Petition for Writ of Certiorari — World Champ Tech, LLC, Petitioner v. Peloton Interactive, Inc.

Supreme Court briefDec 17, 2025

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No. 25In the

Supreme Court of the United States

WORLD CHAMP TECH, LLC,

Petitioner,

PELOTON INTERACTIVE, INC.,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of A ppeals for The Ninth Circuit

PETITION FOR A WRIT OF CERTIORARI

Gregory S. Gilchrist

Counsel of Record

Verso Law Group LLP

565 Commercial Street,

4th Floor

San Francisco, CA 94111

(415) 534-0495

greg.gilchrist@versolaw.com

Counsel for Petitioner

World Champ Tech, LLC

388543

(800) 274-3321 • (800) 359-6859

QUESTION PRESENTED

The Lanham Act prohibits use of a trademark

when such use is “likely to cause confusion, or to cause

mistake, or to deceive.” 15 U.S.C, §1114(1)(a); see also

§§1052(d), 1125(a). This federal likely confusion standard

is implemented by the circuit courts under variable “nonexclusive” factor tests that, in practice, are in tension

with summary judgment standards. Most lower courts,

including in this case, impermissibly weigh evidence

to determine which party is likely to succeed on each

confusion factor before weighing these judgments again

in deciding likely confusion. This approach leads courts to

apply “rules of thumb” that contain embedded judgments

about likely confusion that, under the summary judgment

standard, should be left to the jury. For example, the Ninth

Circuit held that the similarity factor favored Peloton

Interactive, Inc. because it used its house mark with

World Champ Tech, LLC’s otherwise identical mark. This

effectively eliminated—as a matter of law—the inference

that the district court made on the same record that

Peloton’s use of its house mark aggravates likely confusion

(an inference that the majority of circuits recognize). To

preserve the right to a jury consistent with this Court’s

summary judgment rules, the likely confusion factors

must be treated on summary judgment as an evidentiary

guide, not a factor scorecard.

The question presented, accordingly, is whether lower

courts must, to comply with the summary judgment

standard, avoid a factor-by-factor analysis that balances

competing evidence and the weight to be given likely

confusion factors.

CORPORATE DISCLOSURE STATEMENT

Pursuant to Supreme Court Rules 14.1(e) and 29.6,

Petitioner World Champ Tech, LLC states as follows:

World Champ Tech, LLC is a Limited Liability Company

organized under the laws of California. World Champ

Tech, LLC has no parent corporation, and no publicly held

corporation owns 10% or more of its stock.

iii

RELATED PROCEEDINGS

United States District Court (Northern District of

California)

World Champ Tech, LLC v. Peloton Interactive, Inc.,

No. 21-cv-03202 (February 16, 2024) (and related

cross-claims)

United States Court of Appeals (Ninth Circuit)

World Champ Tech, LLC v. Peloton Interactive, Inc.,

No. 24-2266 (September 26, 2025)

TABLE OF CONTENTS

Page

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . i

CORPORATE DISCLOSURE STATEMENT . . . . . . . ii

RELATED PROCEEDINGS . . . . . . . . . . . . . . . . . . . . iii

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . iv

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . . vi

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . vii

PETITION FOR A WRIT OF CERTIORARI . . . . . . . 1

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

STATUTORY PROVISION INVOLVED . . . . . . . . . . . 1

STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

A. PROCEEDING S IN T HE LOW ER

COURTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

REASONS TO GRANT THE PETITION . . . . . . . . . . 11

The Circuits’ Multi-Factor Likely Confusion

Tests are Guidelines for the Jury to Use in

Answering the Ultimate Factual Issue . . . . . . . 11

Table of Contents

Page

The Factor Test is Not Applied With

Adequate Deference to the Jury in the

Lower Courts . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

How Summary Judgment Motions for

Trademark Infringements Should be

Resolved . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .27

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

TABLE OF APPENDICES

Page

APPENDIX A — AMENDED MEMORANDUM

OF THE UNITED STATES COURT OF

APPEALS FOR THE NINTH CIRCUIT,

FILED SEPTEMBER 18, 2025 . . . . . . . . . . . . . . . . 1a

APPENDIX B — MEMORANDUM OF THE

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

JULY 25, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7a

APPENDIX C — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA,

FILED MARCH 26, 2024 . . . . . . . . . . . . . . . . . . . . 13a

APPENDIX D — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA

FILED FEBRUARY 16, 2024 . . . . . . . . . . . . . . . . . 20a

A PPEN DI X E — OR DER OF T H E

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

SEPTEMBER 18, 2025 . . . . . . . . . . . . . . . . . . . . . . . 63a

APPENDIX F — RELEVANT PROVISIONS

INVOLVED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65a

vii

TABLE OF CITED AUTHORITIES

Cases

Page

A & H Sportswear, Inc. v.

Victoria’s Secret Stores, Inc.,

237 F.3d 198 (3d Cir. 2000) . . . . . . . . . . . . . . . . . . 21, 29

Americana Trading Inc. v. Russ Berrie & Co.,

966 F.2d 1284 (9th Cir. 1992) . . . . . . . . . . . . . . . . . . . 22

AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) . . . . . . . . . . 7, 8, 14, 17, 25

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Attrezzi, LLC v. Maytag Corp.,

436 F.3d 32 (1st Cir. 2006) . . . . . . . . . . . . . . . . . . . . . 21

B & B Hardware, Inc. v. Hargis Indus., Inc.,

575 U.S. 138 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Banff, Ltd. v. Federated Dep’t Stores, Inc.,

841 F.2d 486 (2d Cir. 1988) . . . . . . . . . . . . . . . . . . . . . 22

Boston Athletic Ass’n v. Sullivan,

867 F.2d 22 (1st Cir. 1989) . . . . . . . . . . . . . . . . . . . . . 11

Brookfield Commc’ns, Inc. v.

W. Coast Entm’t Corp.,

174 F.3d 1036 (9th Cir. 1999) . . . . . . . . . . . . . . . . 13, 24

viii

Cited Authorities

Page

Clicks Billiards, Inc. v. Sixshooters, Inc.,

251 F.3d 1252 (9th Cir. 2001) . . . . . . . . . . . . . . . . . . . 13

Dieter v. B & H Indus. of Sw. Fla., Inc.,

880 F.2d 322 (11th Cir. 1989) . . . . . . . . . . . . . . . . . . . 12

Dreamwerks Prod. Grp., Inc. v. SKG Studio,

142 F.3d 1127 (9th Cir.1998) . . . . . . . . . . . . . . . . . . . . 27

FCOA LLC v. Foremost Title & Escrow Servs. LLC,

57 F.4th 939 (11th Cir.) . . . . . . . . . . . . . . . . . . . . . . . . 29

Fisons Horticulture, Inc. v. Vigoro Indus., Inc.,

30 F.3d 466 (3d Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . 12

Fortune Dynamic, Inc. v.

Victoria Secret Stores Brand Mgmt., Inc.,

618 F.3d 1025 (9th Cir. 2010) . . . . . . . . . . . . . . . . . . . 25

Frehling Enters., Inc. v. Int’l Select Grp., Inc.,

192 F.3d 1330 (11th Cir. 1995) . . . . . . . . . . . . . . . . . . 29

Gen. Motors Corp. v. Lanard Toys, Inc.,

468 F.3d 405 (6th Cir. 2006) . . . . . . . . . . . . . . . . . 12, 13

GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . 29

Gray v. Meijer, Inc.,

295 F.3d 641 (6th Cir. 2002) . . . . . . . . . . . . . . . . . . . . 29

Cited Authorities

Page

Hana Fin., Inc. v. Hana Bank,

574 U.S. 418 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Interstellar Starship Servs. v. Epix, Inc.,

184 F.3d 1107 (9th Cir. 1999) . . . . . . . . . . . . . . . . . . . 24

Int’l Ass’n of Machinists & Aerospace Workers,

AFL-CIO v. Winship Green Nursing Ctr.,

103 F.3d 196 (1st Cir. 1996) . . . . . . . . . . . . . . . . . . . . 27

Int’l Kennel Club of Chicago, Inc. v.

Mighty Star, Inc.,

846 F.2d 1079 (7th Cir. 1988) . . . . . . . . . . . . . . . . . . . 22

Jordache Enters., Inc. v. Hogg Wyld, Ltd.,

828 F.2d 1482 (10th Cir. 1987) . . . . . . . . . . . . . . . . . . 11

King of the Mountain Sports, Inc. v.

Chrysler Corp.,

185 F.3d 1084 (10th Cir. 1999) . . . . . . . . . . . . . . . . . . 29

Lone Star Steakhouse & Saloon, Inc. v.

Alpha of Virginia, Inc.,

43 F.3d 922 (4th Cir. 1995) . . . . . . . . . . . . . . . . . . . . . 12

Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC,

507 F.3d 252 (4th Cir. 2007) . . . . . . . . . . . . . . . . . . . . 25

Maker’s Mark Distillery, Inc. v. Diageo N. Am.,

679 F.3d 410 (6th Cir. 2012) . . . . . . . . . . . . . . . . . . . . 29

Cited Authorities

Page

Menendez v. Holt,

128 U.S. 514, 9 S.Ct. 143, 32 L.Ed. 526 (1888) . . . . . 22

Multi Time Mach., Inc. v. Amazon.com, Inc.,

804 F.3d 930 (9th Cir. 2015) . . . . . . . . . . . . . . . . . 14, 24

Network Automation, Inc. v.

Advanced Sys. Concepts, Inc.,

638 F.3d 1137 (9th Cir. 2011) . . . . . . . . . . . . . . . . . . . 14

P & P Imps. LLC v. Johnson Enters., LLC,

46 F.4th 953 (9th Cir. 2022) . . . . . . . . . . . . . . . . . 24, 25

Packman v. Chicago Tribune Co.,

267 F.3d 628 (7th Cir. 2001) . . . . . . . . . . . . . . . . . . . . 27

Piper Aircraft Corp. v. Wag-Aero, Inc.,

741 F.2d 925 (7th Cir. 1984) . . . . . . . . . . . . . . . . . . . . 12

PlayNation Play Sys., Inc. v. Velex Corp.,

924 F.3d 1159 (11th Cir. 2019) . . . . . . . . . . . . . . . . . . 12

Plus Prods. v. Plus Discount Foods, Inc.,

722 F.2d 999 (2d Cir. 1983) . . . . . . . . . . . . . . . . . . . . . 11

Reinsurance Co. of Am. v.

Administratia Asigurarilor de Stat,

902 F.2d 1275 (7th Cir. 1990) . . . . . . . . . . . . . . . . . . . 20

Rosetta Stone Ltd. v. Google, Inc.,

676 F.3d 144 (4th Cir. 2012) . . . . . . . . . . . . . . . . . . . . 24

Cited Authorities

Page

Sands, Taylor & Wood Co. v. Quaker Oats Co.,

978 F.2d 947 (7th Cir. 1992) . . . . . . . . . . . . . . . . . . . . 22

SquirtCo v. Seven-Up Co.,

628 F.2d 1086 (8th Cir. 1980) . . . . . . . . . . . . . . . . . . . 12

Swatch AG v. Beehive Wholesale, LLC,

739 F.3d 150 (4th Cir. 2014) . . . . . . . . . . . . . . . . . . . . 25

Thane Int’l, Inc. v. Trek Bicycle Corp.,

305 F.3d 894 (9th Cir. 2002) . . . . . . . . . . . . . . 13, 25, 27

Tolan v. Cotton,

572 U.S. 650 (2014) . . . . . . . . . . . . . . . . . . . . . . . . 18, 26

Top Tobacco, L.P. v. N. Atl. Operating Co., Inc.,

509 F.3d 380 (7th Cir. 2007) . . . . . . . . . . . . . . . . . . . . 12

Toyota Motor Sales, U.S.A., Inc. v. Tabari,

610 F.3d 1171 (9th Cir. 2010) . . . . . . . . . . . . . . . . . . . .23

Variety Stores, Inc. v. Wal-Mart Stores, Inc.,

888 F.3d 651 (4th Cir. 2018) . . . . . . . . . . . . . . . . . . . . 25

Water Pik, Inc. v. Med-Sys., Inc.,

726 F.3d 1136 (10th Cir. 2013) . . . . . . . . . . . . . . . . . . 27

Wreal, LLC v. Amazon.com, Inc.,

38 F.4th 114 (11th Cir. 2022) . . . . . . . . . . . . . . . . . . . . 21

xii

Cited Authorities

Page

Statutes

15 U.S.C. § 1114 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

15 U.S.C, §1114(1)(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

15 U.S.C. § 1125 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

Rules

Fed. R. Civ. P. 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

Other Authorities

An Empirical Study of the Multifactor Tests for

Trademark Infringement, 94 Cal. Law Rev. 1581

(2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Graeme B. Dinwoodie and Mark D. Janis, The

drivers of trademark law reform: perspectives

from the academy, in Research Handbook on

Trademark Law Reform (Graeme B. Dinwoodie &

Mark D. Janis eds., 2021) . . . . . . . . . . . . . . . . . . . 23, 24

Doctrine, Data, and the Death of DuPont (Dec. 1, 2025),

https://ssrn.com/abstract=5843642 . . . . . . . . . . . . . 11

Fifth Circuit Model Jury Instructions, 14.10 . . . . . . . . 17

xiii

Cited Authorities

Page

Seventh Circuit Model Jury Instructions,

13.1.2.3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

PETITION FOR A WRIT OF CERTIORARI

Petitioner World Champ Tech, LLC respectfully

petitions for a writ of certiorari to review the judgment of

the United States Court of Appeals for the Ninth Circuit

in this case.

OPINIONS BELOW

T he 9 t h Ci rcu it Cou r t of Appea ls a mended

memorandum regarding likelihood of confusion (App.,

infra 1a-12a) is unofficially reported at 2025 WL 2673906.

The district court’s orders granting Peloton Interactive,

Inc.’s motion for summary judgment (App., infra 20a-62a)

is unofficially reported at 2022 WL 2159260.

JURISDICTION

On July 25, 2025, the 9th Circuit Court of Appeals

entered a Judgment. On September 18, 2025, the 9th

Circuit denied a petition for rehearing, and issued an

amended memorandum, which is the judgment sought

to be reviewed. The jurisdiction of this Court is invoked

under 28 U.S.C. 1254(1).

STATUTORY PROVISION INVOLVED

The relevant provisions of the Lanham Act, Pub. L.

79–489, 60 Stat. 427, are reproduced in the appendix to

this petition, namely, 15 U.S.C. § 1114 (App., infra, 65a-71a)

and 15 U.S.C. § 1125 (App., infra 72a-84a). Fed. R. Civ.

P. 56 is also reproduced in the appendix to this petition

(App., infra, 85a-87a).

STATEMENT

World Champ Tech, LLC (“WCT”) was founded in

2012 by two championship-level athletes. The company

develops technology products to support athletes in

training, including cyclists. WCT’s original BIKE+ app—

developed for Apple iOS devices and the Pebble Watch

—tracked speed, distance, altitude, and grade, included

interval timers, recorded ride history, and allowed users to

post details of their rides to social media. WCT launched

these apps in 2014 and has been distributing them ever

since.

WCT originally considered using BIKEMORE as the

trademark for its app. The USPTO, however, rejected

WCT’s application for BIKEMORE on grounds that it

previously had been applied for by a bicycle manufacturer

that used a stylized version of the mark. The USPTO

reasoned that use of the mark on mobile apps and bicycles

would cause likely consumer confusion. WCT proceeded

with its alternative and received a federal trademark

registration for the BIKE+ mark for mobile cycling apps

in July 2015.

In January 2021, WCT released a second version of

the BIKE+ app for the Apple Watch. WCT’s updated

BIKE+ app summarizes a user’s cycling metrics, provides

motivational feedback, and can recommend rides to help

a user reach a specific goal. This app also provides an

innovative on-device coaching component for users who

pay a subscription fee.

WCT has marketed and distributed its BIKE+ app

through the Apple App Store, its website, social media

sites, paid advertising on Facebook, sponsorships by

cycling teams and Olympic cyclists, and charity bike

racing events.

In September 2020, Peloton Interactive, Inc.

(“Peloton”)—a large corporation that makes and sells

bundled “interactive” or “connected” fitness products

(a combination of software and exercise products)—

announced its “ALL NEW BIKE+,” boasting that Peloton

was “making it easier than ever to become part of the

Peloton community, with or without hardware.” Following

the announcement, Peloton launched an enormous

advertising campaign, spending tens of millions of dollars

in the first few months alone to advertise its new BIKE+

products throughout the United States in all channels.

These ads frequently displayed Peloton’s BIKE+ mark

with and without its PELOTON house mark. This tactic

leveraged and accelerated consumer associations between

BIKE+ and Peloton.

Peloton rented and sold its BIKE+ product with

a monthly “All Access Membership” subscription that

includes a mobile app (and its metric and tracking features,

both for stationary and outdoor bikes, which directly

compete with WCT’s BIKE+ app) and Peloton’s streaming

classes. When consumers acquire BIKE+ products, they

are eligible to use the app (even while waiting for delivery)

and are told to download it from the relevant app provider.

Peloton’s mobile app bears the Peloton® trademark

but not the BIKE+ name. Peloton’s app, however, is

advertised in the Apple App Store and online directly

adjacent to WCT’s BIKE+ app. After Peloton launched

its BIKE+ product, WCT’s app was drowned in Peloton

references whenever the mark was searched online and

intermingled with Peloton ads in the App Store if the mark

was searched there.

WCT sued Peloton in 2021, relying on the doctrine of

reverse trademark confusion (which essentially puts the

trademark owner in the position of infringer). Up until the

lawsuit, Peloton had challenged third-party producers of

accessory products for using Peloton’s supposed BIKE+

trademark. It asserted that use of the BIKE+ trademark

by these third parties, even if Peloton did not itself

produce the same accessories under a BIKE+ mark,

was likely to cause confusion. The “forward” consumer

confusion Peloton asserted was likely is the exact mirror

of WCT’s likely confusion claims.

Because Peloton had announced its BIKE+ product

immediately before WCT was about to launch its new app

with in-app coaching, WCT held off on plans to further

advertise its product and mark. As a result, its new

app had few users and no direct reports emerged from

consumers who were confused about the app’s association

with Peloton. WCT, however, conducted a consumer survey

that showed 28.7% of consumers reported confusion that,

after subtracting the 16.7% confusion in response to the

control stimulus, resulted in net confusion of 12%.

By the time WCT and Peloton filed cross summary

judgment motions in 2022, Peloton had spent hundreds of

millions to advertise its BIKE+ product.

