World Champ Tech LLC v. Peloton Interactive, Inc.
Filing
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Order by Magistrate Judge Laurel Beeler denying 222 Motion for Reconsideration. (lblc1, COURT STAFF) (Filed on 3/26/2024)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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San Francisco Division
United States District Court
Northern District of California
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WORLD CHAMP TECH LLC,
Case No. 21-cv-03202-LB
Plaintiff,
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ORDER DENYING MOTION FOR
RECONSIDERATION
v.
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PELOTON INTERACTIVE, INC.,
Re: ECF No. 222
Defendant.
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The plaintiff World Champ Tech, which offers a mobile-fitness app called “Bike+” and owns a
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trademark registration for the same name, sued the defendant Peloton Interactive for trademark
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infringement and other claims after the defendant launched a new line of interactive stationary
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bicycles under the name “Peloton Bike+.” 1 The court recently granted the defendant’s motion for
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summary judgment on the ground that as a matter of law, there is no likelihood of confusion. 2 The
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court thus entered judgment.3 The plaintiff now moves for reconsideration of the final judgment
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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.
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Order – ECF No. 218.
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J. – ECF No. 219.
ORDER – No. 21-cv-03202-LB
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under Federal Rules of Civil Procedure 59(e) and 60(b). 4 The court can decide the matter without
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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
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Rules 59(e) (governing motions to alter or amend judgments) and 60(b) (governing motions for
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relief from a final judgment). See Balla v. Idaho Bd. of Corr., 869 F.2d 461, 466–67 (9th Cir.
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1989). Reconsideration is appropriate when (1) the court is presented with newly discovered
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evidence, (2) the underlying decision was in clear error or manifestly unjust, or (3) there is an
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intervening change in controlling law. See School Dist. No. 1J, Multnomah Cnty. v. ACandS, Inc.,
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5 F.3d 1255, 1263 (9th Cir. 1993). (At issue here is the second ground. 5) “[A]mending a judgment
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after its entry [is] an extraordinary remedy which should be used sparingly.” Allstate Ins. Co. v.
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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
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is descriptive as a matter of law. As the court noted, courts consider “a mark’s strength by
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reference to the goods or services that it identifies[] and as it appears in the marketplace.”
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Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 (9th Cir. 2002). Also, a descriptive mark
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need only “describe some aspect of the [plaintiff’s] product.” Zobmondo Ent., LLC v. Falls Media,
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LLC, 602 F.3d 1108, 1116 (9th Cir. 2010). Under the circumstances, the burden is the defendant’s
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to overcome a presumption of distinctiveness and all reasonable inferences must go in the
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plaintiff’s favor.6
The plaintiff points out that a “Bike+” mark could refer to different things: an app for
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motorcycle-performance data or a video game, for example, as opposed to the court’s description
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(“an app for enhancing biking”). (The plaintiff’s app is primarily for metric tracking during
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bicycle rides.) The plaintiff further contends that a plus sign does not necessarily refer to
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Mot. – ECF No. 222.
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Id. at 5 n.1.
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Order – ECF No. 218 at 16–17.
ORDER – No. 21-cv-03202-LB
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United States District Court
Northern District of California
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enhancement and could instead refer to “addition, computer language, positivity, [or] alternatives
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to bikes.”7
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Even if the court were wrong in its exact description of the Bike+ mark’s meaning, the mark is
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still descriptive. At the least, the mark conveys the addition of something to a bike or biking. (This
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really is just a restatement of the court’s previous description, but it helps to illustrate the point.)
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As applied to an app, that is the conventional meaning of this composite mark (and the actual
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purpose of the plaintiff’s app). Threshold Enters. v. Pressed Juicery, Inc., 445 F. Supp. 3d 139,
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150 (N.D. Cal. 2020) (“By examining the dictionary definitions of a mark’s components, a court
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can ascertain whether the resulting mark uses the individual words in a way different from their
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common meaning.”). And that meaning “describe[s] some aspect of the product,” literally and
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without requiring imagination. Zobmondo Ent., 602 F.3d at 1115–16 (the imagination test is the
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“most-used” test and is the Ninth Circuit’s “primary criterion for evaluating distinctiveness”)
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(cleaned up).
