Glean IP Holdings Inc. v. Glean Technologies, Inc.

Background

Glean IP Holdings Inc. sued Glean Technologies, Inc. concerning three trademarks: the ’167 Mark, the ’682 Mark, and the ’582 Mark. Glean IP asserted false-designation-of-origin and trademark-infringement claims under the federal Lanham Act and common law. It also asserted a claim under California’s Unfair Competition Law (UCL) and a claim for unjust enrichment.

Glean Technologies moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim, and Rule 12(b)(7), which concerns failure to join a required party. Glean Technologies argued that Glean IP had not adequately alleged ownership of valid trademarks and that Glean Analytics was a required party.

Rule 12(b)(6) Trademark Claims

The court explained that registration of a trademark creates initial evidence, or a presumption, that the registrant owns a valid mark. A plaintiff generally therefore does not have to plead priority of use or continuous use when it alleges ownership of a registered mark. But the court held that the complaint and attached registrations themselves rebutted that presumption for the ’167 and ’682 Marks.

The registrations stated that Glean IP or its predecessor began using those marks in March 2023 and March 2025, respectively, while the complaint alleged that Glean Technologies began using the marks earlier, in 2021. The court rejected Glean IP’s argument concerning constructive use of the ’682 Mark because Glean IP had not raised that argument in its briefing and had not adequately alleged that basis for priority in the complaint.

The court reached a different conclusion for the ’582 Mark. Its registration stated a first-use date of September 1, 2019, which predates Glean Technologies’ alleged 2021 first use. The court also held that the complaint did not rebut the presumption of continuous use. Licensing the marks to Glean Analytics, without allegations showing that Glean IP failed to control the quality of the licensed use, was not enough to defeat the presumption.

The court therefore dismissed the Lanham Act and common-law trademark-infringement claims concerning the ’167 and ’682 Marks with leave to amend. It declined to dismiss those claims concerning the ’582 Mark.

UCL and Unjust-Enrichment Claims

Glean IP agreed to dismiss its request for monetary damages under the UCL. The court dismissed the UCL claim without leave to amend to the extent it sought damages. It allowed the UCL claim to continue to the extent Glean IP sought equitable relief, holding that alleged harm to goodwill plausibly established the required economic injury.

Glean IP also agreed to dismiss its unjust-enrichment claim. The court dismissed that claim without leave to amend.

Rule 12(b)(7) and Glean Analytics

The court denied the Rule 12(b)(7) request. It held that Glean Analytics was not a required party under Rule 19 because the court could provide meaningful relief between Glean IP and Glean Technologies without joining Glean Analytics. Glean Analytics no longer owned the marks after assigning them to Glean IP. The court also found no showing that Glean Analytics’ interests would be impaired or that Glean Technologies would face conflicting obligations without its participation.

Disposition

Judge Rita F. Lin granted the motion to dismiss in part and otherwise denied it. Specifically, the court dismissed the trademark claims concerning the ’167 and ’682 Marks with leave to amend; dismissed the UCL claim without leave to amend insofar as it sought damages; and dismissed the unjust-enrichment claim without leave to amend. The motion was otherwise denied, including as to the claims concerning the ’582 Mark, the UCL claim seeking equitable relief, and the argument that Glean Analytics had to be joined.

Glean IP could file an amended complaint by March 23, 2026. Any amendment was limited to correcting the identified deficiencies and could not add new claims or parties or otherwise change the allegations without permission or agreement under the federal civil procedure rules.