A. PROCEEDINGS IN THE LOWER COURTS

Peloton moved for summary judgment on grounds that

no jury could find likely confusion. The district court called

it a “close call” but ruled in Peloton’s favor. Its ruling, like

many rulings in likelihood of confusion cases, considered

each of the confusion factors—Sleekcraft factors in the

Ninth Circuit—as follows:

1. strength of the mark;

2. proximity of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. type of goods and the degree of care likely

to be exercised by the purchaser;

7. defendant’s intent in selecting the mark; and

8. likelihood of expansion of the product lines.

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th

Cir. 1979), abrogated by Mattel, Inc. v. Walking Mountain

Prods., 353 F.3d 792 (9th Cir. 2003). The district court

analyzed each of these factors to determine which party

had more support for each factor. Then, while nominally

forsaking any “bean counting” of factors, the district court

judged that, in the “totality,” confusion was not probable.

The district court’s ruling contained findings that,

in most cases, would have disposed of Peloton’s motion

in WCT’s favor. The district court concluded that the

marks were similar, pointing to the rule in many circuits

that the presence of Peloton’s house mark was likely to

aggravate likely confusion as consumers associated the

BIKE+ mark with Peloton, while experiencing reduced

exclusive associations with WCT. The district court found

that the parties’ goods were related and complementary

and that a consumer likely would believe the BIKE+

app was intended to be used with Peloton’s BIKE+ bike.

The district court held the trademark held commercial

strength due to Peloton’s advertising of the mark.

The district court, however, opined that the BIKE+

mark— despite hav ing been reg istered for many

years—was descriptive as a matter of law (even though a

descriptive mark cannot be registered). The district court

relied on this determination to conclude that the mark’s

commercial strength in Peloton’s hands was outweighed

by the mark’s descriptiveness, and that the mark strength

factor therefore favored Peloton.

The court also balanced or ignored the evidence

when assessing the “actual confusion” factor. It found

no evidence of consumer reported confusion and, while

it mentioned the consumer survey, did not include that

evidence in its assessment. It held that proximity in

channels of distribution favored Peloton as well, holding

that the Peloton BIKE+ was sold in brick-and-mortar

stores while WCT’s app was not, and that this outweighed

the marks’ side-by-side presence in online searches and

in the App Store. The district court held that the intent

factor, considering both parties’ evidence, mildly tilted

in WCT’s favor because Peloton knew about WCT’s

registration nearly a year before it launched its BIKE+. It

also held that the factor evaluating likelihood of expansion

and convergence of the parties’ offerings favored WCT

because Peloton “considered developing an app store

for its fitness equipment and has applied for trademark

registrations related to mobile app features.”

After balancing the parties’ evidence on all the factors,

the district court’s conclusion pivoted on its determination

that mark strength was the most important factor. The

court openly questioned whether its determination was

supported by Ninth Circuit authority that required

consideration in reverse confusion cases of the junior

user’s commercial strength. But, noting again that there

were no reports of actual confusion while ignoring the

consumer survey, the court held that balance confusion

was not probable. The district court reinforced this

conclusion in its reconsideration order.

WCT appealed the summary judgment decision to

the Ninth Circuit.

The Ninth Circuit affirmed that the parties’ products

were related and that this factor favored WCT. It came

out differently, however, in its balancing of evidence

on other factors relied on by the district court. It

concluded the mark strength factor supported WCT due

to the prevalence of Peloton’s advertising, outweighing

the conceptual weakness—be it descriptiveness or

suggestiveness—of the BIKE+ mark. It held that the

consumer survey must be considered, but that in the

absence of additional evidence, this factor would not favor

WCT unless the survey confusion results exceeded 20%.

Most importantly, it concluded, in conflict with opinions

from virtually every Federal Circuit, that the presence

of Peloton’s house mark eliminated any similarity of the

marks. This factor, and the conclusion that the survey

was outweighed by the absence of reported confusion by

actual customers, became dispositive despite the evidence

and factors tilting in WCT’s favor. Without this departure

from the majority rule regarding house marks, the mark

similarity and proximity of goods—factors that predict

likelihood of confusion outcomes 99% of the time based on a

recent empirical study covering thousands of cases—both

would have favored WCT. See Reichert, Doctrine, Data,

and the Death of DuPont, p. 41 (Dec. 1, 2025), https://ssrn.

com/abstract=5843642 (last visited Dec. 15, 2025) (noting

that “[w]hat courts celebrate as flexible contextualization,

litigants experience as outcome uncertainty”).

REASONS TO GRANT THE PETITION

1. The Circuits’ Multi-Factor Likely Confusion Tests

are Guidelines for the Jury to Use in Answering the

Ultimate Factual Issue

Each circuit has developed a multi-factor test for

deciding whether using a junior mark will cause likely

confusion, mistake or deception with a senior mark. B &

B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,

154 (2015). The variations in each of these “non-exclusive”

factor tests is minor and, so long as they address

themselves to a uniform standard of likely confusion, the

different formulations do not hinder agreement between

the circuit courts on the underlying standard.

The courts, however, do not agree on how the factor

tests should apply to summary judgment. Some courts

imply that all the listed factors in each circuit must be

considered. E.g., Jordache Enters., Inc. v. Hogg Wyld,

Ltd., 828 F.2d 1482, 1484 (10th Cir. 1987) (“All of the

factors are interrelated, and no one factor is dispositive.”);

Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 29 (1st Cir.

1989) (“No one factor is necessarily determinative, but

each must be considered.”); Plus Prods. v. Plus Discount

Foods, Inc., 722 F.2d 999, 1004 (2d Cir. 1983) (“[E]ach must

be considered in the context of all of the other factors,

and from a balance of these determinations, one is able to

reach the ultimate conclusion, whether there is likelihood

of confusion …”); SquirtCo v. Seven-Up Co., 628 F.2d

1086, 1091 (8th Cir. 1980) (“[R]esolution of this issue does

not hinge on a single factor but requires a consideration

of numerous factors to determine whether under all the

circumstances there is a likelihood of confusion.”); Lone

Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc.,

43 F.3d 922, 933 (4th Cir. 1995) (“In order to guide courts

in determining whether a likelihood of confusion exists,

this Court has delineated seven factors a court must

consider …”); Dieter v. B & H Indus. of Sw. Fla., Inc., 880

F.2d 322, 326 (11th Cir. 1989) (“Determination of likelihood

of confusion requires analysis of the following seven

factors …”); Fisons Horticulture, Inc. v. Vigoro Indus.,

Inc., 30 F.3d 466, 473 (3d Cir. 1994) (“Where the goods or

services are not competing, the similarity of the marks is

only one of a number of factors the court must examine to

determine likelihood of confusion.”); Piper Aircraft Corp.

v. Wag-Aero, Inc., 741 F.2d 925, (7th Cir. 1984) (cautioning

that: “None of these factors is determinative. In fact,

we have reversed lower court decisions that have placed

excessive importance on certain factors.”).

At the same time, other courts focus on a few principal

factors to make confusion determinations affirmatively

or negatively. These courts may analyze a factor “troika”

or a handful of the “most important” factors. See, e.g.,

PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159,

1169 (11th Cir. 2019) (“Courts do not have to consider

every factor in every case.”); Top Tobacco, L.P. v. N. Atl.

Operating Co., Inc., 509 F.3d 380, 383 (7th Cir. 2007) (“If

we know for sure that consumers are not confused about a

product’s origin, there is no need to consult even a single

proxy.”); Gen. Motors Corp. v. Lanard Toys, Inc., 468

F.3d 405 (6th Cir. 2006) (affirming finding of likelihood of

confusion on summary judgment despite the lower court

failing to adequately discuss the Frisch factors); Thane

Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th

Cir. 2002) (defending the analysis of only a “subset” of

factors in the non-internet context), superseded by statute

on other grounds; Brookfield Commc’ns, Inc. v. W. Coast

Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) (endorsing

a ”subset“ of the three “most important” factors in the

internet context).

There is broad agreement that these factors, whether

all or a subset are considered, must be weighed and

balanced according to the circumstances of each case with

the jury to decide in “the totality of the circumstances”

whether likely confusion will arise. The outliers are

the Sixth and Federal Circuits that hold the ultimate

likely confusion determination is a “legal” issue. Several

Justices openly wondered if the Court’s decision in Hana

Fin., Inc. v. Hana Bank would influence this circuit split.

Transcript of Oral Argument at 41:16-19, 42:16-18, Hana

Financial, Inc. v. Hana Bank, No. 13-1211 (U.S. Dec. 3,

2014), https://www.supremecourt.gov/oral_arguments/

argument_transcripts/2014/13-1211_fdhk.pdf. But the

Hana Fin. decision determined that mark similarity for

tacking purposes presented a jury question. Hana Fin.,

Inc. v. Hana Bank, 574 U.S. 418, 423 (2015). The Ninth

Circuit treats the ultimate question as factual and the

majority rule requires the jury to balance the confusion

factors and decide whether confusion is likely. See, e.g.,

Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252,

1265 (9th Cir. 2001) (“[T]he question of likelihood of

confusion is routinely submitted for jury determination

as a question of fact.”).

Even on summary judgment, in some instances,

appellate courts limit consideration of the evidence to

a few factors. Network Automation, Inc. v. Advanced

Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011)

(reversing and remanding, directing the district court

to “weigh the Sleekcraft factors flexibly to match the

specific facts of this case.”); Multi Time Mach., Inc. v.

Amazon.com, Inc., 804 F.3d 930, 939 (9th Cir. 2015) (“The

likelihood of confusion is often a question of fact, but not

always. In a case such as this, where a court can conclude

that the consumer confusion alleged by the trademark

holder is highly unlikely by simply reviewing the product

listing/advertisement at issue, summary judgment is

appropriate.”).

In contrast, when presenting the likely confusion

question to juries, the lower courts present all the factors

and do not typically prescribe any hierarchy or relative

weight that the jury should bring to each factor. At most,

the jury is told to consider all the confusion evidence and

not to focus on any one factor. For example, the Ninth

Circuit Model Jury Instruction states as follows:

[...] You should not focus on any one factor

to resolve whether there was a likelihood

of confusion, because you must consider

all relevant evidence. As you consider the

likelihood of confusion you should examine the

following:

1. Strength or Weakness of the Plaintiff’s

Mark. The more distinctive the plaintiff’s

mark is and the more the consuming public

recognizes the plaintiff’s trademark, the

more likely it is that consumers would be

confused about the source of the defendant’s

goods if the defendant uses a similar mark.

2. The Defendant’s Use of the Mark. If

the defendant and the plaintiff use their

trademarks on the same, related, or

complementary kinds of goods, there may

be a greater likelihood of confusion about

the source of the goods than otherwise.

3. Simi la r ity of the Pla inti ff ’s and the

Defendant’s Marks. If the overall impression

created by the plaintiff’s trademark in the

marketplace is similar to that created by

the defendant’s trademark in [appearance]

[sound] [or] [meaning], there is a greater

chance [that consumers are likely to be

confused by the defendant’s use of a mark]

[of likelihood of confusion]. [Similarities in

appearance, sound or meaning weigh more

heavily than differences in finding the

marks are similar.]

4. Actual Confusion. If the defendant’s use

of the plaintiff ’s trademark has led to

instances of actual confusion, this strongly

suggests a likelihood of confusion. However,

actual confusion is not required for a finding

of likelihood of confusion. Even if actual

confusion did not occur, the defendant’s use

of the trademark may still be likely to cause

confusion. As you consider whether the

trademark used by the defendant creates

for consumers a likelihood of confusion with

the plaintiff’s trademark, you should weigh

any instances of actual confusion against

the opportunities for such confusion. If the

instances of actual confusion have been

relatively frequent, you may find that there

has been substantial actual confusion. If,

by contrast, there is a very large volume of

sales, but only a few isolated instances of

actual confusion, you may find that there

has not been substantial actual confusion.

5. The Defendant’s Intent. Knowing use by

the defendant of the plaintiff’s trademark to

identify similar goods may strongly show an

intent to derive benefit from the reputation

of the plaintiff’s mark, suggesting an intent

to cause a likelihood of confusion. On the

other hand, even in the absence of proof that

the defendant acted knowingly, the use of

the plaintiff’s trademark to identify similar

goods may indicate a likelihood of confusion.

6. Marketing/Advertising Channels. If the

plaintiff’s and the defendant’s goods are

likely to be sold in the same or similar

stores or outlets, or advertised in similar

media, this may increase the likelihood of

confusion.

7. Consumer’s Degree of Care. The more

sophisticated the potential buyers of the

goods or the more costly the goods, the more

careful and discriminating the reasonably

prudent purchaser exercising ordinary

caution may be. They may be less likely to

be confused by similarities in the plaintiff’s

and the defendant’s trademarks.

8. Product Line Expansion. When the parties’

products differ, you may consider how

likely the plaintiff is to begin selling the

products for which the defendant is using

the plaintiff’s trademark. If there is a strong

possibility of expanding into the other

party’s market, there is a greater likelihood

of confusion.

9. Other Factors. [Insert any other factors that

bear on likelihood of confusion.]

Manual of Model Civil Jury Instructions for the Ninth

Circuit No. 15.18 (Ninth Circuit Jury Instructions

Committee, 2024) (“Infringement —Likelihood of

Confusion—Factors—Sleekcraft Test”).

The jury answers the likely confusion issue under

similar instructions in the majority of circuits. See, e.g.,

Fifth Circuit Model Jury Instructions, 14.10 (“Trademark

Infringement—Likelihood of Confusion”) (“The weight

to be given to the factors depends on the facts and

circumstances of each case. The absence or presence of

any one of the [factors] does not determine whether there

is, or is not, a likelihood of confusion.”); Seventh Circuit

Model Jury Instructions, 13.1.2.3 (“Infringement—

Elements—Likelihood Of Confusion—Factors”) (“The

weight to be given to each of these factors is up to you to

determine. No particular factor or number of factors is

required to prove likelihood of confusion.”).

2. The Factor Test is Not Applied With Adequate

Deference to the Jury in the Lower Courts

This Court’s decisions are rife with advisories not

to engage in the balancing and weighing of evidence

that occurs in most likelihood of confusion cases. E.g.,

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)

(“Credibility determinations, the weighing of the evidence,

and the drawing of legitimate inferences from the facts are

jury functions, not those of a judge, whether he is ruling on

a motion for summary judgment or for a directed verdict”).

The Court’s decisions establish standards for summary

judgment that protect the right to jury by requiring the

courts to credit reasonable inferences from the evidence

in the nonmovant’s favor. For example:

The witnesses on both sides come to this case

with their own perceptions, recollections, and

even potential biases. It is in part for that

reason that genuine disputes are generally

resolved by juries in our adversarial system.

By weighing the evidence and reaching factual

inferences contrary to Tolan’s competent

evidence, the court below neglected to adhere to

the fundamental principle that at the summary

judgment stage, reasonable inferences should

be drawn in favor of the nonmoving party.

Tolan v. Cotton, 572 U.S. 650, 660 (2014).

In applying this test to likely confusion, however, the

lower courts including in this case will often weigh the

evidence to determine which party will likely prevail on

each factor and then apply its own rules for balancing

the relative weight to give each factor. Dkt. 41.1 and 9.2

pp.3-30. This produces inconsistent and unpredictable

summary judgment results as courts agree, disagree,

or substitute their own view for how competing evidence

will be perceived by consumers, and then again when

they roll up those factors to a “totality” analysis. These

inconsistencies could be consigned to mere errors in

judgment or nuanced distinctions that require a deep

understanding of evidentiary records in the thousands

of pages. Or, more likely, the factor tests invite courts,

at least without any structural filter, to substitute their

own view for the jury’s and, like juries, reach differing

outcomes on similar facts.

At every stage, WCT has experienced the downsides

of these contradictory approaches to the same confusion

questions. WCT was told it could not register the same

mark for its mobile biking application because a third

party already had registered the mark for a standard

(not “connected”) bicycle because the marks would cause

likely confusion. Dkt. 20.2, SER-76. The logic was plain;

the goods were related and the “Bikemore” marks were

considered identical. Id. WCT applied for and received a

registration for BIKE+, assured that it was sufficiently

distinctive to be registered upon first use.

Then, after Peloton blitzed the market with its BIKE+

launch for a connected bicycle (that will not work without a

mobile app), the district court granted summary judgment

because it believed there was no likely confusion between

the identical marks. The Ninth Circuit almost entirely

rejected the district court’s approach while coming to

the same outcome. All its conclusions, however, involved a

balancing of the evidence or the application of a “rule” that

itself balanced the evidence. It held the identical marks

were not “similar” because Peloton’s house mark, rather

than aggravating confusion, was held to eliminate the

similarity of the marks. It further discounted the marks’

similarity because the goods were marketed online,

where the court deemed the presence of goods to be too

ubiquitous to matter. WCT’s survey was considered and

deemed sufficient, but only upon proof of other evidence,

to support an inference of likely confusion. Dkt. 39.1, p.5

& n. 1. Only by differently balancing the evidence and

factors could the Ninth Circuit produce the same outcome

through such diametrically opposed approaches.

When the courts themselves (on an identical record)

disagree about how a reasonable juror will assess the

competing evidence relating to important confusion

factors, it promotes distrust, unpredictability and

inefficiency. As Judge Easterbrook once said about a

factor test:

I would be most reluctant to accept an approach

that calls on the district judge to throw a heap

of factors on a table and then slice and dice

to taste. Although it is easy to identify many

relevant considerations,… a court’s job is to

reach judgments on the basis of rules of law

rather than to use a different recipe for each

meal.

Reinsurance Co. of Am. v. Administratia Asigurarilor

de Stat, 902 F.2d 1275, 1283 (7th Cir. 1990) (Easterbrook,

J. concurring).

The same has become true of the patchwork of

conflicting principles that lower courts bring to bear on

likely confusion, as it suits their desire to “employ fast

and frugal heuristics to short-circuit the multifactor

test.” Prof. Barton Beebe, An Empirical Study of the

Multifactor Tests for Trademark Infringement, 94 Cal.

Law Rev. 1581, 1586 (2006).

Each of the legal rules applied by the lower courts,

none of which would be provided to a jury, contain

embedded judgments about how conflicting evidence

bears on likely confusion. The Ninth Circuit ruled that

“although the use of house marks ‘can aggravate reverse

confusion’ in some cases, this is not one of them.” Dkt.

