78 F. Supp. 3d 1180
N.D. Cal.2015Background
- Fitbug (UK startup, founded 2004) and Fitbit (US company, founded 2007) both sell wearable fitness trackers and each owns federal trademark registrations involving similar marks (FIT‑BUG / FITBIT).
- Fitbit chose the FITBIT name in 2007, announced products and launched its website in September 2008 (orders available), and began shipping in September 2009; it expanded rapidly thereafter.
- Fitbug learned of Fitbit’s announcement soon after September 2008, discussed potential responses internally, but did not send a cease‑and‑desist until December 2011 and filed suit in March 2013.
- Fitbug sued for trademark infringement, unfair competition (Lanham Act and state law), and sought cancellation of Fitbit’s registration; Fitbit counterclaimed under California law.
- The court considered cross summary judgment motions; it focused on laches (timeliness/equitable delay) and standing for Fitbit’s state‑law counterclaims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Laches — when delay began | Fitbug: laches cannot run before defendant’s first actual sale; Fitbit didn’t ship until 2009 so no unreasonable delay from 2008 | Fitbit: laches begins when Fitbug knew or should have known of potential cause (Sept 2008 launch/website) | Court: Delay began by Sept 2008; Fitbug’s ~4.5 year delay to suit was unreasonable; laches bars claims (Fitbit SJ granted) |
| Progressive encroachment (excuse for delay) | Fitbug: Fitbit only later entered Fitbug’s important B2B2C market (mid‑2011), so delay was reasonable | Fitbit: Fitbit sold to businesses and consumers from outset; growth was natural expansion, not new market entry | Court: No progressive encroachment — Fitbit competed in relevant channels from the start; Fitbug’s argument fails |
| Willful infringement exception to laches | Fitbug: Fitbit knew of Fitbug and copied designs; continued use after cease‑and‑desist -> willfulness bars laches | Fitbit: Selected name before learning of Fitbug; believed no confusion; absence of wrongful intent | Held: No evidence of willful intent to capitalize on Fitbug’s goodwill; willfulness exception does not apply |
| Standing for Fitbit’s UCL/FAL counterclaims | Fitbit: injuries can be small and pled; misrepresentations cause presumptive injury in Lanham Act context | Fitbug: Fitbit stipulated lack of evidence connecting Fitbug’s conduct to Fitbit losses; Fitbit cannot show economic injury | Held: Fitbit failed to show specific economic injury causally tied to alleged misrepresentations; Fitbug entitled to SJ on those counterclaims |
Key Cases Cited
- Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir. 2002) (laches as equitable defense to Lanham Act and state claims)
- Internet Specialties W., Inc. v. Milon‑DiGiorgio Enters., Inc., 559 F.3d 985 (9th Cir. 2009) (when trademark owner knew/should have known of likelihood of confusion controls laches start)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft likelihood‑of‑confusion factors)
- Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (policing duty and prejudice analysis in laches context)
- Tillamook County Smoker, Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102 (9th Cir. 2006) (progressive encroachment vs. natural business growth)
- Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir. 2001) (willful infringement standard for laches exception)
- Miller v. Glenn Miller Prods., Inc., 454 F.3d 975 (9th Cir. 2006) (laches elements and analogous statute of limitations guidance)
- Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096 (N.D. Cal. 2008) (application of laches and prejudice in trademark/cancellation context)