impossible LLC asked to change the case schedule and add counterclaims in a trademark dispute. Impossible Foods opposed the request.
The court found that Impossible LLC had not acted diligently because it knew or could have pursued the facts supporting its proposed counterfeiting claim earlier. The court also considered materials that Impossible Foods sought to keep confidential.
Judge Beth Freeman denied the motion to amend and granted in part and denied in part the sealing motion. She allowed redactions for portions of a trademark search report containing Impossible Foods’s confidential trademark strategy, but denied sealing for the other identified materials.
The detailed version
- Impossible Foods Inc. v. Impossible X LLC · No. 5:21-cv-02419
- Beth Freeman
- Feb. 27, 2025
Background
Impossible Foods Inc. brought a declaratory-relief action concerning the parties’ rights to the IMPOSSIBLE trademark after Impossible LLC asserted that it had superior rights and accused Impossible Foods of trademark infringement. Impossible LLC later asserted counterclaims including federal and state trademark infringement, unfair competition, false association under the Lanham Act, denial of trademark registration, and California trademark infringement.
The deadline for amending pleadings under the scheduling order was March 25, 2024. After the court granted in part Impossible Foods’s later motion to amend its complaint, Impossible LLC filed an answer and amended counterclaims that included a new federal counterfeiting claim involving apparel products. The court struck that counterfeiting claim on December 18, 2024. Impossible LLC then sought to amend the case schedule and counterclaims so it could add the claim.
Motion to Amend
Because the deadline to amend had passed, Impossible LLC first had to show “good cause” under Federal Rule of Civil Procedure 16(b)(4) to modify the scheduling order. The court explained that the central question was whether Impossible LLC had acted diligently. If it had not, the inquiry ended without reaching the separate standards for amendment under Rule 15.
Impossible LLC argued that discovery had revealed that Impossible Foods knew about Impossible LLC’s use and registration of the IMPOSSIBLE mark for apparel goods. The court rejected that explanation. It noted that Impossible LLC’s original and amended counterclaims had already alleged facts concerning Impossible Foods’s knowledge of Impossible LLC’s alleged trademark rights and the use of the mark on apparel. The court also found that Impossible LLC had information concerning a relevant trademark registration by May 13, 2024, but did not move to amend at that time. The court concluded that Impossible LLC could have sought amendment earlier and that its delay showed a lack of diligence.
The court therefore denied Impossible LLC’s Motion to Amend Case Schedule and Counterclaims. The court did not reach the Rule 15 amendment analysis because it found no good cause under Rule 16.
Sealing Motion
Impossible LLC also filed an administrative motion concerning materials that Impossible Foods had provisionally designated as confidential. The court applied the lower “good cause” standard because the materials were attached to a motion that was not related, or was only tangentially related, to the merits of the case.
The court found good cause to seal portions of Exhibit L, a trademark search report attached to a privileged email, because the material revealed confidential trademark-clearance strategy and could harm Impossible Foods’s competitive position. The court approved sealing the portions identified in the order, except for portions referring to Impossible LLC. It found the redactions narrowly tailored because they left unredacted material relevant to the parties’ dispute.
The court denied sealing for Impossible LLC’s Motion to Amend Case Schedule and Counterclaims and for Exhibit O because Impossible Foods did not seek to maintain those documents under seal and therefore had not established that the material was sealable.
Order
The court denied Impossible LLC’s Motion to Amend Case Schedule and Counterclaims. It granted in part and denied in part the Administrative Motion to Consider Whether Another Party’s Material Should Be Sealed. Impossible LLC was ordered to refile the motion and Exhibits L and O with redactions conforming to the order by March 10, 2025. The court also vacated the scheduled April 3, 2025 hearing.
Read the full 8-page opinion on CourtListener, the free public archive maintained by the Free Law Project.