39.1, pp.3-4. This ruling—which was pivotal given the

court’s assessment of other factors—contradicted the

district court and the majority of circuits, including the

Ninth, in similar cases. E.g., Wreal, LLC v. Amazon.

com, Inc., 38 F.4th 114, 131 (11th Cir. 2022) (holding that

in forward confusion the presence of a house mark often

dispels confusion, but in reverse confusion the presence

of a house mark may aggravate confusion because it

reinforces the association of the allegedly infringing mark

with defendant’s corporate identity); A & H Sportswear,

Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 230

(3d Cir. 2000) (“As to the presence of the housemark

[...] not only is there the possibility that consumers will

fail to remember the mark when encountering A & H’s

swimwear, but there is also the possibility that the mark

will aggravate, rather than mitigate, reverse confusion,

by reinforcing the association of the word ‘miracle’

exclusively with Victoria’s Secret.”) (emphasis in original);

Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir.

2006) (“Yet since the alleged harm is reverse confusion,

to the extent Jenn-Air is itself the more recognized label

the linkage could actually aggravate the threat to Attrezzi

LLC.”) (emphasis in original); Sands, Taylor & Wood Co.

v. Quaker Oats Co., 978 F.2d 947, 954 (7th Cir. 1992) (“some

courts have observed that the conjunction of defendant’s

trademark and the allegedly infringed term ‘may actually

increase the misappropriation by linking defendant’s name

to plaintiff’s goodwill’ […]. Clearly, then, the fact that the

Gatorade trademark always appears in Quaker’s ‘Thirst

Aid’ advertisements does not preclude a finding that those

advertisements also use ‘Thirst Aid’ as a trademark.”);

Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486,

492 (2d Cir. 1988) (“Bloomingdale’s attachment of its

company name below its standard typestyle ‘B Wear’

mark does not offset the marks’ similarity because the

name is in very small letters and may actually increase

the misappropriation by linking defendant’s name to

plaintiff’s goodwill.”); Int’l Kennel Club of Chicago, Inc.

v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7th Cir. 1988)

(“DCN and Mighty Star further invite us to infer that

the defendants’ use of its house mark ‘24K Polar Puff’

in conjunction with the International Kennel Club name

on its advertising decreases the likelihood of confusion

among consumers. This argument is a smoke screen and

a poor excuse for the defendants’ blatant misappropriation

of the plaintiff’s name.”), abrogation recognized on other

grounds; Americana Trading Inc. v. Russ Berrie & Co.,

966 F.2d 1284, 1288 (9th Cir. 1992), citing Menendez v.

Holt, 128 U.S. 514, 521, 9 S.Ct. 143, 144, 32 L.Ed. 526 (1888)

(“Indeed, use by Russ of its housemark along with Amtra’s

trademark may ‘be an aggravation and not a justification,

for it is openly trading in the name of another upon the

reputation acquired by the device of the true proprietor.’”).

The Ninth Circuit’s ruling also discounted the

similarity of the parties’ marks when they appear in

search engines and online channels. Dkt. 41.1, pp.4.

The idea that these channels don’t matter originates

from a widely criticized judge-created rule formulated

on intuition rather than evidence. Toyota Motor Sales,

U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010).

Judge Kozinski imagined, without evidence, a much more

sophisticated internet consumer who was unlikely to be

confused by nominative uses of others’ marks. Id.

As one commentator put it:

Grynberg’s argument calls to mind the earliest

cases involving online commerce, in which

reasonable consumers were portrayed as being

utterly mystified by the perceived intricacies

of search engines and hyperlinks, and it also

calls to mind somewhat newer cases such as

Toyota v. Tabari, in which Judge Kozinski

portrayed the reasonably prudent consumers as

remarkably agile online. Both portrayals may

have reflected the reality of their respective

times, of course. But the reasonably prudent

consumer in Tabari seemed to possess skills

suspiciously like Judge Konzinski’s, and one

might draw a similar impression from the older

cases. Perhaps the problem with the reasonably

prudent consumer metric is that judges are

too prone to superimpose onto it their own

sensibilities and limitations.

Graeme B. Dinwoodie and Mark D. Janis, The drivers of

trademark law reform: perspectives from the academy,

in Research Handbook on Trademark Law Reform 13

(Graeme B. Dinwoodie & Mark D. Janis eds., 2021)

The courts, sometimes appearing to balance evidence

of likely confusion against the impact of trademark law

on e-commerce, remain in multiple camps regarding how

internet commerce should affect confusion. Multi Time

Mach., 804 F.3d at 936, citing Brookfield Commc’ns, 174

F.3d at 1054 (“We must be acutely aware of excessive

rigidity when applying the law in the Internet context;

emerging technologies require a flexible approach.”);

Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 155 (4th

Cir. 2012) (treating keyword advertising/recommendations

as potentially actionable); Brookfield Commc’ns, 174 F.3d

at 1045 and 1057 (Explaining the mechanism of keyword

searches and holding that “[i]n addition to the relatedness

of products, West Coast and Brookfield both utilize the

Web as a marketing and advertising facility, a factor

that courts have consistently recognized as exacerbating

the likelihood of confusion. Both companies, apparently

recognizing the rapidly growing importance of Web

commerce, are maneuvering to attract customers via the

Web. Not only do they compete for the patronage of an

overlapping audience on the Web, both “MovieBuff” and

“moviebuff.com” are utilized in conjunction with Webbased products.”) (internal citations omitted); P & P Imps.

LLC v. Johnson Enters., LLC, 46 F.4th 953, 962 (9th Cir.

2022), citing Interstellar Starship Servs. v. Epix, Inc.,

184 F.3d 1107, 1110 (9th Cir. 1999) (“(‘overlapping internet

marketing channels are likely to cause confusion [because]

consumers are likely to encounter these substantially

similar games ‘at the same time, on the same screen,’

compounding the risk of confusion.”)

The Ninth Circuit also pivoted from its own law, and

the law of other circuits in downgrading survey evidence.

Its decision to reject an admissible survey showing 12%

net confusion is impossible to reconcile with its decision

that a survey showing 11% confusion should defeat

summary judgment. Fortune Dynamic, Inc. v. Victoria

Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1037 (9th

Cir. 2010). The marks in that case were also sold under

a house mark, exclusively offered as gifts with purchase

at Victoria’s Secret, and were deemed “related.” Both

surveys show some evidence of likely confusion and only

by usurping the jury’s role can rules emerge like the

one the Ninth Circuit applied here. Id. at 1035, citing

Sleekcraft, 599 F.2d at 353 and Thane, 305 F.3d at 902

(“Not surprisingly, evidence of actual confusion can also

support a finding of likelihood of confusion. Perhaps ‘[b]

ecause of the difficulty in garnering such evidence,’, we

have held that ‘[s]urvey evidence may establish actual

confusion,…’”).

Other cases send similarly mixed signals regarding

the import of survey and other confusion evidence as

it bears on summary judgment. Variety Stores, Inc. v.

Wal-Mart Stores, Inc., 888 F.3d 651, 665 (4th Cir. 2018),

citing Swatch AG v. Beehive Wholesale, LLC, 739 F.3d

150, 162 (4th Cir. 2014) and Louis Vuitton Malletier S.A.

v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir.

2007) (“Although actual confusion is ‘often paramount,’ ‘[i]

t is well established that no actual confusion is required to

prove a case of trademark infringement’”); P & P Imps.,

46 F.4th at 962 fn. 3, citing Fortune Dynamic, 618 F.3d

at 1036–38 (“The net confusion level was 18% and 16.5%

for the first and second surveys, respectively. We have

previously found a net confusion level of 11% sufficient to

preclude summary judgment on the issue of confusion.”).

In reaching their decisions, the district court and Ninth

Circuit overtly confessed they “weighed” the evidence and

factors, and reached different conclusions. The district

court, as is conventional, noted the summary judgment

standard, stating “the court does not make credibility

determinations or weigh conflicting evidence….” Dkt. 9.2,

pp.14. But then it proceeded to conclude that the competing

actual confusion evidence “weighs in the defendant’s favor”

and, because the internet and app stores are ubiquitous

channels, the marketing channel evidence also “weighs in

the defendant’s favor.” Id. at 23. Differing from the district

court on mark strength, the Ninth Circuit concluded “[t]

he first two factors—mark strength and proximity of the

goods—weigh in WCT’s favor.” Dkt. 41.1, pp.4.

The process courts follow, as both lower courts

followed here, of grading each side on each factor

inevitably requires balancing evidence and factors as

the jury ordinarily would do. Each of these assessments

carries a risk of importing factual judgments that

belong—and are assigned in jury instructions without

arbitrary or restrictive rules about how they bear on

consumer perceptions—to the jury. E.g., Tolan, 572 U.S. at

657 (“courts must take care not to define a case’s ‘context’

in a manner that imports genuinely disputed factual

propositions.”) The Court should take this opportunity

to redirect courts away from a factor-by-factor balancing

of evidence in favor of a process that considers whether

sufficient evidence, if believed, supports a likely confusion

finding.

3. How Summary Judgment Motions for Trademark

Infringements Should be Resolved

The summary judgment standard is compromised

by approaching the confusion factor test as a “factor

scorecard” rather than an evidentiary “checklist.” Several

courts warn against this. See, e.g., Thane, 305 F.3d at 901,

citing Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142

F.3d 1127, 1129 (9th Cir.1998). (“Unless properly used,

this long list of factors has the potential to befuddle the

inquiry. The list of factors is not a score-card—whether

a party ‘wins’ a majority of the factors is not the point.

Nor should ‘[t]he factors ... be rigidly weighed; we do not

count beans.’”). Yet, despite this tension, most courts,

when deciding summary judgment, plod through the

confusion factors to decide which ones favor each side,

before totaling them up to declare an answer. See, e.g.,

Int’l Ass’n of Machinists & Aerospace Workers, AFL-CIO

v. Winship Green Nursing Ctr., 103 F.3d 196, 207 (1st Cir.

1996); Packman v. Chicago Tribune Co., 267 F.3d 628, 646

(7th Cir. 2001); Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d

1136, 1160 (10th Cir. 2013).

Courts employ often contradictory rules about the

“weight” to be given certain types of evidence in the

context of finding a “winner” of each factor. For example,

the presence or absence of a house mark is hardly

likely to have the same effect in every case. In some, a

reasonable jury may find that it harms exclusive consumer

associations with a trademark owner while, in others, a

house mark may mitigate confusion. But the approach

taken in this case, where the district court and the court

of appeals were in search of the “winner” on “similarity,”

this house mark rule produced diametrically different

results. In the court of appeals, declaring Peloton the

“winner” on this factor washed away the contribution to

confusion that obviously arises when otherwise identical

marks are used.

Declaring “winners” on each factor inherently

requires balancing the evidence—multiple times—to

determine which side’s evidence, if believed, is more

likely to prevail on a given factor. An admissible confusion

survey showing 30% confusion is more likely to persuade

a jury than if the same survey shows 12%. But both

surveys contribute to an inference of likely confusion.

Only in the context where one is overtly balancing the

evidence—here the absence of evidence of actual reported

consumer confusion (which every court acknowledges is

not required)—are the survey’s results washed away.

Were the analytical framework followed by courts

analogous to the one that courts pose to juries, there would

be far less tension with the summary judgment standard.

The confusion factors are advisory, to make sure that all

angles are considered, not “innings” where an outcome

needs to be determined for each. This approach would

help avoid missing important evidence that encapsulates

multiple factors but may not be “weighty” on any specific

factor. Here, the mirror forward confusion case was

tested in real life as Peloton repeatedly claimed “its”

BIKE+ trademark was infringed by third-party BIKE+

uses on related products—including visually dissimilar

ones—that sprung up after Peloton launched its BIKE+

product. While not specifically relevant to any individual

factor raised by WCT’s case, certainly a jury might infer

that Peloton’s admissions on the ultimate question—likely

confusion—were relevant to the question. Yet between

them, in four separate orders, neither the district court

nor the court of appeals mentioned Peloton’s (successful)

mirror enforcement. Ostensibly, this evidence did not

neatly plug into their evaluation of each factor.

This does not mean that, if a critical mass of evidence

is apparent, thorough consideration must be given of every

confusion factor in every case. In many cases, courts can

identify the important factors likely to be of primary

significance. See, e.g., Maker’s Mark Distillery, Inc. v.

Diageo N. Am., 679 F.3d 410, 424 (6th Cir. 2012) (declaring

“the ‘most important Frisch factors’ are similarity and

strength of the mark”) (citing Gray v. Meijer, Inc., 295

F.3d 641, 646 (6th Cir. 2002); GoTo.com, Inc. v. Walt

Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000) (declaring

the “three most important” factors in the Internet context

as the similarity of the mark, the relatedness of the goods

and services, and the marketing channel used); Frehling

Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335

(11th Cir. 1995) (declaring “the type of mark and the

evidence of actual confusion are the most important”);

A & H Sportswear, 237 F.3d at 216 (declaring “[t]he

single most important factor” as mark similarity); King

of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d

1084, 1091 (10th Cir. 1999) (declaring “the first and most

important factor” as similarity of the marks); FCOA LLC

v. Foremost Title & Escrow Servs. LLC, 57 F.4th 939, 947

(11th Cir.), cert. denied, 144 S. Ct. 103 (2023) (reversing

the district court’s grant of summary and declaring “[i]

n drawing the ultimate inference about likelihood of

confusion, the two most important circumstantial facts

are respectively actual confusion and the strength of the

mark”).

If, by a quick look at the evidence, it is apparent that

reasonable inferences from admissible evidence show the

nonmovant can meet its burden of proof, there is no reason

for a court to march through the applicable set of confusion

factors in its circuit. In this case, for example, a court

that was not engaged in tallying the winner on certain

confusion factors might see that WCT’s registration is

identical to the challenged use, Peloton had created a

strong mark, the goods were related and likely to be

associated with a single source, and evidence of consumer

confusion was reflected in the survey. That should be

enough, particularly when Peloton itself made the same

arguments without any survey against others. The

counterarguments on each factor or how the factors might

otherwise be weighed are irrelevant under the summary

judgment standard provided the nonmovant’s evidence is

credited and is sufficient to support a reasonable narrative

of likely confusion.

The factors exist for a reason, of course, and before

granting summary judgment against likely confusion, a

court should review the record for evidence on each factor

and make sure that the trademark owner cannot support

a confusion narrative before entering summary judgment.

Risks that the summary judgment standard will

be ignored will persist so long as it is engrained in

lower courts that they must balance one side’s evidence

against the other to answer which party benefits from

consideration of each factor. Only this Court can redirect

the likely confusion inquiry away from this impermissible

weighting of the evidence and factors to considering

the sufficiency of evidence as a whole supporting likely

confusion. This case, and the arbitrary and conflicting

rules the lower courts applied—in contradiction with

one another on a pivotal factor—is a perfect vehicle to

illustrate how the typical approach produces distorted

results.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

Gregory S. Gilchrist

Counsel of Record

Verso Law Group LLP

565 Commercial Street,

4th Floor

San Francisco, CA 94111

(415) 534-0495

greg.gilchrist@versolaw.com

Counsel for Petitioner

World Champ Tech, LLC

APPENDIX

TABLE OF APPENDICES

Page

APPENDIX A — AMENDED MEMORANDUM

OF THE UNITED STATES COURT OF

APPEALS FOR THE NINTH CIRCUIT,

FILED SEPTEMBER 18, 2025 . . . . . . . . . . . . . . . . 1a

APPENDIX B — MEMORANDUM OF THE

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

JULY 25, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7a

APPENDIX C — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA,

FILED MARCH 26, 2024 . . . . . . . . . . . . . . . . . . . . 13a

APPENDIX D — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA

FILED FEBRUARY 16, 2024 . . . . . . . . . . . . . . . . . 20a

A PPEN DI X E — OR DER OF T H E

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

SEPTEMBER 18, 2025 . . . . . . . . . . . . . . . . . . . . . . . 63a

APPENDIX F — RELEVANT PROVISIONS

INVOLVED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65a

Appendix A MEMORANDUM

APPENDIX A — AMENDED

OF THE UNITED STATES COURT

OF APPEALS FOR THE NINTH CIRCUIT,

FILED SEPTEMBER 18, 2025

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 24-2266

D.C. No. 3:21-cv-03202-LB

WORLD CHAMP TECH, LLC,

Plaintiff-Appellant,

PELOTON INTERACTIVE, INC.,

Defendant - Appellee.

Appeal from the United States District Court

for the Northern District of California

Laurel D. Beeler, Magistrate Judge, Presiding

June 3, 2025, Argued and Submitted,

San Francisco, California;

September 18, 2025, Filed

Before: CALLAHAN, BADE, and KOH, Circuit Judges.

Appendix A

AMENDED MEMORANDUM*

Plaintiff-Appellant World Champ Tech, LLC (“WCT”)

has a trademark registration for “BIKE+” and has

produced a mobile app called “Bike+” since 2014. In

September 2020, Defendant-Appellee Peloton Interactive,

Inc. (“Peloton”) released a new version of its home

exercise bike called the “Peloton Bike+.” WCT sued for

trademark infringement, claiming that Peloton’s use of the

mark Peloton Bike+ is likely to cause confusion among

consumers as to whether Peloton produces or sponsors

WCT’s Bike+ app. The district court granted summary

judgment to Peloton. WCT timely appealed, and we have

jurisdiction pursuant to 28 U.S.C. § 1291. We review the

district court’s order de novo and the evidence in the

light most favorable to WCT. See Ironhawk Techs., Inc. v.

Dropbox, Inc., 2 F.4th 1150, 1159 (9th Cir. 2021). We affirm.

“The test for likelihood of confusion is whether a

‘reasonably prudent consumer’ in the marketplace is

likely to be confused as to the origin of the good or service

bearing one of the marks.” Dreamwerks Prod. Grp., Inc.

v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). In a

reverse confusion case like this one, “[t]he question . . . is

whether consumers doing business with the senior user

might mistakenly believe that they are dealing with the

junior user.” Id. at 1130. The analysis is guided by eight

factors:

* This disposition is not appropriate for publication and is not

precedent except as provided by Ninth Circuit Rule 36-3.

Appendix A

(1) strength of the mark; (2) proximity of the

goods; (3) similarity of the marks; (4) evidence of

actual confusion; (5) marketing channels used;

(6) type of goods and the degree of care likely to

be exercised by the purchaser; (7) defendant’s

intent in selecting the mark; and (8) likelihood

of expansion of the product lines.

Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228, 1252

(9th Cir. 2022) (quoting Ironhawk Techs., 2 F.4th at 1160).

“These factors are neither exhaustive nor dispositive; it

is the totality of facts in a given case that is dispositive.”

