Impossible Foods Inc. v. Impossible X LLC

Background

Impossible Foods Inc. brought a declaratory judgment action concerning the parties’ IMPOSSIBLE trademarks. Impossible Foods asked the court to declare that its uses of the mark for recipes, food ingredients, and cooking information did not infringe or dilute Impossible X LLC’s marks; that Impossible Foods had superior rights in those areas; and that three of Impossible X’s trademark registrations should be cancelled for abandonment or non-use.

Impossible X sent Impossible Foods a demand letter accusing it of encroaching on areas occupied by or related to Impossible X’s goods and services. The letter demanded that Impossible Foods stop using the IMPOSSIBLE mark in certain contexts. Impossible X later filed a proceeding before the Trademark Trial and Appeal Board concerning one of Impossible Foods’ trademark applications.

Impossible X is a Texas limited liability company. The opinion describes contacts involving California, including business activity and office space in San Diego associated with Impossible X’s founder, Joel Runyon; business relationships with California companies; and other California-related activity. Impossible Foods argued that these contacts supported specific personal jurisdiction, meaning jurisdiction based on contacts connected to the claims in the case. Impossible X moved to dismiss for lack of subject-matter jurisdiction and lack of personal jurisdiction.

Subject-Matter Jurisdiction

The court first considered subject-matter jurisdiction under Rule 12(b)(1), which permits dismissal when the court lacks authority to hear the type of dispute. Under the Declaratory Judgment Act, the dispute had to present a real and immediate controversy.

The court held that this requirement was satisfied. It relied on Impossible X’s cease-and-desist letter, which accused Impossible Foods of trademark infringement, demanded changes to Impossible Foods’ use of the mark, and threatened further action. The court also noted that Impossible X followed through by filing a trademark opposition proceeding. The court therefore found that it possessed subject-matter jurisdiction.

Personal Jurisdiction

The court then considered personal jurisdiction under Rule 12(b)(2), which permits dismissal when the court lacks authority over the defendant. Impossible Foods relied on specific personal jurisdiction and did not argue for general personal jurisdiction. The court applied a three-part test: whether Impossible X purposefully directed its activities at California, whether the claims arose from or related to those activities, and whether exercising jurisdiction would be reasonable.

The court found that the first part, purposeful direction, was satisfied, although it described the question as close. Some activities occurred in California or were expressly aimed there, including developing and marketing Impossible X’s meal and nutrition business from San Diego, renting office space there, maintaining business relationships with California companies, and related activity by Mr. Runyon.

The court found that the second part was not satisfied. The contacts most closely related to the trademark dispute—the demand letter, the trademark opposition filing, and related communications—implicated California primarily because Impossible Foods was located there. Under the governing standard, those contacts were not sufficiently directed at California itself. The other California contacts either occurred before Impossible Foods began using its mark in commerce or reflected general business operations rather than conduct connected to this trademark dispute.

Because Impossible Foods failed to satisfy the first two parts of the specific-jurisdiction test, the court did not reach the third part concerning fairness and reasonableness. It concluded that it lacked personal jurisdiction over Impossible X.

Disposition

Judge Beth Labson Freeman ordered that Impossible X’s motion to dismiss be granted in part. The case was dismissed without prejudice for lack of personal jurisdiction, allowing refiling in a forum where Impossible X is subject to personal jurisdiction.