Impossible Foods Inc. v. Impossible X LLC
- Beth Freeman
- 5:21-cv-02419
- U.S. District Court · Northern District of California
- 7
In Impossible Foods v. Impossible X, Judge Van Keulen ordered production of one email after finding a preliminary showing of fraud before the trademark office.
Impossible Foods Inc. received an order allowing production of one attorney-client email chain. Impossible X LLC was ordered to produce that document immediately. Joel Runyon and the other reviewed communications were affected by the court’s privilege ruling, but the court did not order production of the other emails.
What happened
Impossible Foods Inc. v. Impossible X LLC is a trademark dispute in which Impossible Foods alleged that Impossible X and Joel Runyon submitted false statements to the United States Patent and Trademark Office about using certain marks on apparel. Impossible Foods asked the court to review emails between Runyon and his trademark lawyers privately.
The court found that Impossible Foods made a preliminary showing that the 2018 statements of use were likely false, that Runyon likely knew they were false, and that the statements were intended to be relied on by the trademark office. The court did not decide whether Impossible Foods would ultimately win its fraud claim.
Judge Van Keulen ruled that one email chain, identified as Tab 6, was not protected by attorney-client privilege because it was sufficiently connected to and made to advance the alleged fraud. She ordered Impossible X to produce that document immediately, while declining to order production of the other reviewed emails.
The detailed version
- Impossible Foods Inc. v. Impossible X LLC · No. 5:21-cv-02419
- Beth Freeman
- June 30, 2025
Background
This order concerns a discovery dispute in Impossible Foods Inc. v. Impossible X LLC, a trademark case involving Impossible Foods Inc. ("IF"), Impossible X LLC ("IXLLC"), and Joel Runyon. IF alleged that IXLLC and Runyon committed fraud on the United States Patent and Trademark Office by submitting false, sworn statements of use for several IMPOSSIBLE and IMPOSSIBLE FITNESS marks.
IF sought private judicial review of emails between Runyon and his trademark-prosecution counsel to determine whether the crime-fraud exception applied. That exception removes attorney-client privilege when a client seeks legal advice to advance a crime or fraud. On June 4, 2025, Judge Beth L. Freeman granted IF's request for the private review. Defendants then submitted communications concerning statements of use and a declaration of incontestability.
Legal standard
The court explained that applying the crime-fraud exception requires two showings: first, that the client was engaged in or planning a criminal or fraudulent scheme when seeking legal advice; and second, that the specific communications were sufficiently related to and made to advance the illegal conduct.
For this discovery question, the court needed only a prima facie case—a preliminary showing—not clear and convincing proof of the ultimate fraud claim. The court stated that it was not deciding whether IF would ultimately prevail on its fraud claim.
Court’s analysis
The court found a prima facie case concerning IXLLC’s 2018 statements of use. Those statements represented that the marks were being used in commerce on various clothing items, including shirts, pants, shorts, tank tops, yoga pants, and tights. Defendants admitted that IXLLC was not yet using the marks with every listed category of apparel, and Runyon testified that he did not believe IXLLC had ever sold pants and had never sold yoga pants. The court found it more likely than not that the statements were false.
The court found that Runyon and IXLLC intended the trademark office to rely on the statements. Although Defendants argued that Runyon misunderstood the meaning of the word "namely" in the statements, the court found that one email chain suggested, more likely than not, that Runyon understood what he was declaring. The court therefore found a preliminary showing that he knew the representations were false. The court also found a preliminary showing of reliance and, assuming the trademark office registered the marks based on the alleged fraud, damage to IF.
The court did not decide whether Defendants committed fraud in connection with the 2024 submissions because the communications potentially covered by the exception related only to the 2018 statements of use.
Disposition
After reviewing the documents, the court found that only Tab 6, an August 14, 2018 email chain between Runyon and counsel, was sufficiently related to and made to advance the alleged fraud. The email chain concerned information about the status of goods in use in response to counsel’s questions. The other reviewed emails were either not sufficiently related to the alleged fraud or did not appear intended to advance it.
Judge Susan Van Keulen ordered production of Tab 6, identified as INT_IMP_00011214, and stated that IXLLC must produce it to IF immediately. The order did not require production of the other reviewed emails.
Read the full 7-page opinion on CourtListener, the free public archive maintained by the Free Law Project.