Id. at 1252 (quoting Ironhawk Techs., 2 F.4th at 1160).

Accordingly, even when certain factors weigh in the

plaintiff’s favor, summary judgment is appropriate if those

factors are “overwhelmingly offset” by the remaining

factors such that “no reasonable trier of fact could find

that confusion is probable.” Id. at 1261 (citation modified).

That is the case here. The first two factors—mark

strength and proximity of goods—weigh in WCT’s favor.

For the first factor, regardless of whether WCT’s Bike+

mark is descriptive or suggestive, a jury could find that

Peloton’s Peloton Bike+ mark is so commercially strong

that it could overtake WCT’s mark. See Ironhawk Techs.,

2 F.4th at 1162-63. For the second factor, a jury could find

that the parties’ products are intended for the “same class”

of consumers—those who bike as a form of exercise—and

are “similar in use and function”—offering users the

ability to track metrics while biking. See id. at 1164.

But other factors overwhelmingly favor Peloton.

Consider the third factor, which turns on the similarity of

Appendix A

the marks “as they are encountered in the marketplace.”

Lodestar, 31 F.4th at 1260 (citations omitted). Since WCT

ceased paid advertising in 2019, consumers who encounter

WCT’s mark primarily do so in the Apple App Store.

There, Peloton’s app may appear alongside WCT’s app

in search results, but the two apps bear no similarity in

appearance, especially because the Peloton app does not

use the term “Bike+.” Further, although the use of house

marks “can aggravate reverse confusion” in some cases,

this is not one of them. Ironhawk Techs., 2 F.4th at 1165.

Consumers interested in downloading either app from

the Apple App Store are presented with the name of the

app’s developer during that process, thereby reducing the

potential for consumer confusion as to who produces each

app. See Cohn v. Petsmart, Inc., 281 F.3d 837, 842 (9th

Cir. 2002); see also Lodestar, 31 F.4th at 1260. The mark

similarity factor therefore favors Peloton.

Next, consider the sixth factor, which asks “whether

a ‘reasonably prudent consumer’ would take the time to

distinguish between the two product lines.” Ironhawk

Techs., 2 F.4th at 1167 (quoting Surfvivor Media, Inc. v.

Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005)). This

factor similarly favors Peloton. When WCT applied for its

trademark registration, it represented to the United States

Patent and Trademark Office that its app “is not acquired

through impulse or ‘rash’ action”; instead, consumers

must complete the multi-step process of searching the

Apple App Store, selecting the app they are looking for

among competitor apps, and then entering a passcode or

alternative method of authentication to confirm that they

intend to download the app. Again, during this process,

Appendix A

the Apple App Store displays “World Champ Tech” as

the producer of the Bike+ app. Accordingly, a reasonably

prudent consumer would identify the Bike+ app as being

produced by WCT, not Peloton. See Lerner & Rowe PC

v. Brown Engstrand & Shely LLC, 119 F.4th 711, 718

(9th Cir. 2024) (“[R]egular internet users can readily

distinguish domain names associated with the companies

they are searching for from those they are not.” (citation

omitted)).

Importantly, the fourth factor, actual confusion, also

favors Peloton. While WCT has offered an expert survey

finding a net confusion rate of 12%, courts generally treat

rates below 10% as evidence “that confusion is not likely,”

5 McCarthy on Trademarks and Unfair Competition

§ 32:189 (5th ed. May 2025), and rates “between 10% and

20%” as evidence that confusion is likely when “other

evidence is supportive,” id. § 32:188.1 Here, the other

evidence points in the opposite direction. The products

have coexisted in the marketplace for years, and hundreds

of consumers have downloaded WCT’s Bike+ app during

that time. Yet WCT has no evidence that any of them

has experienced any confusion. See Lerner & Rowe, 119

F.4th at 720 (where 109,322 consumers saw the allegedly

infringing ads and 7,452 consumers clicked on them, but

there were only 236 consumer calls indicating confusion,

“[t]he resulting 0.216% confusion rate [was] direct

1. Cf. Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand

Mgmt., Inc., 618 F.3d 1025, 1038 (9th Cir. 2010) (triable issue over

likelihood of confusion based on expert survey finding 11% net

confusion rate and disputes of material fact with respect to each of

the eight factors).

Appendix A

evidence of the likelihood of confusion comparable to, but

more complete than, survey evidence”); Cohn, 281 F.3d

at 842-43.

Collectively, these factors make it such that no

reasonable trier of fact could find that confusion is

probable, so WCT’s claims fail as a matter of law. 2 See

Lodestar, 31 F.4th at 1261.

AFFIRMED.

2. The remaining factors do not add much to the picture. With

respect to the fifth factor, marketing channels, to the extent WCT’s

website or social media posts continue to generate views without

paid promotion, the “shared use of a ubiquitous marketing channel”

such as the internet “does not shed much light on the likelihood of

consumer confusion.” Lerner & Rowe, 119 F.4th at 725 (citation

omitted); see also M2 Software v. Madacy Ent., 421 F.3d 1073,

1083-84 (9th Cir. 2005). The seventh factor, intent, favors WCT

because Peloton was aware of WCT’s registered mark, but WCT’s

limited use of the mark is a “mitigating consideration.” Lodestar, 31

F.4th at 1260; see M2 Software, 421 F.3d at 1085. Finally, the eighth

factor, expansion of product lines, is neutral at best for WCT. See

M2 Software, 421 F.3d at 1085; Surfvivor Media, 406 F.3d at 634;

Cohn, 281 F.3d at 843.

APPENDIX B —Appendix

MEMORANDUM

OF THE

UNITED STATES COURT OF APPEALS FOR

THE NINTH CIRCUIT, FILED JULY 25, 2025

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 24-2266

D.C. No. 3:21-cv-03202-LB

WORLD CHAMP TECH, LLC,

Plaintiff-Appellant,

PELOTON INTERACTIVE, INC.,

Defendant-Appellee.

Appeal from the United States District Court for the

Northern District of California

Laurel D. Beeler, Magistrate Judge, Presiding.

Before: CALLAHAN, BADE, and KOH, Circuit Judges.

MEMORANDUM*

Plaintiff-Appellant World Champ Tech, LLC (“WCT”)

has a trademark registration for “BIKE+” and has

produced a mobile app called “Bike+” since 2014. In

September 2020, Defendant-Appellee Peloton Interactive,

Inc. (“Peloton”) released a new version of its home

* This disposition is not appropriate for publication and is not

precedent except as provided by Ninth Circuit Rule 36-3.

Appendix B

exercise bike called the “Peloton Bike+.” WCT sued for

trademark infringement, claiming that Peloton’s use of the

mark Peloton Bike+ is likely to cause confusion among

consumers as to whether Peloton produces or sponsors

WCT’s Bike+ app. The district court granted summary

judgment to Peloton. WCT timely appealed, and we have

jurisdiction pursuant to 28 U.S.C. § 1291. We review the

district court’s order de novo and the evidence in the

light most favorable to WCT. See Ironhawk Techs., Inc. v.

Dropbox, Inc., 2 F.4th 1150, 1159 (9th Cir. 2021). We affirm.

“The test for likelihood of confusion is whether a

‘reasonably prudent consumer’ in the marketplace is likely

to be confused as to the origin of the good or service bearing

one of the marks.” Dreamwerks Prod. Grp., Inc. v. SKG

Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). In a reverse

confusion case like this one, “[t]he question . . . is whether

consumers doing business with the senior user might

mistakenly believe that they are dealing with the junior

user.” Id. at 1130. The analysis is guided by eight factors:

(1) strength of the mark; (2) proximity of the

goods; (3) similarity of the marks; (4) evidence of

actual confusion; (5) marketing channels used;

(6) type of goods and the degree of care likely to

be exercised by the purchaser; (7) defendant’s

intent in selecting the mark; and (8) likelihood

of expansion of the product lines.

Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228, 1252

(9th Cir. 2022) (quoting Ironhawk Techs., 2 F.4th at 1160).

“These factors are neither exhaustive nor dispositive; it

is the totality of facts in a given case that is dispositive.”

Appendix B

Id. at 1252 (quoting Ironhawk Techs., 2 F.4th at 1160).

Accordingly, even when certain factors weigh in the

plaintiff’s favor, summary judgment is appropriate if those

factors are “overwhelmingly offset” by the remaining

factors such that “no reasonable trier of fact could find

that confusion is probable.” Id. at 1261 (citation modified).

That is the case here. The first two factors—mark

strength and proximity of goods—weigh in WCT’s favor.

For the first factor, regardless of whether WCT’s Bike+

mark is descriptive or suggestive, a jury could find that

Peloton’s Peloton Bike+ mark is so commercially strong

that it could overtake WCT’s mark. See Ironhawk Techs.,

2 F.4th at 1162-63. For the second factor, a jury could find

that the parties’ products are intended for the “same class”

of consumers—those who bike as a form of exercise—and

are “similar in use and function”—offering users the

ability to track metrics while biking. See id. at 1164.

But other factors overwhelmingly favor Peloton.

Consider the third factor, which turns on the similarity of

the marks “as they are encountered in the marketplace.”

Lodestar, 31 F.4th at 1260 (citations omitted). Since WCT

ceased paid advertising in 2019, consumers who encounter

WCT’s mark primarily do so in the Apple App Store. There,

Peloton’s app may appear alongside WCT’s app in search

results, but the two apps bear no similarity in appearance,

especially because the Peloton app does not use the term

“Bike+.” Further, although the use of house marks “can

aggravate reverse confusion” in some cases, this is not one

of them. Ironhawk Techs., 2 F.4th at 1165. The Apple App

Store displays the app producer’s name alongside the app

name and icon, which reduces the potential for any confusion

10a

Appendix B

as to who produces each app. See Cohn v. Petsmart, Inc., 281

F.3d 837, 842 (9th Cir. 2002); see also Lodestar, 31 F.4th at

1260. The mark similarity factor therefore favors Peloton.

Next, consider the sixth factor, which asks “whether

a ‘reasonably prudent consumer’ would take the time to

distinguish between the two product lines.” Ironhawk

Techs., 2 F.4th at 1167 (quoting Surfvivor Media, Inc. v.

Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005)). This

factor similarly favors Peloton. When WCT applied for its

trademark registration, it represented to the United States

Patent and Trademark Office that its app “is not acquired

through impulse or ‘rash’ action”; instead, consumers

must complete the multi-step process of searching the

Apple App Store, selecting the app they are looking for

among competitor apps, and then entering a passcode or

alternative method of authentication to confirm that they

intend to download the app. Again, during this process,

the Apple App Store displays “World Champ Tech” as

the producer of the Bike+ app. Accordingly, a reasonably

prudent consumer would identify the Bike+ app as being

produced by WCT, not Peloton. See Lerner & Rowe PC v.

Brown Engstrand & Shely LLC, 119 F.4th 711, 718 (9th Cir.

2024) (“[R]egular internet users can readily distinguish

domain names associated with the companies they are

searching for from those they are not.” (citation omitted)).

Importantly, the fourth factor, actual confusion, also favors

Peloton. While WCT has offered an expert survey finding a

net confusion rate of 12%, courts generally treat rates below

10% as evidence “that confusion is not likely,” 5 McCarthy

on Trademarks and Unfair Competition § 32:189 (5th ed.

May 2025), and rates “between 10% and 20%” as evidence

11a

Appendix B

that confusion is likely when “other evidence is supportive,”

id. § 32:188.1 Here, the other evidence points in the opposite

direction. The products have coexisted in the marketplace for

years, and hundreds of consumers have downloaded WCT’s

Bike+ app during that time. Yet WCT has no evidence that

any of them has experienced any confusion. See Lerner &

Rowe, 119 F.4th at 720 (where 109,322 consumers saw the

allegedly infringing ads and 7,452 consumers clicked on them,

but there were only 236 consumer calls indicating confusion,

“[t]he resulting 0.216% confusion rate [was] direct evidence of

the likelihood of confusion comparable to, but more complete

than, survey evidence”); Cohn, 281 F.3d at 842-43.

Collectively, these factors make it such that no reasonable

trier of fact could find that confusion is probable, so WCT’s

claims fail as a matter of law.2 See Lodestar, 31 F.4th at 1261.

1. Cf. Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand

Mgmt., Inc., 618 F.3d 1025, 1038 (9th Cir. 2010) (triable issue over

likelihood of confusion based on expert survey finding 11% net

confusion rate and disputes of material fact with respect to each of

the eight factors).

2. The remaining factors do not add much to the picture. With

respect to the fifth factor, marketing channels, to the extent WCT’s

website or social media posts continue to generate views without paid

promotion, the “shared use of a ubiquitous marketing channel” such as

the internet “does not shed much light on the likelihood of consumer

confusion.” Lerner & Rowe, 119 F.4th at 725 (citation omitted); see

also M2 Software v. Madacy Ent., 421 F.3d 1073, 1083-84 (9th Cir.

2005). The seventh factor, intent, favors WCT because Peloton was

aware of WCT’s registered mark, but WCT’s limited use of the mark

is a “mitigating consideration.” Lodestar, 31 F.4th at 1260; see M2

Software, 421 F.3d at 1085. Finally, the eighth factor, expansion of

product lines, is neutral at best for WCT. See M2 Software, 421 F.3d

at 1085; Surfvivor Media, 406 F.3d at 634; Cohn, 281 F.3d at 843.

12a

Appendix B

AFFIRMED.

13a

C THE UNITED

APPENDIX C —Appendix

ORDER OF

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA,

FILED MARCH 26, 2024

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

San Francisco Division

Case No. 21-cv-03202-LB

WORLD CHAMP TECH LLC,

Plaintiff,

PELOTON INTERACTIVE, INC.,

Defendant.

Filed March 26, 2024

ORDER DENYING MOTION FOR

RECONSIDERATION

Re: ECF No. 222

The plaintiff World Champ Tech, which offers a

mobile-fitness app called “Bike+” and owns a trademark

registration for the same name, sued the defendant

Peloton Interactive for trademark infringement and

other claims after the defendant launched a new line of

interactive stationary bicycles under the name “Peloton

14a

Appendix C

Bike+.”1 The court recently granted the defendant’s

motion for summary judgment on the ground that as a

matter of law, there is no likelihood of confusion. 2 The

court thus entered judgment. 3 The plaintiff now moves

for reconsideration of the final judgment under Federal

Rules of Civil Procedure 59(e) and 60(b).4 The court can

decide the matter without 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 Rules 59(e)

(governing motions to alter or amend judgments) and

60(b) (governing motions for relief from a final judgment).

See Balla v. Idaho Bd. of Corr., 869 F.2d 461, 466–67 (9th

Cir. 1989). Reconsideration is appropriate when (1) the

court is presented with newly discovered evidence, (2)

the underlying decision was in clear error or manifestly

unjust, or (3) there is an intervening change in controlling

law. See School Dist. No. 1J, Multnomah Cnty. v. ACandS,

Inc., 5 F.3d 1255, 1263 (9th Cir. 1993). (At issue here is

the second ground. 5) “[A]mending a judgment after its

entry [is] an extraordinary remedy which should be used

sparingly.” Allstate Ins. Co. v. Herron, 634 F.3d 1101, 1111

(9th Cir. 2011) (cleaned up).

1. Compl. – ECF No. 1. Citations refer to material in the

Electronic Case File (ECF); pinpoint citations are to the ECFgenerated page numbers at the top of documents.

2. Order – ECF No. 218.

3. J. – ECF No. 219.

4. Mot. – ECF No. 222.

5. Id. at 5 n.1.

15a

Appendix C

Probably the most important issue is whether

the court was clearly wrong that the Bike+ mark is

descriptive as a matter of law. As the court noted,

courts consider “a mark’s strength by reference to the

goods or services that it identifies[] and as it appears in

the marketplace.” Entrepreneur Media, Inc. v. Smith,

279 F.3d 1135, 1142 (9th Cir. 2002). Also, a descriptive

mark need only “describe some aspect of the [plaintiff’s]

product.” Zobmondo Ent., LLC v. Falls Media, LLC, 602

F.3d 1108, 1116 (9th Cir. 2010). Under the circumstances,

the burden is the defendant’s to overcome a presumption

of distinctiveness and all reasonable inferences must go

in the plaintiff’s favor.6

The plaintiff points out that a “Bike+” mark

could refer to different things: an app for motorcycleperformance data or a video game, for example, as opposed

to the court’s description (“an app for enhancing biking”).

(The plaintiff’s app is primarily for metric tracking during

bicycle rides.) The plaintiff further contends that a plus

sign does not necessarily refer to enhancement and could

instead refer to “addition, computer language, positivity,

[or] alternatives to bikes.” 7

Even if the court were wrong in its exact description

of the Bike+ mark’s meaning, the mark is still descriptive.

At the least, the mark conveys the addition of something

to a bike or biking. (This really is just a restatement of

the court’s previous description, but it helps to illustrate

6. Order – ECF No. 218 at 16–17.

7. Mot. – ECF No. 222 at 8–9.

16a

Appendix C

the point.) As applied to an app, that is the conventional

meaning of this composite mark (and the actual purpose

of the plaintiff’s app). Threshold Enters. v. Pressed

Juicery, Inc., 445 F. Supp. 3d 139, 150 (N.D. Cal. 2020)

(“By examining the dictionary definitions of a mark’s

components, a court can ascertain whether the resulting

mark uses the individual words in a way different from

their common meaning.”). And that meaning “describe[s]

some aspect of the product,” literally and without

requiring imagination. Zobmondo Ent., 602 F.3d at

1115–16 (the imagination test is the “most-used” test and

is the Ninth Circuit’s “primary criterion for evaluating

distinctiveness”) (cleaned up).

Also, the exact function of the app does not need to

be conveyed by the mark for the mark to be descriptive.

In Entrepreneur Media, for example, the ma rk

“Entrepreneur” was descriptive in the context of computer

programs (among other products). 279 F.3d at 1142. What

does a computer program for entrepreneurs do? The mark

didn’t answer that question, but it was still descriptive.

The plaintiff points to Zobmondo and generally

contends that the court did not properly consider the

evidence in the record. Zobmondo does cast some doubt on

the notion of a freestanding conceptual-strength analysis

at summary judgment, but the court does not think that

changes the outcome here.