Also, the exact function of the app does not need to be conveyed by the mark for the mark to
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be descriptive. In Entrepreneur Media, for example, the mark “Entrepreneur” was descriptive in
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the context of computer programs (among other products). 279 F.3d at 1142. What does a
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computer program for entrepreneurs do? The mark didn’t answer that question, but it was still
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descriptive.
The plaintiff points to Zobmondo and generally contends that the court did not properly
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consider the evidence in the record. Zobmondo does cast some doubt on the notion of a
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freestanding conceptual-strength analysis at summary judgment, but the court does not think that
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changes the outcome here.
“With respect to a registered mark,” the defendant’s burden “is not simply to show that the
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mark describes a feature of the trademark holder’s product; rather, it must show that consumers
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regard the mark as merely descriptive of that product.” Zobmondo Ent., 602 F.3d at 1117. Put
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another way, “[t]he underlying issue is the standard of meaning prevalent among prospective
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Mot. – ECF No. 222 at 8–9.
ORDER – No. 21-cv-03202-LB
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United States District Court
Northern District of California
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purchasers of the article.” Id. at 1116 n.9 (cleaned up). The Zobmondo court did hint that some
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marks are more easily settled: “some terms may not be susceptible to abstract ‘imagination test’
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analysis at summary judgment, and instead the application of the imagination test will be informed
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by expert testimony offered at trial.” Id. But dictionary definitions are “not determinative,” even if
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they are “often persuasive.” Id. at 1116.
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All that said, one can find courts appearing to use a freestanding conventional-word-meaning
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analysis. Entrepreneur Media, 279 F.3d at 1142–43 (evaluating the word “entrepreneur” and then
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examining evidence for purposes of the needs test; the needs test only “confirm[ed]” that the mark
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was descriptive) (“[W]e need not belabor the point that some words, phrases or symbols better
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convey their intended meanings than others.”); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
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Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (“Descriptive marks define qualities or
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characteristics of a product in a straightforward way that requires no exercise of the imagination to
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be understood. Thus, ‘Honey Baked Ham’ is a descriptive term for a ham that has been baked with
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honey, and ‘Honey Roast’ is a descriptive term for nuts that have been roasted with honey.”)
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(cleaned up).
In the end, the court thinks that its descriptiveness holding is sound. There is evidence in the
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record, beyond conventional meanings, to support the holding. For example, many other
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companies have used a plus sign next to another word to convey additional quality, and such a
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plus sign’s meaning has been described in mass media.8 The court denies the motion for
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reconsideration on this ground.
The issue then is what it means for the reverse-confusion context that the plaintiff’s mark is
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descriptive. The court cited authority for the notion that a descriptiveness finding is very
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important. Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 1150, 1162 (9th Cir. 2021) (“[T]he
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question [on summary judgment in a reverse-confusion case] is whether a reasonable jury could
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find that [the] mark is at least suggestive[.]”); Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228,
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1260 (9th Cir. 2022) (“Given that the [plaintiff’s] mark is properly considered distinctive for
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Hoyer Report – ECF No. 136-44 at 9–17 (¶¶ 23–56).
ORDER – No. 21-cv-03202-LB
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purposes of summary judgment, the strength-of-the-mark factor in this reverse confusion case
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focuses on whether the junior mark is so commercially strong as to overtake the senior mark.”)
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(cleaned up). These propositions are key, and they apply regardless of any consideration of the
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plaintiff’s mark’s commercial strength.
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Beyond that, the court will rest on its summary-judgment order, which addresses the plaintiff’s
arguments. The court denies the motion for reconsideration.
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This disposes of ECF No. 222.
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IT IS SO ORDERED.
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Dated: March 26, 2024
______________________________________
LAUREL BEELER
United States Magistrate Judge
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United States District Court
Northern District of California
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ORDER – No. 21-cv-03202-LB
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