Glydways, Inc. v. Glyd, Inc.

• Court: District Court, N.D. California
• Decided: October 23, 2025
• Docket: 5:23-cv-00203
• Status: Unknown

Opinion

1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 7 GLYDWAYS, INC., Case No. 5:23-cv-00203-EJD

8 Plaintiff, ORDER DENYING MOTION FOR LEAVE TO FILE LATE OPPOSITION; 9 v. GRANTING IN PART AND DENYING IN PART MOTION FOR SUMMARY 10 GLYD, INC., JUDGMENT; TERMINATING AS MOOT REMAINING MOTIONS 11 Defendant. 12 Re: Dkt. Nos. 91, 93, 95, 117

13 This is a copyright dispute between Plaintiff and Counter-Defendant Glydways, Inc., 14 (“Glydways”) and Defendant and Counter-Plaintiff Glyd, Inc., (“Glyd”). Compl., ECF No. 1; 15 Answer with Counterclaims, ECF No. 8. 16 There are four motions before the Court: (1) Glydways’s motion to strike Glyd’s jury 17 demands, ECF No. 91; (2) Glydways’s motion to exclude the opinion of Glyd’s expert witness, 18 ECF No. 93; (3) Glydways’s motion for summary judgment, ECF No. 95; and (4) Glyd’s motion 19 for leave to file a late opposition to Glydways’s motion for summary judgment, ECF No. 117. All 20 motions except for Glydways’s motion for summary judgment are fully briefed. Opp’n to Mot. to 21 Strike, ECF No. 104; Reply ISO Mot. to Strike, ECF No. 108; Opp’n to Mot. to Exclude, ECF No. 22 103; Reply ISO Mot. to Exclude, ECF No. 107; Opp’n to Mot. for Leave, ECF No. 119. 23 After carefully reviewing the relevant documents, the Court finds this matter suitable for 24 decision without oral argument pursuant to Local Rule 7-1(b). For the reasons explained below, 25 the Court DENIES Glyd’s motion for leave; GRANTS IN PART and DENIES IN PART 26 Glydways’s motion for summary judgment; and TERMINATES the remaining motions as moot. 27 Case No.: 5:23-cv-00203-EJD I. BACKGROUND

5 A. “GLYDWAYS” Glydways is a business established in 2016 that creates fully automated mass transit 3 systems comprised of elective, driverless vehicles using dedicated travel lanes to transport 4 passengers to and from fixed stations. Statement of Facts (“Fact”) No. 14, ECF No. 96.! 5 Glydways markets its system to public entities, including the City of San Jose, Atlanta Airport, 6 and East Contra Costa County.” Fact No. 11. To utilize Glydways’s system, a public transit 4 agency must invest years and hundreds of millions of dollars to develop infrastructure, including 8 travel lanes and access points. Fact No. 33. This process involves discussions with public 9 officials and agencies; coordination with other professionals in public infrastructure design, 10 financing, and planning; attendance at public meetings; approval by public agencies; and detailed 11 studies. Seeger Decl., | 6, ECF No. 95-1. Glydways is still in the development phase of its 12 business and is currently engaging in work related to design, construction, and financing. □□□ {J 2, 13 12. To date, Glydways has received no revenue from operating its automated transit network and 14 is not operating a system anywhere in the United States. Id. 4 11. 15 Glydways uses the following design, which it refers to as the “GLYDWAYS Mark,” in its 16 advertisements and website: oO SS = □□ = |: 19 ey AP se = gue 20 MSC] bate te 1 adel) iCoam □□□□□□□□□□□□□□□□□□□□□□ ie] □□□ esate elie eee ed teh el isla hi ee greases ase) elle

24 a Sade ra A 25 | | as The Court’s citations to the Statement of Facts incorporates the citations therein. 26 || 7 Pursuant to Federal Rule of Evidence 201, the Court grants Glydways’s unopposed motion to take judicial notice of these and other facts found in the publicly accessible government 27 documents identified in the Request for Judicial Notice. Req. for J. Notice, ECF No. 97. Case No.: 5:23-cv-00203-EJD 28 || ORDER DEN. MOT. FOR LEAVE; GRANTING IN PART DEN. IN PART MOT. FOR SUMM. J.; TERMINATING REMAINING MOTS.