“With respect to a registered mark,” the defendant’s

burden “is not simply to show that the mark describes

a feature of the trademark holder’s product; rather, it

17a

Appendix C

must show that consumers regard the mark as merely

descriptive of that product.” Zobmondo Ent., 602 F.3d

at 1117. Put another way, “[t]he underlying issue is

the standard of meaning prevalent among prospective

purchasers of the article.” Id. at 1116 n.9 (cleaned up). The

Zobmondo court did hint that some marks are more easily

settled: “some terms may not be susceptible to abstract

‘imagination test’ analysis at summary judgment, and

instead the application of the imagination test will be

informed by expert testimony offered at trial.” Id. But

dictionary definitions are “not determinative,” even if they

are “often persuasive.” Id. at 1116.

All that said, one can find courts appearing to use

a freestanding conventional-word-meaning analysis.

Entrepreneur Media, 279 F.3d at 1142–43 (evaluating

the word “entrepreneur” and then examining evidence

for purposes of the needs test; the needs test only

“confirm[ed]” that the mark was descriptive) (“[W]e need

not belabor the point that some words, phrases or symbols

better convey their intended meanings than others.”);

Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,

150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (“Descriptive

marks define qualities or characteristics of a product in

a straightforward way that requires no exercise of the

imagination to be understood. Thus, ‘Honey Baked Ham’

is a descriptive term for a ham that has been baked with

honey, and ‘Honey Roast’ is a descriptive term for nuts

that have been roasted with honey.”) (cleaned up).

In the end, the court thinks that its descriptiveness

holding is sound. There is evidence in the record, beyond

18a

Appendix C

conventional meanings, to support the holding. For

example, many other companies have used a plus sign

next to another word to convey additional quality, and

such a plus sign’s meaning has been described in mass

media. 8 The court denies the motion for reconsideration

on this ground.

The issue then is what it means for the reverse-confusion

context that the plaintiff’s mark is descriptive. The court

cited authority for the notion that a descriptiveness finding

is very important. Ironhawk Techs., Inc. v. Dropbox,

Inc., 2 F.4th 1150, 1162 (9th Cir. 202 1) (“[T]he question

[on summary judgment in a reverse-confusion case] is

whether a reasonable jury could find that [the] mark is

at least suggestive[.]”); Lodestar Anstalt v. Bacardi &

Co., 31 F.4th 1228, 1260 (9th Cir. 2022) (“Given that the

[plaintiff’s] mark is properly considered distinctive for

purposes of summary judgment, the strength-of-the-mark

factor in this reverse confusion case focuses on whether

the junior mark is so commercially strong as to overtake

the senior mark.”) (cleaned up). These propositions are

key, and they apply regardless of any consideration of the

plaintiff’s mark’s commercial strength.

Beyond that, the court will rest on its summary

judgment order, which addresses the plaintiff’s arguments.

The court denies the motion for reconsideration.

This disposes of ECF No. 222.

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

19a

Appendix C

IT IS SO ORDERED.

Dated: March 26, 2024

/s/

LAUREL BEELER

United States Magistrate Judge

20a

APPENDIX D —Appendix

ORDER D

OF THE UNITED

STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA

FILED FEBRUARY 16, 2024

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

San Francisco Division

Case No. 21-cv-03202-LB

WORLD CHAMP TECH LLC,

Plaintiff,

PELOTON INTERACTIVE, INC.,

Defendant.

Filed February 16, 2024

ORDER GRANTING SUMMARY

JUDGMENT TO THE DEFENDANT

Re: ECF Nos. 134, 135

INTRODUCTION

The plaintiff World Champ Tech, which offers a

mobile-fitness app called “Bike+” and owns a trademark

registration for the same name, sued the defendant

Peloton Interactive for trademark infringement and

21a

Appendix D

other claims after the defendant launched a new line of

interactive stationary bicycles under the name “Peloton

Bike+.” The defendant raised various affirmative defenses

– such as that the plaintiff abandoned its mark by not

updating its app and by showing other signs of inactivity

– and counterclaimed for trademark cancellation due to

abandonment and fraud on the USPTO (in the form of

misrepresentations about the continued operability of

the app). The parties each moved for summary judgment:

the defendant contends that consumers are not likely to

be confused and the plaintiff cannot show damages, and

the plaintiff contends that the defendants’ affirmative

defenses and counterclaims are not viable. The court

grants the defendant’s motion for summary judgment on

the ground that as a matter of law, there is no likelihood

of confusion.

STATEMENT

1. The Plaintiff and its Apps

The plaintiff is a fitness-technology company that

was founded in 2012 by professional cyclist James Mattis

and professional cyclist and Olympic windsurfer Ted

Huang. Mr. Mattis is now the plaintiff’s sole member.

He developed the Bike+ app, which was first released in

February 2014 for the Apple iPhone and Pebble Watch.

The 2014 app was a metric-tracking cycling app that was

designed to “track speed, distance, altitude, and grade.” It

also “allowed users to capture photos or video along a ride,

activate interval timers during a ride, and post details to

Facebook, Twitter, or other services.” Mr. Mattis testified

22a

Appendix D

that the app was “more focused on outdoor activities” but

was always “available for indoor bike riding.” The app

name was displayed as “Bike+” on the iPhone home screen

and as “Bike+ [bike more]” on the Apple App Store, as

follows:

The app was marketed through the Apple App Store,

the plaintiff’s website, social media including Facebook

advertising, and sponsorships and endorsements.1

Mr. Mattis described the 2014 app’s lifecycle. The app,

according to Mr. Mattis, “enjoyed moderate success in the

early years after its release, producing tens of thousands

of downloads and some revenue” in the form of in-app

subscriptions. Then some changes happened: for example,

Mr. Huang left the company in late 2014, the Apple Watch

was released in fall 2014 and achieved commercial success,

and downloads declined after a 2015 peak. By the end of

2016, Mr. Mattis “became convinced the company needed

1. Mattis Decl. – ECF No. 137-3 at 1-4 (¶¶ 1-12); Mattis Dep.

– ECF No. 136-10 at 8 (p. 106:17-22); App Store Preview – ECF

No. 136-9 at 2. Citations refer to material in the Electronic Case

File (ECF); pinpoint citations are to the ECF-generated page

numbers at the top of documents.

23a

Appendix D

an alternative direction.” He then focused on developing

a new app dedicated to the Apple Watch. Facebook

advertising for the 2014 app – which required payment

only “based on impressions or conversions to downloads”

– continued until 2019. The app also remained available

for download, including for Pebble Watch users; even

though the Pebble Watch was discontinued in late 2016,

“there remains a loyal following among the Pebble Watch

community.” But the app was not updated after 2016

because Mr. Mattis considered focusing on the new app

to be the best use of his resources. 2

The defendant also offered evidence about the

plaintiff from this time period. Certain 2014 projections

and comments by the plaintiff differed from what later

happened. 3 At his deposition, Mr. Mattis testified that:

it may have been in 2016 that he last funded Facebook

advertising or created a new Facebook ad; the plaintiff

has removed the 2014 app from its website; the plaintiff

does not have data sufficient to indicate how many bike

rides have been tracked using the app; Mr. Mattis could

not recall opening the 2014 app since 2019 (though he often

works with the latest unreleased build of the app); and Mr.

Mattis doesn’t know from personal use how functional

the 2014 app is (though he receives crash reports from

the Apple App Store). 4 Also, by the end of 2016, the

2. Mattis Decl. – ECF No. 137-3 at 3 (¶ 8), 4-5 (¶¶ 14-15), 6

(¶ 22).

3. Def.’s Opp’n – ECF No. 147-2 at 12 (citing evidence under

seal).

4. Mattis Dep. – ECF No. 148-3 at 21 (p. 192:13-15), 30-32 (pp.

254:9-256:5), 37-38 (pp. 299:15-300:25), 40-42 (pp. 328:3-330:9).

24a

Appendix D

plaintiff had not paid taxes since 2015 and its certificate

of incorporation was therefore suspended.5 (This changed

after the defendant launched its Bike+ product in 2020,

as discussed below.)

Mr. Mattis continued developing a new version

of the Bike+ app from 2017 until 2020, writing “over

2.4 million lines of code,” or about 1,500 lines per day.

Apple announced new machine-learning tools in June

2017 and he sought to use them to create an “on-device

coaching system” featuring “fatigue detection.” He

“spent substantial amounts of time coding and testing

this innovation and applying for a patent . . . that has

been since implemented in the Bike+ app.” He started

collecting real-world test data in August 2018. Around

June 2019, he was nearing completion of a new app, but

Apple announced a new Apple Watch operating system

that enabled apps to run independently of a companion

iPhone. This required a change in development for Mr.

Mattis. He again neared completion by late 2019, but in

early 2020 Apple released “StoreKit for Watch apps,”

which “would at least theoretically permit World Champ

Tech to alter its distribution model to provide for an in

app coaching feature for which subscription fees could be

charged.” Mr. Mattis began incorporating StoreKit and

then “the COVID pandemic struck, impacting development

productivity.” He made certain other source-code edits in

February 2020. As he prepared for final testing in midJuly 2020, Apple released a new operating system that

introduced a bug; on September 2, 2020, he reported this

5. Mattis Dep. – ECF No. 136-10 at 31 (p. 462:1-14).

25a

Appendix D

bug to Apple. Another operating-system release occurred

in November 2020, and after an inquiry from Mr. Mattis,

Apple confirmed on December 3, 2020 that the bug was

fixed. Mr. Mattis completed final testing and submitted

the new Bike+ app to Apple for review on December 21,

2020. The new app then launched in January 2021.6

Aside from developing the new app, Mr. Mattis

declares that the plaintiff engaged in other commercial

activities during the period from 2016 to 2020. This

included (1) “[w]ebsite promotion of the app,” (2) Facebook

accounts and advertising campaigns until 2019, (3)

“agreement to the Apple Developer Program License

Agreement and payment of the required, annual $99

developer license fee,” (4) agreement to “the Apple Paid

Applications Agreement, which allowed [the plaintiff] to

include paid features in [its] apps” and entailed periodic

pricing updates (for example, due to changes in currencyexchange rates), (5) “[c]ompliance with the requirements

for export under U.S. Department of Commerce policy for

software using encryption,” (6) membership in “the Apple

App Store Small Business Program,” under which “Apple

provides marketing support to small developers, including

presentation of apps in responses to Internet search

engines,” and (7) “[p]ayment of a $450 monthly service

fee . . . for the Heroku cloud data service that supports

and maintains key functions of the 2014 Bike+ app.” 7

Some of this activity “occurred in support of international

41).

6. Mattis Decl. – ECF No. 137-3 at 5-8 (¶¶ 16-29), 13 (¶¶ 407. Id. at 10-12 (¶ 37).

26a

Appendix D

downloads and sales,” but “[d]omestic downloads and sales

of the Bike+ app continued throughout this time.”8

Like the 2014 app, the 2021 app is for metric tracking

while cycling.9 Unlike the 2014 app, the 2021 app does not

include “[bike more]” in its name, leaving only “Bike+,”

and the app logo says “Bike” rather than “b+.” The 2021

app appears as follows in the Apple App Store:10

The 2021 app “shares significant code” with the 2014 app

and “contains substantial code that descends from or

extends the code of” of the 2014 app.11 Mr. Mattis testified

that the 2021 app is functional for both indoor and outdoor

bike rides.12 It also has subscription coaching features.13

8. Id. at 12 (¶ 38).

9. App Store Preview – ECF No. 136-34 at 3.

10. Id. at 2.

11. Pl.’s 1st Am. Resp. to Def.’s 1st Set of Interrogs. – ECF

No. 136-19 at 19-20 (Interrog. 6).

12. Mattis Dep. – ECF No. 153-10 at 7-8 (pp. 560:22-562:5).

13. App Store Preview – ECF No. 136-34 at 3.

27a

Appendix D

But Mr. Mattis is “not positive” that the coaching features

have ever worked since the 2021 app’s launch. He “believed

following the completion of testing that it would work.”14

The 2021 app was last updated in January 2022.15

Mr. Mattis is not aware of any in-app sales since the

2021 app’s launch. He has posted about the app on social

media but he has not encouraged others to post about it

on social media.16 He did not have a written business or

marketing plan before launching the app, and he did not

create investor presentations, solicit investors, or raise

capital.17 He testified that with respect to marketing of

the 2021 app, the plaintiff paid for one press release,

sometime after the app’s “soft launch.”18 He declares

that “[c]onsistent with downscaling of expectations for

the app” due to the defendant’s alleged infringement,

he has, “at a modest pace, posted regularly about [the

plaintiff’s] philosophy[] and the underlying technology

and capabilities of the apps” on the plaintiff’s website and

on social media. “The Bike+ app regularly is featured in

these comments.”19

14. Mattis Dep. – ECF No. 136-10 at 35 (pp. 545:18-546:17).

at 5.

15. App Store Preview, Version History – ECF No. 136-34

16. Mattis Dep. – ECF No. 136-10 at 36 (pp. 563:12-564:8).

17. Id. at 32 (pp. 534:22-535:25).

18. Id. at 3 (pp. 51:24-52:22).

19. Mattis Decl. – ECF No. 137-3 at 16-17 (¶ 54).

28a

Appendix D

Mr. Mattis declares the total numbers, going back to

the Bike+ app’s launch in 2014 and broken down by year,

of app downloads, subscribers, search impressions, Apple

App Store page views, and app “sessions” (instances of

users’ opening the app after downloading it). 20

2. The Plaintiff’s Trademark

The plaintiff obtained a trademark registration for the

Bike+ mark. It filed an intent-to-use application with the

USPTO on November 23, 2013. It filed the statement of use

in April 2014 and the mark was registered on July 28, 2015,

with registration number 4,782,695. 21 The registration is

for the following goods: “Downloadable mobile applications

for recording and managing cycling activities, namely,

the rider’s average and maximum speed, rider’s average

and maximum power, heart rate, geographic route taken,

outside air temperature, altercations with aggressive

drivers, rider-entered route conditions, taking photos

and uploading the same to an external computer server

for personal review and viewing by others.” 22

After the plaintiff filed its trademark application,

the USPTO cited a third party’s prior filing for a

“BIKEMORE” mark for bicycles. The plaintiff responded

in March 2014, contending that its mark was not likely to

cause consumer confusion. It distinguished between its

20. Id. at 14-15 (¶¶ 46-49) (under seal).

21. Id. at 8 (¶ 31).

22. Bike+ Trademark – ECF No. 136-13 at 2.

29a

Appendix D

software and the prior applicant’s bicycles, pointing out

that “[b]icycles are physical objects.” The plaintiff also

argued that because consumers who download an app first

go through a selection process that takes several minutes,

they are not likely to be confused. 23

3. The Defendant and its Bike+ Product Launch

The defendant, which was founded in 2012, is a homefitness company that “bring[s] studio-style workouts into

the home.” Its first product was “an indoor stationary

bike that replicates an in-studio experience.” That bike

was launched in 2013 and, among other features, has a

“high-definition touchscreen with built-in stereo speakers

to stream live and on-demand classes.” 24

The defendant now has about seven million members.

Its “core brand” is the name Peloton. It conducted a survey

finding that about 80% of the “general consuming public”

have seen or heard of the Peloton brand. The defendant’s

products all feature that name. For example, the “Peloton

Row” is a “connected-fitness rowing machine.” The

defendant also operates “more than [ninety] . . . brick-andmortar retail showrooms throughout the United States.”25

Over the years, the defendant has released new

products. In 2018, it launched the Peloton App, a mobile

23. Resp. to Off. Action – ECF No. 136-14 at 5-12.

24. Cortese Decl. – ECF No. 135-2 at 2 (¶¶ 2-4).

25. Id. at 3 (¶¶ 5-7); Horet Report – ECF No. 138-5 at 10.

30a

Appendix D

app for members to do such things as stream Peloton’s

classes, track outdoor workouts, and sign up for classes. 26

The app enables Peloton subscribers to track metrics when

working out, separately from any Peloton class, including

when cycling. 27

On September 8, 2020, the defendant announced that

it would offer a “second, higher-end version” of its (indoor)

connected bike and treadmill products. This was a “better/

best” product strategy consisting of “two models: one a

high-quality option and the other a premium, higherpriced option offering additional features.” The premium

models were given a plus sign in their name: “Peloton

Bike+” and “Peloton Tread+.” The Peloton Bike+ “offers

features not found on the original bike, including a larger,

rotating screen” and “a resistance knob that automatically

adjusts to the instructor’s recommendations.” It also

offers integration with Apple Watches for metric tracking.

Marketing expenditures for the product launch were

substantial. The Peloton Bike+ costs up to $1,050 more

than the original bike. 28

The defendant “chose to append a ‘+’ to ‘Bike’

because it is a simple term that consumers understand

26. Cortese Decl. – ECF No. 135-2 at 3 (¶ 5).

27. Dillon-Curran Dep. – ECF No. 137-35 at 4 (pp. 194:15195:5).

28. Cortese Decl. – ECF No. 135-2 at 3-4 (¶¶ 8-12); Feature

Comparison – ECF No. 137-49 at 3-4; Brennan Dep. – ECF No.

137-44 at 5 (pp. 120:24-121:20) (providing an estimated minimum

amount of marketing expenditures) (under seal).

31a

Appendix D

to signify a product line extension with added features.

Numerous leading brands, such as Apple (Apple TV+)

and Disney (Disney+), had already adopted ‘+’ for their

line expansions.” Thus, the plus sign “can easily be

implemented across product lines to indicate a ‘better/

best’ product array.” 29

“All of Peloton’s marketing materials that mention the

term ‘Bike+’ are also branded with the [Peloton] mark.”

The defendant describes the Peloton mark as “distinctive”

and as “typically” being “emphasize[d]” when its premium

model’s name is displayed. This is how the full name is

“often” displayed:30

The defendant “is unaware of any instances of

consumers confusing or making any connection between

[the plaintiff] and [the defendant].” The defendant “has no

plans to use the term ‘Bike+’” other than with its “Peloton

Bike+” model. 31

Tom Cortese, the defendant’s co-founder and Chief

Product Officer, did not learn of the plaintiff and its

mobile applications until after the filing of this case.

29. Cortese Decl. – ECF No. 135-2 at 4-5 (¶¶ 14-16).

30. Id. at 6 (¶¶ 22-23).

31. Id. at 5 (¶¶ 19-20).

32a

Appendix D

His understanding is that “the other members of the

marketing team and executive team that were involved in

conceiving and adopting the naming convention were also

unaware of [the plaintiff] and its mobile applications prior

to the filing of this lawsuit.” Members of the defendant’s

in-house legal team “became aware of [the plaintiff] and

its trademark registration for a mobile cycling app during

the clearance process.” 32 Specifically, Peloton in-house

counsel learned of the trademark in October 2019 and

then communicated with outside counsel, who provided

an opinion on the subject in November 2019. 33

4. The Plaintiff’s Actions After the Defendant’s Bike+

Product Launch

The plaintiff first discovered Peloton’s Bike+ product

when it was released in September 2020. 34 The following

occurred after that discovery.

