Impossible Foods Inc. v. Impossible X LLC

Background

Impossible Foods Inc. originally brought a declaratory-relief claim concerning the parties’ rights in the IMPOSSIBLE trademark. The court’s scheduling order set March 25, 2024, as the deadline to amend the pleadings. After discovery began, Impossible Foods sought permission to add claims against Impossible LLC and Joel Runyon for fraud in obtaining incontestable trademark status, fraud in obtaining trademark registrations, and abandonment.

Impossible Foods relied primarily on two later events: a July 2024 affidavit filed with the United States Patent and Trademark Office under Section 15 of the Lanham Act, and Impossible LLC’s December 2024 response to a Patent and Trademark Office request for evidence of current use. In that response, Impossible LLC deleted various goods from its trademark registrations. Impossible Foods argued that these events supported its proposed claims. Impossible LLC declined to consent to the amendment and filed a qualified objection.

Analysis of the Amendment Request

Because the deadline for amending the pleadings had passed, the court first considered whether there was good cause to modify the scheduling order under Federal Rule of Civil Procedure 16. The court found that the facts supporting Impossible Foods’ proposed claims were newly discovered after the amendment deadline. It also found that Impossible Foods acted diligently by serving discovery requests soon after learning of the July 2024 affidavit, pursuing follow-up discovery, and moving to amend within two months after receiving Impossible LLC’s response to the Patent and Trademark Office’s office action.

The court found little prejudice to Impossible LLC because discovery concerning the proposed amendments had already been ongoing and overlapped with an existing defense based on abandonment through non-use. The court also noted that Impossible LLC had not made a substantial argument about prejudice. The court therefore found good cause to modify the scheduling order.

The court then applied Federal Rule of Civil Procedure 15, which generally calls for permission to amend when justice requires. It concluded that the proposed claims were not futile, meaning the amendment could potentially state valid claims. The proposed abandonment allegations concerned alleged non-use of certain marks for at least three years. The proposed fraud allegations concerned the alleged false statement about continuous use, knowledge of its alleged falsity, reliance by the Patent and Trademark Office, and resulting harm.

The court found no evidence of bad faith and concluded that Impossible Foods had not repeatedly failed to correct earlier pleading defects. Although the court viewed the six-month period before filing the motion as a delay regarding the incontestability-fraud claim, it found the delay was not severe enough to prevent amendment. The court therefore granted permission to file the Third Amended Complaint.

Sealing Request

Impossible Foods also filed an administrative motion asking the court to consider whether materials designated as confidential by another party should remain under seal. Impossible LLC stated that it did not seek sealing of the identified documents. Because the party designating material as confidential bears the burden of showing that it is sealable, and Impossible LLC did not seek to maintain the materials under seal, the court denied the administrative motion and ordered the documents unsealed.

Order

The court granted Impossible Foods Inc.’s Motion to Amend Complaint and Scheduling Order. It denied the accompanying Administrative Motion to Consider Whether Another Party’s Material Should Be Sealed. The court ordered Impossible Foods to file the attached Third Amended Complaint by March 7, 2025, without redactions. The order is dated March 4, 2025, and was signed by United States District Judge Beth Freeman.