World Champ Tech LLC v. Peloton Interactive, Inc.

Filing 232

Order by Magistrate Judge Laurel Beeler denying 222 Motion for Reconsideration. (lblc1, COURT STAFF) (Filed on 3/26/2024)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

NORTHERN DISTRICT OF CALIFORNIA

10

San Francisco Division

United States District Court
Northern District of California

11

WORLD CHAMP TECH LLC,

Case No. 21-cv-03202-LB

Plaintiff,

12

ORDER DENYING MOTION FOR
RECONSIDERATION

v.

13
14

PELOTON INTERACTIVE, INC.,

Re: ECF No. 222

Defendant.

15
16

The plaintiff World Champ Tech, which offers a mobile-fitness app called “Bike+” and owns a

17
18

trademark registration for the same name, sued the defendant Peloton Interactive for trademark

19

infringement and other claims after the defendant launched a new line of interactive stationary

20

bicycles under the name “Peloton Bike+.” 1 The court recently granted the defendant’s motion for

21

summary judgment on the ground that as a matter of law, there is no likelihood of confusion. 2 The

22

court thus entered judgment.3 The plaintiff now moves for reconsideration of the final judgment

23
24
25
26
27
28

1

Compl. – ECF No. 1. Citations refer to material in the Electronic Case File (ECF); pinpoint citations
are to the ECF-generated page numbers at the top of documents.
2

Order – ECF No. 218.

3

J. – ECF No. 219.

ORDER – No. 21-cv-03202-LB

1

under Federal Rules of Civil Procedure 59(e) and 60(b). 4 The court can decide the matter without

2

oral argument, N.D. Cal. Civ. L.R. 7-1(b), and denies the motion.
A district court can “reconsider” final judgments or appealable interlocutory orders under

United States District Court
Northern District of California

3
4

Rules 59(e) (governing motions to alter or amend judgments) and 60(b) (governing motions for

5

relief from a final judgment). See Balla v. Idaho Bd. of Corr., 869 F.2d 461, 466–67 (9th Cir.

6

1989). Reconsideration is appropriate when (1) the court is presented with newly discovered

7

evidence, (2) the underlying decision was in clear error or manifestly unjust, or (3) there is an

8

intervening change in controlling law. See School Dist. No. 1J, Multnomah Cnty. v. ACandS, Inc.,

9

5 F.3d 1255, 1263 (9th Cir. 1993). (At issue here is the second ground. 5) “[A]mending a judgment

10

after its entry [is] an extraordinary remedy which should be used sparingly.” Allstate Ins. Co. v.

11

Herron, 634 F.3d 1101, 1111 (9th Cir. 2011) (cleaned up).
Probably the most important issue is whether the court was clearly wrong that the Bike+ mark

12
13

is descriptive as a matter of law. As the court noted, courts consider “a mark’s strength by

14

reference to the goods or services that it identifies[] and as it appears in the marketplace.”

15

Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 (9th Cir. 2002). Also, a descriptive mark

16

need only “describe some aspect of the [plaintiff’s] product.” Zobmondo Ent., LLC v. Falls Media,

17

LLC, 602 F.3d 1108, 1116 (9th Cir. 2010). Under the circumstances, the burden is the defendant’s

18

to overcome a presumption of distinctiveness and all reasonable inferences must go in the

19

plaintiff’s favor.6
The plaintiff points out that a “Bike+” mark could refer to different things: an app for

20
21

motorcycle-performance data or a video game, for example, as opposed to the court’s description

22

(“an app for enhancing biking”). (The plaintiff’s app is primarily for metric tracking during

23

bicycle rides.) The plaintiff further contends that a plus sign does not necessarily refer to

24
25
26
27
28

4

Mot. – ECF No. 222.

5

Id. at 5 n.1.

6

Order – ECF No. 218 at 16–17.

ORDER – No. 21-cv-03202-LB

2

United States District Court
Northern District of California

1

enhancement and could instead refer to “addition, computer language, positivity, [or] alternatives

2

to bikes.”7

3

Even if the court were wrong in its exact description of the Bike+ mark’s meaning, the mark is

4

still descriptive. At the least, the mark conveys the addition of something to a bike or biking. (This

5

really is just a restatement of the court’s previous description, but it helps to illustrate the point.)