As already described, the plaintiff’s 2021 app (which

was already in development for a while) launched after

that time: “[o]n December 3, 2020, [the plaintiff] received

notice from Apple” that a bug reported by the plaintiff

on September 2, 2020 had been fixed. “This bug had

prevented the submission and lunch, prior to September 2,

2020, of the new . . . mobile applications that [the plaintiff]

32. Id. at 5 (¶ 18).

33. Dillon-Curran Dep. – ECF No. 137-38 at 4 (pp. 184:16185:25).

34. Mattis Decl. – ECF No. 137-3 at 15 (¶ 50).

33a

Appendix D

later launched.” The plaintiff submitted the new app to

Apple on December 21, 2020. 35

On December 1, 2020, the plaintiff renewed its

trademark registration and filed a declaration of

incontestability. The renewal included an air-temperaturemeasurement feature even though at that time, it was

“highly likely, perhaps certain, that the temperature

feature did not work.” Mr. Mattis declares that the reason

it did not work was because it “depended on a feed from

Weather Underground” that was no longer operational,

and that he “cannot remember whether [he] knew at

the time [he] renewed the registration that Weather

Underground was no longer supporting the feed.” 36

In March 2021, the plaintiff produced new videos “for

use in marketing and customer support in connection

with” its 2021 app. In April 2021, it “took steps to design

and develop a new website for use at the domain name

worldchamptech.com, prepare content for such website

(including writing blog posts that were later posted to the

website on May 3 and 4, 2021), and transfer it to a new

hosting service.” 37

As of September 2020, the plaintiff’s LLC status was

suspended due to its failure to pay taxes since 2015. 38

35. Pl.’s 1st Am. Resp. to Def.’s 1st Set of Interrogs. – ECF

No. 136-19 at 6 (Interrog. 3).

36. Mattis Decl. – ECF No. 137-3 at 10 (¶ 36).

37. Pl.’s 1st Am. Resp. to Def.’s 1st Set of Interrogs. – ECF

No. 136-19 at 7 (Interrog. 3).

38. Mattis Dep. – ECF No. 136-10 at 31 (p. 462:1-14).

34a

Appendix D

“From February 2021 through April 2021, [the plaintiff]

took steps to correct” this tax-filing “oversight.” 39

The parties’ pre-lawsuit contact began on December

2, 2020: the plaintiff’s lawyer “wrote to raise its rights

with [the defendant] and invite a discussion.” The parties

held discussions on January 4, 2021, and the defendant

solicited further discussions later that month, but the

plaintiff elected not to respond substantively. Mr. Mattis

“took stock of the resources that would be necessary and

then helped counsel investigate the claims and prepare

a complaint.” On April 30, 2021, the plaintiff filed the

complaint.40

Mr. Mattis declares that the plaintiff “filed suit as soon

as [he] felt it was reasonably practical.” “Just before filing

suit, to help decide whether to sue, [Mr. Mattis] created

an analysis . . . based on [his] own lay understanding

of the rules.” He sent this analysis to his girlfriend “to

check [his] assumptions,” and he “was not intending to

indicate that [he] expected [the plaintiff] to recover huge

sums of money.” He was not “acting opportunistically to

take advantage of [the defendant’s] decision to infringe.”

Overall, the plaintiff’s actions were allegedly consistent

with plans “to sell apps under a [Bike+] trademark.”41

39. Pl.’s 1st Am. Resp. to Def.’s 1st Set of Interrogs. – ECF

No. 136-19 at 7 (Interrog. 3).

40. Mattis Decl. – ECF No. 137-3 at 15-16 (¶¶ 50-51).

41. Id. at 16 (¶ 53).

35a

Appendix D

5. Procedural History

The complaint has six claims: (1) federal trademark

infringement, 15 U.S.C. § 1114; (2) federal unfair

competition, 15 U.S.C. § 1125(a); (3) California unfair

competition, Cal. Bus. & Prof. Code § 17200; (4) California

false advertising, Cal. Bus. & Prof. Code § 17500; (5)

common-law trademark infringement; and (6) common-law

unfair competition. All claims are based on the defendant’s

alleged “willful and unauthorized use of [the plaintiff]’s

trademark.”42 The parties stipulated that the plaintiff’s

claims are limited to “the theory that [the defendant]’s

conduct is likely to cause reverse confusion, not forward

confusion.”43

The court has federal-question jurisdiction. 28 U.S.C.

§§ 1331, 1338. All parties consented to magistrate-judge

jurisdiction.44 Id. § 636(c). The court held a hearing on

May 25, 2023.

STANDARD OF REVIEW

The court must grant summary judgment where

there is no genuine dispute as to any material fact and

the moving party is entitled to judgment as a matter of

law. Fed. R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 247-48 (1986). Material facts are those that

42. Compl. – ECF No. 1 at 1 (¶ 1), 12-20 (¶¶ 70-113).

43. Joint Case-Mgmt. Statement – ECF No. 130 at 2.

44. Joint Consent – ECF No. 102.

36a

Appendix D

may affect the outcome of the case. Anderson, 477 U.S. at

248. A dispute about a material fact is genuine if there is

sufficient evidence for a reasonable jury to return a verdict

for the nonmoving party. Id. at 248-49.

The party moving for summary judgment has the

initial burden of informing the court of the basis for

the motion and identifying portions of the pleadings,

depositions, answers to interrogatories, admissions, or

affidavits that demonstrate the absence of a triable issue

of material fact. Celotex Corp. v. Catrett, 477 U.S. 317,

322-23 (1986). To meet its burden, “the moving party

must either produce evidence negating an essential

element of the nonmoving party’s claim or defense or

show that the nonmoving party does not have enough

evidence of an essential element to carry its ultimate

burden of persuasion at trial.” Nissan Fire & Marine Ins.

Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000); see

Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001)

(“When the nonmoving party has the burden of proof at

trial, the moving party need only point out ‘that there is

an absence of evidence to support the nonmoving party’s

case.’”) (quoting Celotex, 477 U.S. at 325). “Where the

moving party will have the burden of proof on an issue

at trial, the movant must affirmatively demonstrate that

no reasonable trier of fact could find other than for the

moving party.” Soremekun v. Thrifty Payless, Inc., 509

F.3d 978, 984 (9th Cir. 2007).

If the moving party meets its initial burden, then the

burden shifts to the nonmoving party to produce evidence

supporting its claims or defenses. Nissan Fire & Marine

37a

Appendix D

Ins. Co., 210 F.3d at 1103. “Once the moving party carries

its initial burden, the adverse party may not rest upon

the mere allegations or denials of the adverse party’s

pleading, but must provide affidavits or other sources of

evidence that set forth specific facts showing that there

is a genuine issue for trial.” Devereaux, 263 F.3d at 1076

(cleaned up). If the non-moving party does not produce

evidence to show a genuine issue of material fact, then the

moving party is entitled to summary judgment. Celotex,

477 U.S. at 322-23.

In ruling on a motion for summary judgment, the

court does not make credibility determinations or weigh

conflicting evidence. Instead, it views the evidence in the

light most favorable to the non-moving party and draws

all factual inferences in the non-moving party’s favor. E.g.,

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475

U.S. 574, 587-88 (1986); Ting v. United States, 927 F.2d

1504, 1509 (9th Cir. 1991).

ANALYSIS

The defendant moved for summary judgment on

the ground that consumers are not likely to be confused

about the source of the plaintiff’s app.45 That argument, if

correct, would resolve all of the plaintiff’s claims because

they all turn on the same likelihood-of-confusion analysis.

M2 Software, Inc. v. M2 Commc’ns, L.L.C., 281 F. Supp.

2d 1166, 1169 (C.D. Cal. 2003). The court grants summary

judgment on this ground.

45. Def.’s Mot. – ECF No. 135.

38a

Appendix D

1. Legal Standard

The United States Trademark Act (Lanham Act)

prohibits the unauthorized use in commerce of “any

reproduction, counterfeit, copy, or colorable imitation

of a registered mark” where such use is likely to cause

confusion, to cause mistake, or to deceive. 15 U.S.C.

§ 1114(1)(a). To prevail on a claim for relief, a plaintiff must

prove “(1) that it has a protectible ownership interest in

the mark; and (2) that the defendant’s use of the mark is

likely to cause consumer confusion, thereby infringing

upon the [plaintiff’s] rights to the mark.” Dep’t of Parks

& Recreation for Cal. v. Bazaar Del Mundo Inc., 448 F.3d

1118, 1124 (9th Cir. 2006); M2 Software, Inc. v. Madacy

Ent., 421 F.3d 1073, 1085 (9th Cir. 2005) (the plaintiff

“must show sufficient evidence to permit a rational trier

of fact to find that confusion is probable, not merely

possible”) (cleaned up).

Courts consider eight factors to determine the

likelihood of confusion:

(1) [S]trength of the mark; (2) proximity of the

goods; (3) similarity of the marks; (4) evidence of

actual confusion; (5) marketing channels used;

(6) type of goods and the degree of care likely to

be exercised by the purchaser; (7) defendant’s

intent in selecting the mark; and (8) likelihood

of expansion of the product lines.

Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir.

2008). The factors are pliant, and the Ninth Circuit has

39a

Appendix D

warned against “excessive rigidity” in their application.

Id. at 632-33. Instead, “[t]he test is a fluid one and the

plaintiff need not satisfy every factor, provided that

strong showings are made with respect to some of them.”

Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d

625, 631 (9th Cir. 2005). Indeed, “[n]either intent nor

actual confusion is necessary to establish a likelihood of

confusion.” Chanel, Inc. v. Dudum, No. C-12-01966 JCS,

2012 WL 5833562, at *4 (N.D. Cal. Oct. 29, 2012), R. &

R. adopted, No. C 12-1966 CRB, 2012 WL 5835694 (N.D.

Cal. Nov. 15, 2012). That said, “some factors – such as the

similarity of the marks and whether the two companies are

direct competitors – will always be important.” Brookfield

Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1054

(9th Cir. 1999).

This is a reverse-confusion case where “consumers

dealing with a senior trademark-holder” (the party

that first used the mark, which here is the plaintiff) are

allegedly confused because they believe “that they are

doing business with a junior user” (here, the defendant).

M2 Software, 421 F.3d at 1079; Ironhawk Techs., Inc.

v. Dropbox, Inc., 2 F.4th 1150, 1159-60 (9th Cir. 2021)

(describing reverse confusion in more detail). That is,

“reverse confusion occurs when a person who knows only

of the well-known junior user comes into contact with the

lesser-known senior user, and because of the similarity of

the marks, mistakenly thinks that the senior user is the

same as or is affiliated with the junior user.” Ironhawk

Techs., 2 F.4th at 1160. These cases change the likelihoodof-confusion analysis for certain factors, as explained in

more detail below.

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“Because of the ‘intensely factual nature of trademark

disputes,’ summary judgment is generally disfavored

in trademark cases and should be granted ‘sparingly.’”

Monster, Inc. v. Dolby Lab’ys Licensing Corp., 920

F. Supp. 2d 1066, 1070-71 (N.D. Cal. 2013) (quoting

Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190,

1202, 1210 (9th Cir. 2012)). “[C]areful assessment of the

pertinent factors that go into determining likelihood of

confusion usually requires a full record.” Rearden LLC,

683 F.3d at 1210 (cleaned up). Still, summary judgment

is appropriate when “[t]he distribution of the Sleekcraft

factors does not raise a material issue of fact regarding

likelihood of confusion.” Surfvivor, 406 F.3d at 634.

2. Application

The court first addresses a threshold issue, which is

the defendant’s argument that the plaintiff’s 2014 and 2021

apps are distinct and the latter is not relevant because it

was not a bona fide commercial use of the plaintiff’s mark.46

“[A] senior user’s post-infringement use of the mark

on additional products” should sometimes be excluded

from likelihood-of-confusion analysis. Lodestar Anstalt

v. Bacardi & Co., 31 F.4th 1228, 1252-53 (9th Cir. 2022).

Specifically, “the Lanham Act generally limits enforceable

trademark rights to bona fide uses that reflect genuine

commercial endeavors rather than merely efforts to retain

rights in a mark.” Id. at 1254 (cleaned up) (citing 15 U.S.C.

§ 1127). Thus, “the statute requires commercial use of the

46. Def.’s Mot. – ECF No. 135 at 29-32.

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type common to the particular industry in question” –

use that is “for genuine commercial reasons” and is not a

“‘token’ or other insubstantial use[].” Id. at 1255 (cleaned

up). But “[a] single sale, or non-sales activities alone, may

suffice to merit trademark protection upon review of the

totality of the circumstances.” Soc. Techs. LLC v. Apple

Inc., 4 F.4th 811, 821 n.11 (9th Cir. 2021).

Here, the plaintiff’s 2021 app was in continuous (if

slow paced) development before and after the launch of

the Peloton Bike+. Also, the “2021 app” was in a sense

an update to the plaintiff’s existing use in commerce (its

2014 Bike+ app). This is unlike cases where a product

launch was merely a reaction to an allegedly infringing

product launch, for the purpose of reserving trademark

rights. Compare Lodestar, 31 F.4th at 1255 (the plaintiff

had decided to suspend a rum project but then reactivated

it after the defendant’s allegedly infringing product

campaign began; after an initial sale, only sixteen

sample bottles were delivered over the next five years;

“a reasonable jury . . . could conclude” that the project

was a bona fide use), with Soc. Techs., 4 F.4th at 819-22

(the plaintiff’s app was not a bona fide use because after

filing its trademark application, the plaintiff did not even

develop code for its “Memoji” app until Apple released a

similar app, at which point the plaintiff “rushed to develop

the code for and release its [app]”). It is true that the 2021

iteration of the plaintiff’s app has arguably been less than

robust: for example, there have been no in-app sales,

the app’s distinguishing “coaching” feature may not be

functional, marketing has been limited, and the app was

last updated in January 2022. But viewing the evidence

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in the light most favorable to the plaintiff, and especially

in light of Lodestar, there is a genuine dispute that the

2021 app is a bona fide commercial use.

The issue then is whether, considering both the

2014 and 2021 apps, the Sleekcraft analysis entitles the

defendant to summary judgment on the plaintiff’s claims

for liability. With the knowledge that “this inquiry [is]

exhausting,” Ironhawk Techs., 2 F.4th at 1161, the court

begins at the beginning.

The strength of the mark is an important factor. A

party that chooses “a common, useful, and descriptive

term as a trademark” will not get “the same broad scope

of protection that may be accorded to more distinctive and

arbitrary marks.” Redken Lab’ys, Inc. v. Clairol, Inc.,

501 F.2d 1403, 1405 (9th Cir. 1974). “This ‘strength’ of the

trademark is evaluated in terms of its conceptual strength

and commercial strength.” GoTo.com, Inc. v. Walt Disney

Co., 202 F.3d 1199, 1207 (9th Cir. 2000). In reverseconfusion cases, the court compares the conceptual

strength of the plaintiff’s mark to the commercial strength

of the defendant’s mark. Ironhawk Techs., 2 F.4th at 1162.

“[T]he important question . . . is whether the [defendant’s]

junior mark is so [commercially] strong as to overtake the

senior mark.” Id. (cleaned up). Thus, a reverse-confusion

plaintiff “with a commercially weak mark is more likely

to prevail than a plaintiff with a stronger mark, and this

is particularly true when the plaintiff’s weaker mark is

pitted against a defendant with a far stronger mark.” Id.

at 1162-63 (cleaned up).

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With respect to conceptual streng th, “[f ]rom

weakest to strongest, marks are categorized as generic,

descriptive, suggestive, and arbitrary or fanciful.” GoTo.

com, 202 F.3d at 1207. Parties often dispute “how marks

in the middle, not so plainly descriptive, nor so plainly

distinctive, should be categorized.” Ironhawk Techs., 2

F.4th at 1162. Suggestive marks “suggest a product’s

features and require consumers to exercise some

imagination to associate the suggestive mark with the

product.” JL Beverage Co. v. Jim Beam Brands Co., 828

F.3d 1098, 1107 (9th Cir. 2016). Descriptive marks “define

a particular characteristic of the product in a way that

does not require any imagination.” Id. “[T]he question [on

summary judgment] is whether a reasonable jury could

find that [the] mark is at least suggestive[.]” Ironhawk

Techs., 2 F.4th at 1162. But “the line between descriptive

and suggestive marks is elusive” and “is a question of

fact.” Id. (cleaned up).

Commercial strength, on the other hand, “is based

on actual marketplace recognition.” JL Beverage, 828

F.3d at 1107 (cleaned up). This can be shown “by such

factors as extensive advertising, length of exclusive use,

public recognition and uniqueness.” Accuride Int’l, Inc. v.

Accuride Corp., 871 F.2d 1531, 1536 (9th Cir. 1989).

The first question is whether the plaintiff’s Bike+

mark is suggestive rather than descriptive. In this

analysis, it matters that the plaintiff has a federal

trademark registration. The parties do not dispute that

the mark was registered without proof of secondary

meaning, which is an “acquired distinctiveness” that is

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required for a descriptive mark to become protectable.

Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d

1108, 1113 (9th Cir. 2010). When a mark is registered

without proof of secondary meaning, the mark holder is

“entitled to a presumption that the mark is inherently

distinctive – i.e., suggestive – and the burden shift[s]

to [the defendant] to show that the mark is ‘merely

descriptive’ by a preponderance of the evidence.” Id. at

1115. If the defendant can do so “through law, undisputed

facts, or a combination thereof,” the plaintiff “cannot

survive summary judgment.” Id. But this is a “heavy”

burden for the defendant and because the defendant is the

moving party, the plaintiff “gets the benefit of reasonable

inferences.” Id.

This is the rare case where the court can decide as a

matter of law that the plaintiff’s mark is descriptive. No

imagination is needed to understand from the “Bike+”

mark and its context in the marketplace that the plaintiff’s

product is an app for enhancing biking. Entrepreneur

Media, Inc. v. Smith, 279 F.3d 1135, 1142 (9th Cir. 2002)

(“Whether a mark suggests or describes the goods or

services of the trademark holder depends . . . upon what

those goods or services are. We therefore adjudge a

mark’s strength by reference to the goods or services

that it identifies[] and as it appears in the marketplace.”)

(cleaned up); Zobmondo Ent., 602 F.3d at 1116 (“Our prior

precedent makes it clear that merely descriptive marks

need not describe the ‘essential nature’ of a product;

it is enough that the mark describe some aspect of the

product.”). In Entrepreneur Media, for example, the

court held that the mark “Entrepreneur,” as applied to

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the plaintiff’s magazines and computer programs and

manuals, was descriptive. 279 F.3d at 1142 (summaryjudgment stage); see also Plus Prods. v. Plus Disc. Foods,

Inc., 722 F.2d 999, 1006 (2d Cir. 1983) (“The term Plus is an

everyday word that indicates something added, and when

applied to goods, it merely implies additional quantity or

quality.”). “Bike+” is likewise descriptive.

The plaintiff’s mark is further weakened by the

presence of similar marks for similar apps in the major app

stores. Lodestar, 31 F.4th at 1259 n.11 (“[e]vidence of thirdparty use of a similar mark is relevant to the strength of

the mark,” including “for the . . . purpose of showing that

the [plaintiff’s mark] has been repeatedly associated with

[similar] products”). The defendant submitted evidence of

nine other apps in the Apple App Store and the Google

Play Store using variants of “Plus” or “+” along with

“Bike.”47 The plaintiff responds that it “challenged several

of these and the use, if any, stopped,”48 but that does not

account for all of them and the fact remains that “the

[plaintiff’s mark] has been repeatedly associated with

[similar] products.” Id.

On the mark-strength factor, though, “[w]hether [the

senior mark is] descriptive or suggestive, the important

question in a reverse confusion case is whether the junior

mark is so commercially strong as to overtake the senior

mark.” Ironhawk Techs., 2 F.4th at 1162 (cleaned up). In

47. Hoyer Report – ECF No. 136-44 at 14 (¶ 44); Google Play

Store Page – ECF No. 162-4 at 3.

48. Pl.’s Opp’n – ECF No. 149 at 28 & n.4.

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Appendix D

Ironhawk Techs., the plaintiff’s mark was conceptually

weak but the court held that given the evidence of the

junior mark’s commercial strength, the overall markstrength issue was for the jury to decide. Id. at 1163.

Nonetheless, the parties dispute whether the plaintiff’s

mark’s reputation or “commercial strength” might matter

for the mark-strength factor in a reverse-confusion case.

(Recall that under Ninth Circuit precedent, in reverseconfusion cases the court compares the conceptual

strength of the plaintiff’s mark to the commercial strength

of the defendant’s mark.) The defendant relies on Aliign

Activation Wear, LLC v. lululemon athletica Canada

Inc. for the proposition that the senior mark must have

more than de minimis goodwill, i.e., it must have some

commercial strength for the junior mark to overtake.49

No. 220CV03339SVWJEM, 2021 WL 3117239, at *11

(C.D. Cal. June 7, 2021) (“[T]o survive summary judgment

on a reverse confusion claim, [the plaintiff] must raise a

genuine issue of material fact that an appreciable number

of consumers believe they are purchasing [the defendant’s]

products when they are, in fact, purchasing [the plaintiff’s]

products.”) (citing Surfvivor Media, 406 F.3d at 630), aff’d,

No. 21-55775, 2022 WL 3210698 (9th Cir. Aug. 9, 2022). In

Aliign, the court noted that “hardly anyone” purchased

the plaintiff’s yoga clothing: the plaintiff had sold seven

items “from 2015 onwards.” Id. The court thus held that

“no reasonable juror could find an appreciable number of

consumers are likely to be confused and believe they are

buying lululemon.” Id.

49. Def.’s Mot. – ECF No. 135 at 24-25.

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In its unpublished decision affirming Aliign, the Ninth

Circuit did not address the mark-strength factor or the

district court’s “appreciable number” reasoning. 2022 WL

3210698, at *1-2. Aside from the Aliign district court’s

decision, it is possible to find some other support for the

notion that the plaintiff’s junior mark must have some

degree of commercial strength for there to be reverse

confusion. See Dreamwerks Prod. Grp., Inc. v. SKG Studio,

142 F.3d 1127, 1129 (9th Cir. 1998) (“Dreamwerks notes

that whatever goodwill it has built now rests in the hands

of DreamWorks; if the latter should take a major misstep

and tarnish its reputation with the public, Dreamwerks

too would be pulled down.”); Ironhawk Techs., 2 F.4th at

1160 (describing the senior user in a reverse-confusion

case as known to some degree and stating that reverse

confusion occurs when a consumer “mistakenly thinks

that the senior user is the same as or is affiliated with the

junior user”); A & H Sportswear, Inc. v. Victoria’s Secret

Stores, Inc., 237 F.3d 198, 228 (3d Cir. 2000) (“The chief

danger inherent in recognizing reverse confusion claims

is that innovative junior users, who have invested heavily

in promoting a particular mark, will suddenly find their

use of the mark blocked by plaintiffs who have not invested

in, or promoted, their own marks.”).

Certainly, it is important that the Ninth Circuit’s

reverse-confusion test compares the senior mark’s

conceptual strength to the junior mark’s commercial

strength. Ironhawk Techs., 2 F.4th at 1162-63. And here,

the defendant’s mark’s commercial strength is significant

compared to the plaintiff’s mark’s conceptual strength.

What about when the plaintiff’s mark is descriptive,

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though? Id. at 1162 (“On summary judgment . . . the

question is whether a reasonable jury could find that

[the plaintiff’s] mark is at least suggestive.”). Or when

the plaintiff’s mark is both descriptive and commercially

weak? The Ninth Circuit has assumed that the plaintiff’s

mark’s commercial strength must meet some minimum

bar. Id. at 1163 (“[W]e assess the commercial strength of

[the defendant’s] mark and ask whether it is able to swamp

the reputation of [the plaintiff’s mark] with a much larger

advertising campaign.”).

To the extent the plaintiff’s mark’s commercial

strength is relevant, there was not much of it for the

defendant’s mark to overtake in this case. The current

version of the plaintiff’s app (discussed above as the “2021

app”) was under development for a very long time before

the defendant’s product launch (with an associated lack

of development or promotion of the 2014 app), was last

updated in January 2022, has achieved no in-app sales,

showed declining (and insubstantial) subscriber numbers,

has been marketed minimally, and has a key feature that

may not be functional. Under these circumstances – where

besides being commercially weak, the plaintiff’s mark is

(as a matter of law) descriptive – the mark-strength factor

favors the defendant. The court revisits this issue in its

recap of the Sleekcraft factors below, though.

The next factor (which is also an important one)

is whether the parties are direct competitors or, put

another way, “the relatedness of the products and services

offered.” Brookfield Commc’ns, 174 F.3d at 1055. “Related

goods are generally more likely than unrelated goods to

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Appendix D

confuse the public as to the producers of the goods.” Id.

In this “competitive proximity” analysis, the court asks

whether “the products are used for similar purposes” and

whether “the two companies compete for the patronage

of an overlapping audience.” Id. Stated differently, “[t]he

proximity of goods is measured by whether the products

are: (1) complementary; (2) sold to the same class of

purchasers; and (3) similar in use and function.” Network

Automation, Inc. v. Advanced Sys. Concepts, Inc., 638

F.3d 1137, 1150 (9th Cir. 2011). But “the mere fact that two

products or services fall within the same general field”

is not enough. Stonefire Grill, Inc. v. FGF Brands, Inc.,

987 F. Supp. 2d 1023, 1050 (C.D. Cal. 2013); Brookfield

Commc’ns, 174 F.3d at 1056 (the focus is on the parties’

products rather than their “principal lines of business”).

Although the defendant’s product is a $2500 stationary

bike and the plaintiff’s is an app, they are complementary:

the defendant offers a metric-tracking app to accompany

its bike, and the plaintiff’s app can be used with indoor

stationary bikes. Wreal, LLC v. Amazon.com, Inc., 38

F.4th 114, 132 (11th Cir. 2022) (record evidence of the

potential for cross-compatibility, in the form of equivalent

cross-compatibility already existing in the market, shows

product relatedness). For the same reason, there is at least

a genuine dispute that the products are sold to the same

class of purchasers and are similar in use and function.

This factor thus favors the plaintiff.

The third factor, which again is important, is the

similarity of the marks. This analysis “rel[ies] on three

general principles.” Ironhawk Techs., 2 F.4th at 1164.

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“First, similarity is best adjudged by appearance, sound,

and meaning.” Id. (cleaned up). “Second, the marks must

be considered in their entirety and as they appear in the

marketplace.” Id. (cleaned up); Lindy Pen Co. v. Bic Pen

Corp., 725 F.2d 1240, 1245 (9th Cir. 1984) (“The two marks

viewed in isolation are . . . identical, but their similarity

must be considered in light of the way the marks are

encountered in the marketplace and the circumstances

surrounding the purchase of the [products].”); Arcona,

Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074, 1080-81

(9th Cir. 2020) (“[N]o reasonable consumer would be

confused by these two products because the packaging,

size, color, shape, and all other attributes . . . are not

remotely similar.”). “Third, similarities are weighed more

heavily than differences.” Ironhawk Techs., 2 F.4th at

1164 (cleaned up).

The defendant’s use of its “business name or house

mark alongside its version of the disputed mark” is

important for this factor. Id. “[I]n a reverse confusion

case[,] the junior user’s use of a house mark can . . .

aggravate confusion by reinforcing the association

between the mark and the junior user.” Id.; Americana

Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1288

(9th Cir. 1992).

Despite differences in how the marks have been

encountered in the marketplace at times (for example,

the plaintiff’s mark’s being encountered in an app store

with “bike more” next to it), in the specific context of

reverse confusion, the defendant’s use of its housemark

means that “a reasonable jury could find that the marks

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Appendix D

are similar.” Ironhawk Techs., 2 F.4th at 1165; Americana

Trading, 966 F.2d at 1288 (due to “the prominence of [the

defendant]’s housemark,” the district court “erred by

finding no genuine issue of material fact as to similarity

of appearance, sound, and meaning”). This factor favors

the plaintiff.

The fourth factor is whether there is evidence of

actual confusion. Jada Toys, 518 F.3d at 632. Although

the parties offered competing expert surveys on whether

consumers would be confused and the parties dispute

(essentially) the weight those reports should be given, it is

undisputed that no evidence of actual confusion has been

offered. Given that the parties’ products have coexisted

in the marketplace since September 2020, the lack of

evidence of actual confusion weighs in the defendant’s

favor at the summary-judgment stage. Lodestar, 31 F.4th

at 1261; Cohn v. Petsmart, Inc., 281 F.3d 837 at 842-43

(9th Cir. 2002).

The next factor – the marketing channels used by the

parties – also weighs in the defendant’s favor.

“Convergent marketing channels increase the

likelihood of confusion.” Official Airline Guides, Inc. v.

Goss, 6 F.3d 1385, 1393 (9th Cir. 1993) (cleaned up). “In

assessing marketing channel convergence, courts consider

whether the parties’ customer bases overlap and how

the parties advertise and market their products.” Pom

Wonderful LLC v. Hubbard, 775 F.3d 1118, 1130 (9th Cir.

2014). The ultimate question is whether “the general class

of . . . purchasers exposed to the products overlap.” Id.

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Appendix D

(cleaned up); see Ironhawk Techs., 2 F.4th at 1166 (“[B]oth

[parties’] employing salespeople is of little significance

without evidence those salespeople target the same class

of customers.”). If both parties engage in “generic internet

advertising,” though, that is insignificant because “most

companies today engage in online marketing.” See, e.g.,

Asuragen, Inc. v. Accuragen, Inc., No. 16-cv-05440-RS,

2018 WL 558888, at *6 (N.D. Cal. Jan. 25, 2018).

The defendant emphasizes that it sells its Bike+

product “exclusively through [its] showrooms and

website[] and through [Dick]’s Sporting Goods’ stores

and website.”50 Also, the summary-judgment evidence

is that the plaintiff has not done much marketing: the

last Facebook advertising for the 2014 app was in 2019

(before the defendant’s product launch), and marketing

for the 2021 app has been limited. The plaintiff counters

that the defendant’s advertising “has swamped all

channels with [Bike]+ advertising” (and thus occupies

the channels used by the plaintiff, such as “the Apple App

Store, search engines, and social media”) and that the

parties’ marketing experts “describe a long sales funnel

in which consumers interested in Peloton’s Bike+ are

likely exposed to multiple Bike+ impressions in multiple

channels before they buy.”51

The parties’ marketing channels are not convergent.

For one thing, the fact that the defendant’s substantial

50. Cortese Decl. – ECF No. 135-2 at 6 (¶ 21).

51. Pl.’s Opp’n – ECF No. 149 at 29-30 (citing summaryjudgment evidence, including expert depositions).

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Appendix D

advertising campaign encompasses the Apple App Store

and internet search engines is unremarkable under the

precedent. Moreover, the plaintiff has done very little

marketing during the products’ coexistence (i.e., from

September 2020 onwards), meaning that the parties’

marketing channels have not themselves exposed a

meaningful overlap of consumers to the products. Helix

Env’t Plan., Inc. v. Helix Env’t & Strategic Sols., No.

3:18-cv-2000-AJB-AHG, 2020 WL 2556341, at *6 (S.D.

Cal. May 20, 2020) (one party did “very little marketing”

and instead “advertise[d] primarily through word-ofmouth,” so the court “conclude[d] that this factor favor[ed]

Defendants”). The defendant’s use of brick-and-mortar

stores further separates its marketing channels from

the plaintiff’s. Thus, this factor favors the defendant

significantly.

The sixth factor is “the type of goods and the degree

of care likely to be exercised by the purchaser.” Jada

Toys, 518 F.3d at 632. Courts “assess the sophistication

of the customers and ask whether a ‘reasonably prudent

consumer’ would take the time to distinguish between

the two product lines.” Ironhawk Techs., 2 F.4th at 1167

(cleaned up). “In a reverse confusion case, the degree of

care exercised by customers is determined with reference

to the alleged senior user’s customers only.” Abercrombie

& Fitch Co. v. Moose Creek, Inc., 486 F.3d 629, 634 n.2

(9th Cir. 2007) (cleaned up).

“When the buyer has expertise in the field, or the

goods are expensive, the buyer can be expected to

exercise greater care in his purchases.” Ironhawk Techs.,

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Appendix D

2 F.4th at 1167 (cleaned up). In this regard, consumers

“in specialized, niche markets may be very sophisticated

as to brands and discerning in their purchases. Possible

examples could include buyers of mountain climbing

equipment and buyers of tap dance shoes.” 4 McCarthy on

Trademarks and Unfair Competition § 23:99 (5th ed. Dec.

2023 Update). Thus, district courts have held that buyers

exercise greater care when choosing products related to

fitness and health. Suja, Life, LLC v. Pines Int’l, Inc.,

No. 16CV985-GPC(WVG), 2016 WL 6157950, at *12 (S.D.

Cal. Oct. 24, 2016) (“Consumers choosing products that

affect their physical appearance and health are likely to

exercise a great deal of care.”) (cleaned up); Reeves v. Gen.

Nutrition Ctrs., Inc., No. SACV1001653JAKFFMX, 2012

WL 13018362, at *7 (C.D. Cal. Apr. 2, 2012) (similar); Jevo

Inc. v. Barre Physique LLC, No. CV-08-06315-R, 2010 WL

11597823, at *20 (C.D. Cal. Feb. 22, 2010) (similar). At the

same time, the Ninth Circuit has said that “a discerning

consumer might immediately connect the like-named

products more readily than an unsophisticated consumer.”

Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand

Mgmt., Inc., 618 F.3d 1025, 1038 (9th Cir. 2010).

Here, the plaintiff does not dispute that its customers

are sophisticated with respect to connected-fitness

products. Instead, the plaintiff relies on the proposition

that their sophistication increases the likelihood of

confusion. 52 The Ninth Circuit’s statement to that effect

in Fortune Dynamic was in the context of “the difficulty

of trying to determine with any degree of confidence

52. Pl.’s Opp’n – ECF No. 149 at 32-33.

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Appendix D

the level of sophistication of young women shopping at

Victoria’s Secret,” which “only confirm[ed] the need for

[the] case to be heard by a jury.” Id. By contrast, there

is longstanding precedent that consumer sophistication

(at least when known) “can be expected” to result in

consumers’ using “greater care in [their] purchases.”

Ironhawk Techs., 2 F.4th at 1167. This precedent applies

in the online context as well. Network Automation, 638

F.3d at 1150 (“[T]he default degree of consumer care

[online] is becoming more heightened as the novelty of

the Internet evaporates and online commerce becomes

commonplace.”). The purchaser-care factor thus favors

the defendant because the plaintiff’s customers can be

expected to exercise greater care when browsing the

Apple App Store.

The court next considers the defendant’s intent in

selecting its mark. Jada Toys, 518 F.3d at 632. “Evidence

that a defendant has an ‘intent to deceive’ customers

weighs in favor of finding a likelihood of confusion.”

Fortinet, Inc. v. Fortanix, Inc., No. 20-cv-06900-MMC,

2022 WL 1128723, at *5 (N.D. Cal. Apr. 15, 2022). But

“when a court applies Sleekcraft in a case that presents

reverse confusion,” it “may consider several indicia of

intent,” bearing in mind that “[t]he Sleekcraft factors

are to be applied flexibly.” Marketquest Grp., Inc. v. BIC

Corp., 862 F.3d 927, 934 (9th Cir. 2017). “At one extreme,

intent could be shown through evidence that a defendant

deliberately intended to push the plaintiff out of the

market by flooding the market with advertising to create

reverse confusion.” Id. “Intent could also be shown by

evidence that, for example, the defendant knew of the

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Appendix D

mark, should have known of the mark, intended to copy

the plaintiff, failed to conduct a reasonably adequate

trademark search, or otherwise culpably disregarded

the risk of reverse confusion.” Id. at 934-35; Ironhawk

Techs., 2 F.4th at 1167-68 (“In the reverse confusion

context, we ask whether there is some evidence that the

junior user, when it knew of the senior user, was at fault

for not adequately respecting the rights of the senior

user.”) (cleaned up). “[B]ut no specific type of evidence is

necessary to establish intent, and the importance of intent

and evidence presented will vary by case.” Marketquest

Grp., 862 F.3d at 935.

The defendant admits that its in-house counsel knew

of the plaintiff’s mark before the defendant’s Bike+

product launch and that its in-house counsel obtained

an opinion from outside counsel on the subject at that

time. 53 The plaintiff contends that this scenario shows

that the defendant “culpably disregarded the risk of

reverse confusion.”54 It is true that the defendant at least

should have known of the plaintiff’s mark at the time of

the defendant’s product launch. But especially given that

“Bike+” is a descriptive mark, the defendant’s choice of a

product name that likewise describes its product mitigates

the significance of the intent factor. Edge Games, Inc. v.