6

As applied to an app, that is the conventional meaning of this composite mark (and the actual

7

purpose of the plaintiff’s app). Threshold Enters. v. Pressed Juicery, Inc., 445 F. Supp. 3d 139,

8

150 (N.D. Cal. 2020) (“By examining the dictionary definitions of a mark’s components, a court

9

can ascertain whether the resulting mark uses the individual words in a way different from their

10

common meaning.”). And that meaning “describe[s] some aspect of the product,” literally and

11

without requiring imagination. Zobmondo Ent., 602 F.3d at 1115–16 (the imagination test is the

12

“most-used” test and is the Ninth Circuit’s “primary criterion for evaluating distinctiveness”)

13

(cleaned up).
Also, the exact function of the app does not need to be conveyed by the mark for the mark to

14
15

be descriptive. In Entrepreneur Media, for example, the mark “Entrepreneur” was descriptive in

16

the context of computer programs (among other products). 279 F.3d at 1142. What does a

17

computer program for entrepreneurs do? The mark didn’t answer that question, but it was still

18

descriptive.
The plaintiff points to Zobmondo and generally contends that the court did not properly

19
20

consider the evidence in the record. Zobmondo does cast some doubt on the notion of a

21

freestanding conceptual-strength analysis at summary judgment, but the court does not think that

22

changes the outcome here.
“With respect to a registered mark,” the defendant’s burden “is not simply to show that the

23
24

mark describes a feature of the trademark holder’s product; rather, it must show that consumers

25

regard the mark as merely descriptive of that product.” Zobmondo Ent., 602 F.3d at 1117. Put

26

another way, “[t]he underlying issue is the standard of meaning prevalent among prospective

27
28

7

Mot. – ECF No. 222 at 8–9.

ORDER – No. 21-cv-03202-LB

3

United States District Court
Northern District of California

1

purchasers of the article.” Id. at 1116 n.9 (cleaned up). The Zobmondo court did hint that some

2

marks are more easily settled: “some terms may not be susceptible to abstract ‘imagination test’

3

analysis at summary judgment, and instead the application of the imagination test will be informed

4

by expert testimony offered at trial.” Id. But dictionary definitions are “not determinative,” even if

5

they are “often persuasive.” Id. at 1116.

6

All that said, one can find courts appearing to use a freestanding conventional-word-meaning

7

analysis. Entrepreneur Media, 279 F.3d at 1142–43 (evaluating the word “entrepreneur” and then

8

examining evidence for purposes of the needs test; the needs test only “confirm[ed]” that the mark

9

was descriptive) (“[W]e need not belabor the point that some words, phrases or symbols better

10

convey their intended meanings than others.”); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo

11

Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (“Descriptive marks define qualities or

12

characteristics of a product in a straightforward way that requires no exercise of the imagination to

13

be understood. Thus, ‘Honey Baked Ham’ is a descriptive term for a ham that has been baked with

14

honey, and ‘Honey Roast’ is a descriptive term for nuts that have been roasted with honey.”)

15

(cleaned up).
In the end, the court thinks that its descriptiveness holding is sound. There is evidence in the

16
17

record, beyond conventional meanings, to support the holding. For example, many other

18

companies have used a plus sign next to another word to convey additional quality, and such a

19

plus sign’s meaning has been described in mass media.8 The court denies the motion for

20

reconsideration on this ground.
The issue then is what it means for the reverse-confusion context that the plaintiff’s mark is

21
22

descriptive. The court cited authority for the notion that a descriptiveness finding is very

23

important. Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 1150, 1162 (9th Cir. 2021) (“[T]he

24

question [on summary judgment in a reverse-confusion case] is whether a reasonable jury could

25

find that [the] mark is at least suggestive[.]”); Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228,

26

1260 (9th Cir. 2022) (“Given that the [plaintiff’s] mark is properly considered distinctive for

27
28

8

Hoyer Report – ECF No. 136-44 at 9–17 (¶¶ 23–56).

ORDER – No. 21-cv-03202-LB

4

1

purposes of summary judgment, the strength-of-the-mark factor in this reverse confusion case

2

focuses on whether the junior mark is so commercially strong as to overtake the senior mark.”)

3

(cleaned up). These propositions are key, and they apply regardless of any consideration of the

4

plaintiff’s mark’s commercial strength.

5
6

Beyond that, the court will rest on its summary-judgment order, which addresses the plaintiff’s
arguments. The court denies the motion for reconsideration.

7

This disposes of ECF No. 222.

8

IT IS SO ORDERED.

9

Dated: March 26, 2024
______________________________________
LAUREL BEELER
United States Magistrate Judge

10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
ORDER – No. 21-cv-03202-LB

5