Elec. Arts, Inc., 745 F. Supp. 2d 1101, 1116 (N.D. Cal. 2010)

(in a reverse-confusion case, “there [was] no evidence in

the record that EA chose to call [its] product ‘Mirror’s

Edge’ for any reason but to describe the visual and

53. Cortese Decl. – ECF No. 135-2 at 5 (¶ 18); Dillon-Curran

Dep. – ECF No. 137-38 at 4 (pp. 184:16-185:25).

54. Pl.’s Opp’n – ECF No. 149 at 31.

57a

Appendix D

thematic aspects of the video game,” and relatedly, “the

‘strength’ of plaintiff’s asserted marks [was] also highly

susceptible to attack”). The court thus concludes that this

factor is neutral or very slightly in the plaintiff’s favor.

The final factor – the likelihood of expansion of

the parties’ product lines – is treated by the parties as

insignificant in their briefs. This factor is more important

“[i]n the context of non-competing goods” (unlike the

complementary products at issue here). Ironhawk Techs., 2

F.4th at 1168 (“[A] strong possibility that either party may

expand his business to compete with the other will weigh

in favor of finding that the present use is infringing.”)

(cleaned up). The plaintiff did submit evidence that the

defendant has considered developing an app store for

its fitness equipment and has applied for trademark

registrations related to mobile app features.55 Some cases,

though, have described the likelihood-of-expansion test

as whether “the plaintiff’s expansion plans” are being

hindered. Surfvivor, 406 F.3d at 634. If anything, this

factor favors the plaintiff very slightly, but the factor’s

significance is diminished here.

Having walked through each factor, the court’s final

task is to evaluate the totality of the circumstances.

55. Feb. 2022 New York Times Article – ECF No. 150-18

at 3-4 (the defendant’s CEO floated the idea of creating an app

store to run on the equipment’s screen); Trademark Registration

– ECF No. 152-40 at 2-3 (registration for the mark “Peloton” for

(among other things) “downloadable software in the nature of an

application for use by individuals participating in exercise classes

[and] physical training”).

58a

Appendix D

Ironhawk Techs., 2 F.4th at 1169. To survive summary

judgment, “the plaintiff need not satisfy every factor,

provided that strong showings are made with respect to

some of them.” Surfvivor, 406 F.3d at 631. That said, the

Sleekcraft “list does not purport to be exhaustive, and nonlisted variables may often be quite important.” Brookfield

Commc’ns, 174 F.3d at 1054. The ultimate question is

whether “a rational trier of fact could find that confusion

is probable.” Ironhawk Techs., 2 F.4th at 1167.

Although the court’s task is not to “count beans,” AuTomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d

1062, 1076 (9th Cir. 2006), a recap of the court’s conclusions

will be helpful. The following Sleekcraft list shows which

factors are the “important” ones and which party each

one favors:

(1) strength of the marks (important): Defendant

(2) relatedness of the goods (important):

Plaintiff

(3) similarity of the marks (important): Plaintiff

(4) evidence of actual confusion: Defendant

(5) marketing channels: strongly Defendant

(6) degree of consumer care: Defendant

(7) intent to deceive: neutral or very slightly

Plaintiff

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Appendix D

(8) likelihood of expansion: neutral or very

slightly Plaintiff

Given that two of the important factors came out in

the plaintiff’s favor, it is a close call whether summary

judgment should be granted. Monster, Inc., 920 F. Supp.

2d at 1070-71 (“Because of the intensely factual nature

of trademark disputes, summary judgment is generally

disfavored in trademark cases and should be granted

sparingly.”) (cleaned up). But it’s also important to apply

the factors flexibly, taking account of the circumstances

of the case. By the time of the defendant’s September

2020 Bike+ product launch, the plaintiff’s Bike+ app

was mostly dormant, having gone through an extended

update process that finished after September 2020.

The last meaningful marketing for the app was in 2019.

Subscriber and download numbers were insubstantial

and declining and a portion of them were for international

consumers. 56 The Pebble Watch portion of the userbase

was a very niche group of consumers who, owing to their

very specific search criteria, were unlikely to be confused.

And crucially, the Bike+ mark is descriptive and is joined

in the marketplace by equivalent app names and variants

on that composite mark. Not surprisingly, despite several

years of coexistence, no evidence of actual confusion was

submitted.

The plaintiff’s 2021 app, launched soon after the

defendant’s product launch, does not add much to the

56. Mattis Decl. – ECF No. 137-3 at 14-15 (¶¶ 47, 49) (under

seal).

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Appendix D

picture. This is even though the court already held the

2021 app to be a bona fide commercial use, a test that

requires only a very minimal showing. The 2021 app’s

key feature may not be functional, it has achieved no inapp sales, and the plaintiff made almost no meaningful

marketing efforts.

This all creates a situation where the plaintiff’s

app had very little strength for the defendant’s product

launch to overtake. And if there is so little to overtake,

reverse confusion must be unlikely. See Ironhawk Techs.,

2 F.4th at 1160 (reverse confusion occurs when a consumer

“mistakenly thinks that the senior user is the same as or

is affiliated with the junior user”); Freedom Card, Inc. v.

JPMorgan Chase & Co., 432 F.3d 463, 474-75 (3d Cir. 2005)

(“Chase did not overwhelm UTN’s FREEDOM CARD at

all. It is undisputed that CompuCredit FREEDOM CARD

was not promoted or marketed after December 2001. Thus,

FREEDOM CARD was out of the market for more than

a year before Chase launched the CHASE FREEDOM

card on January 27, 2003. We are therefore hard-pressed

to understand how CHASE FREEDOM card could have

overwhelmed UTN’s FREEDOM CARD[.]”).

That said, it’s worth dwelling for a moment on whether

this interpretation of the reverse-confusion context is

supported by Ninth Circuit precedent. In that regard,

the fact that the plaintiff’s mark is descriptive is key. The

Ironhawk Techs. court said that “[w]hether [the senior

mark is] descriptive or suggestive, the important question

in a reverse confusion case is whether the junior mark is

so commercially strong as to overtake the senior mark.”

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Appendix D

2 F.4th at 1162 (cleaned up). But see id. (“[T]he question

[on summary judgment] is whether a reasonable jury could

find that [the] mark is at least suggestive[.]”). This would

seem to suggest that even a descriptive mark is ripe to

be overtaken. But that one sentence does not necessarily

tell the full story, because in the more recent Lodestar

decision, the court said “[g]iven that the [plaintiff’s]

mark is properly considered distinctive for purposes of

summary judgment, the strength-of-the-mark factor in

this reverse confusion case focuses on whether the junior

mark is so commercially strong as to overtake the senior

mark.” 31 F.4th at 1260 (cleaned up). In other words, if

the plaintiff’s mark is descriptive rather than distinctive,

the analysis can be different. That point is consistent with

rejecting a reverse-confusion claim that lacks sufficient

mark strength and supporting marketing efforts.

In sum, under these circumstances, confusion is

possible but not probable. Ironhawk Techs., 2 F.4th at 1167.

Having come to the end, the court stops, grants summary

judgment to the defendant, and denies the plaintiff’s

motion for summary judgment as moot.

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Appendix D

CONCLUSION

The court grants summary judgment to the defendant

and will separately enter judgment. This disposes of ECF

Nos. 134 and 135.

IT IS SO ORDERED.

Dated: March 26, 2024

/s/

LAUREL BEELER

United States Magistrate Judge

63a

E THE UNITED

APPENDIX E —Appendix

ORDER OF

STATES COURT OF APPEALS FOR THE NINTH

CIRCUIT, FILED SEPTEMBER 18, 2025

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 24-2266

WORLD CHAMP TECH, LLC,

Plaintiff-Appellant,

PELOTON INTERACTIVE, INC.,

Defendant - Appellee.

Filed September 18, 2025

ORDER

D.C. No. 3:21-cv-03202-LB

Northern District of California, San Francisco

Before: CALLAHAN, BADE, and KOH, Circuit Judges.

The memorandum disposition filed on July 25,2025,

is amended, and the amended memorandum disposition

is filed concurrently with this order.

The panel has unanimously voted to deny the petition

for panel rehearing and to deny the petition for rehearing

64a

Appendix E

en banc. The full court has been advised of the petition for

rehearing en banc and no judge has requested a vote on

whether to rehear the matter en banc. Fed. R. App. P. 40.

The petition for rehearing and rehearing en banc is denied.

No further petitions for panel rehearing or rehearing

en banc will be entertained.

65a

Appendix

APPENDIX

F — RELEVANT

PROVISIONS INVOLVED

15 U.S.C. § 1114

§ 1114. Remedies; infringement; innocent infringement

by printers and publishers

(1) Any person who shall, without the consent of the

registrant—

(a) use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale, distribution,

or advertising of any goods or services on or in

connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably

imitate a registered mark and apply such reproduction,

counterfeit, copy, or colorable imitation to labels,

signs, prints, packages, wrappers, receptacles or

advertisements intended to be used in commerce

upon or in connection with the sale, offering for sale,

distribution, or advertising of goods or services on or

in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the

remedies hereinafter provided. Under subsection (b)

hereof, the registrant shall not be entitled to recover

profits or damages unless the acts have been committed

with knowledge that such imitation is intended to be used

to cause confusion, or to cause mistake, or to deceive.

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Appendix F

A s u s e d i n t h i s p a r a g r aph , t he t e r m ‘ ‘a ny

person’’ includes the United States, all agencies and

instrumentalities thereof, and all individuals, firms,

corporations, or other persons acting for the United States

and with the authorization and consent of the United

States, and any State, any instrumentality of a State, and

any officer or employee of a State or instrumentality of

a State acting in his or her official capacity. The United

States, all agencies and instrumentalities thereof, and

all individuals, firms, corporations, other persons acting

for the United States and with the authorization and

consent of the United States, and any State, and any such

instrumentality, officer, or employee, shall be subject to

the provisions of this chapter in the same manner and to

the same extent as any nongovernmental entity.

(2) Notwithstanding any other provision of this chapter,

the remedies given to the owner of a right infringed under

this chapter or to a person bringing an action under

section 1125(a) or (d) of this title shall be limited as follows:

(A) Where an infringer or violator is engaged

solely in the business of printing the mark or violating

matter for others and establishes that he or she was

an innocent infringer or innocent violator, the owner

of the right infringed or person bringing the action

under section 1125(a) of this title shall be entitled as

against such infringer or violator only to an injunction

against future printing.

(B) Where the infringement or violation complained

of is contained in or is part of paid advertising matter

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Appendix F

in a newspaper, magazine, or other similar periodical

or in an electronic communication as defined in section

2510(12) of title 18, the remedies of the owner of the

right infringed or person bringing the action under

section 1125(a) of this title as against the publisher

or distributor of such newspaper, magazine, or other

similar periodical or electronic communication shall be

limited to an injunction against the presentation of such

advertising matter in future issues of such newspapers,

magazines, or other similar periodicals or in future

transmissions of such electronic communications. The

limitations of this subparagraph shall apply only to

innocent infringers and innocent violators.

owner of the right infringed or person bringing the

action under section 1125(a) of this title with respect

to an issue of a newspaper, magazine, or other

similar periodical or an electronic communication

containing infringing matter or violating matter

where restraining the dissemination of such infringing

matter or violating matter in any particular issue of

such periodical or in an electronic communication

would delay the delivery of such issue or transmission

of such electronic communication after the regular

time for such delivery or transmission, and such delay

would be due to the method by which publication and

distribution of such periodical or transmission of such

electronic communication is customarily conducted in

accordance with sound business practice, and not due

to any method or device adopted to evade this section

or to prevent or delay the issuance of an injunction

68a

Appendix F

or restraining order with respect to such infringing

matter or violating matter.

(D)(i)(I) A domain name registrar, a domain

name registry, or other domain name registration

authority that takes any action described under clause

(ii) affecting a domain name shall not be liable for

monetary relief or, except as provided in subclause

(II), for injunctive relief, to any person for such action,

regardless of whether the domain name is finally

determined to infringe or dilute the mark.

(II) A domain name registrar, domain name

registry, or other domain name registration authority

described in subclause (I) may be subject to injunctive

relief only if such registrar, registry, or other

registration authority has—

(aa) not expeditiously deposited with a court,

in which an action has been filed regarding the

disposition of the domain name, documents

sufficient for the court to establish the court’s

control and authority regarding the disposition of

the registration and use of the domain name;

(bb) transferred, suspended, or otherwise

modified the domain name during the pendency of

the action, except upon order of the court; or

(cc) willfully failed to comply with any such

court order.

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Appendix F

(ii) An action referred to under clause (i)(I) is

any action of refusing to register, removing from

registration, transferring, temporarily disabling, or

permanently canceling a domain name—

(I) in compliance with a court order under

section 1125(d) of this title; or

(II) in the implementation of a reasonable policy

by such registrar, registry, or authority prohibiting

the registration of a domain name that is identical

to, confusingly similar to, or dilutive of another’s

mark.

(iii) A domain name registrar, a domain name

registry, or other domain name registration authority

shall not be liable for damages under this section for

the registration or maintenance of a domain name for

another absent a showing of bad faith intent to profit

from such registration or maintenance of the domain

name.

(iv) If a registrar, registry, or other registration

authority takes an action described under clause (ii)

based on a knowing and material misrepresentation

by any other person that a domain name is identical to,

confusingly similar to, or dilutive of a mark, the person

making the knowing and material misrepresentation

shall be liable for any damages, including costs

and attorney’s fees, incurred by the domain name

registrant as a result of such action. The court may also

grant injunctive relief to the domain name registrant,

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Appendix F

including the reactivation of the domain name or the

transfer of the domain name to the domain name

registrant.

(v) A domain name registrant whose domain name

has been suspended, disabled, or transferred under a

policy described under clause (ii)(II) may, upon notice

to the mark owner, file a civil action to establish that

the registration or use of the domain name by such

registrant is not unlawful under this chapter. The

court may grant injunctive relief to the domain name

registrant, including the reactivation of the domain

name or transfer of the domain name to the domain

name registrant.

(E) As used in this paragraph—

(i) the term ‘‘violator’’ means a person who

violates section 1125(a) of this title; and

(ii) the term ‘‘violating matter’’ means matter

that is the subject of a violation under section

1125(a) of this title.

(3)(A) Any person who engages in the conduct described

in paragraph (11) of section 110 of title 17 and who complies

with the requirements set forth in that paragraph is not

liable on account of such conduct for a violation of any right

under this chapter. This subparagraph does not preclude

liability, nor shall it be construed to restrict the defenses

or limitations on rights granted under this chapter, of

a person for conduct not described in paragraph (11) of

71a

Appendix F

section 110 of title 17, even if that person also engages

in conduct described in paragraph (11) of section 110 of

such title.

(B) A manufacturer, licensee, or licensor of technology

that enables the making of limited portions of audio

or video content of a motion picture imperceptible as

described in subparagraph (A) is not liable on account of

such manufacture or license for a violation of any right

under this chapter, if such manufacturer, licensee, or

licensor ensures that the technology provides a clear and

conspicuous notice at the beginning of each performance

that the performance of the motion picture is altered from

the performance intended by the director or copyright

holder of the motion picture. The limitations on liability in

subparagraph (A) and this subparagraph shall not apply

to a manufacturer, licensee, or licensor of technology that

fails to comply with this paragraph.

provide notice shall apply only with respect to technology

manufactured after the end of the 180-day period

beginning on April 27, 2005.

(D) Any failure by a manufacturer, licensee, or

licensor of technology to qualify for the exemption under

subparagraphs (A) and (B) shall not be construed to create

an inference that any such party that engages in conduct

described in paragraph (11) of section 110 of title 17 is liable

for trademark infringement by reason of such conduct.

72a

Appendix F

15 U.S.C. § 1125

§ 1125. False designations of origin, false descriptions,

and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any

goods or services, or any container for goods, uses in

commerce any word, term, name, symbol, or device,

or any combination thereof, or any false designation of

origin, false or misleading description of fact, or false or

misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake,

or to deceive as to the affiliation, connection, or

association of such person with another person, or as

to the origin, sponsorship, or approval of his or her

goods, services, or commercial activities by another

person, or

(B) in commercial advertising or promotion,

misrepresents the nature, characteristics, qualities,

or geographic origin of his or her or another person’s

goods, services, or commercial activities,

shall be liable in a civil action by any person who believes

that he or she is or is likely to be damaged by such act.

(2) As used in this subsection, the term ‘‘any person’’

includes any State, instrumentality of a State or employee

of a State or instrumentality of a State acting in his or her

73a

Appendix F

official capacity. Any State, and any such instrumentality,

officer, or employee, shall be subject to the provisions of

this chapter in the same manner and to the same extent

as any nongovernmental entity.

(3) In a civil action for trade dress infringement under

this chapter for trade dress not registered on the principal

has the burden of proving that the matter sought to be

protected is not functional.

(b) Importation

Any goods marked or labeled in contravention of the

provisions of this section shall not be imported into the

United States or admitted to entry at any customhouse

of the United States. The owner, importer, or consignee

of goods refused entry at any customhouse under this

section may have any recourse by protest or appeal that

is given under the customs revenue laws or may have the

remedy given by this chapter in cases involving goods

refused entry or seized.

(1) Injunctive relief

Subject to the principles of equity, the owner

of a famous mark that is distinctive, inherently or

through acquired distinctiveness, shall be entitled

to an injunction against another person who, at any

time after the owner’s mark has become famous,

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Appendix F

commences use of a mark or trade name in commerce

that is likely to cause dilution by blurring or dilution

by tarnishment of the famous mark, regardless of the

presence or absence of actual or likely confusion, of

competition, or of actual economic injury.

(2) Definitions

(A) For purposes of paragraph (1), a mark is famous

if it is widely recognized by the general consuming

public of the United States as a designation of source

of the goods or services of the mark’s owner. In

determining whether a mark possesses the requisite

degree of recognition, the court may consider all

relevant factors, including the following:

(i) The duration, extent, and geographic reach

of advertising and publicity of the mark, whether

advertised or publicized by the owner or third

parties.

(ii) The amount, volume, and geographic extent

of sales of goods or services offered under the

mark.

(iii) The extent of actual recognition of the

mark.

(iv) Whether the mark was registered under

the Act of March 3, 1881, or the Act of February

20, 1905, or on the principal register.

75a

Appendix F

(B) For pur

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