1 Seeger Decl., Ex. 2, ECF No. 95-3. Glydways filed an application to register the GLYDWAYS 2 Mark on November 13, 2020, but the United States Patent and Trademark Office (“USPTO”) 3 denied the application, citing to the registered GLYD Mark as a conflict. Compl. §[] 13, 14. 4 It is not certain whether the GLYDWAYS Mark will appear on any completed mass transit 5 system. Seeger Decl. 16-17. Public transit systems sometimes do not display the brand of 6 || transit system maker on the operational trains. /d. For example, while the public sees “BART” on 7 Bart trains in the Bay Area, the maker of the transit system is called “ALSTROM.” 7d. 8 B. “GLYD” 9 Glyd alleges it is a business that connect travelers with local residents to provide 10 || immersive experiences through an app, website, social media, and word of mouth.? Answer and 11 Counterclaims 456. For example, Glyd helps travelers connect with locals who can help them 12 || with transportation, tours, and local amenities. Jd. Glyd alleges that Monika Bhasin began

13 creating the business in 2013 under the name “Glyd,” incorporated Glyd on January 14, 2016, and

v 14 || registered the trademark “GLYD” (the “GLYD Mark”) with the USPTO on June 26, 2018. Id. □ O 15 || 57-59. QO 16 Glyd uses the GLYD Mark on its website and social media accounts. One such GLYD

17 Mark appears as follows:

Z 18 rer a) 19 cree] Malet -1echacUM@ellmger: lig] 20 eri. Gwe

24 - Ph eke =

3 Given Glyd’s failure to file an opposition and present additional evidence, the Court will 26 || reference facts deemed admitted by Glyd’s failure to respond to Request for Admissions (“RFAs’”’), facts supported by other evidence in the record, and Glyd’s allegations for background 27 || purposes. Case No.: 5:23-cv-00203-EJD 28 || ORDER DEN. MOT. FOR LEAVE; GRANTING IN PART DEN. IN PART MOT. FOR SUMM. J.; TERMINATING REMAINING MOTS.

1 Seeger Decl., Ex. 3, ECF No. 95-5, at 10. 2 Glyd alleges that Bhasin has continued to operate the business since May 13, 2013. 3 Answer and Counterclaims ¶ 60. However, given Glyd’s failure to respond to Glydways’s 4 Request for Admissions (“RFAs”),4 the following facts are deemed admitted and undisputed: the 5 Glyd App is not available in the United States or on the Apple App store or Google Play app store; 6 the Glyd App is not used anywhere in the United states; and Glyd does not offer goods or services 7 with the GLYD Mark anywhere in the United States. Seeger Decl., Ex. 3, ECF No. 95-5, at 2–9 8 (“RFA”). 9 C. Dispute Leading to This Action 10 In August 2021, Bhasin reports receiving several email inquiries confusing Glyd with 11 Glydways. Seeger Decl. ¶ 11, Ex. 13. That same month, after Glydways’s application to register 12 the GLYDWAYS Mark was rejected by the USPTO because of a conflict with the GLYD Mark, 13 Glydways initiated proceedings to cancel the GLYD Mark with the USPTO. Compl. ¶¶ 13, 14; 14 Answer and Counterclaims ¶ 63. In response to the emails and Glydways’s proceedings to cancel 15 Glyd’s registration, Glyd’s counsel sent a cease-and-desist letter to Glydways, demanding their 16 immediate terminate of the use of the GLYD Mark. Answer and Counterclaims ¶ 63. Glydways 17 responded by initiating this action. Id. 18 Glydways now seeks (1) declaratory relief of no trademark infringement and no false 19 designation of origin under the Lanham Act; (2) declaratory relief of no unfair competition under 20 the Lanham Act; and (3) cancellation of Defendant’s federal trademark registration for the GLYD 21 Mark based on Defendant’s nonuse and/or fraud. Glyd responded with counterclaims for: (1) 22 trademark infringement under the Lanham Act; (2) false designation of origin and unfair 23 competition under the Lanham Act; (3) California common law trademark infringement and unfair 24 competition; (4) unfair and deceptive trade practices under California Unfair Competition Law 25

26 4 On July 29, 2025, Magistrate Judge Cousins denied Glyd’s motion to be relieved from these 27 deemed admissions. ECF No. 115. Case No.: 5:23-cv-00203-EJD 1 (“UCL”), Cal. Bus. & Prof. Code §§ 17200, et seq., predicated upon the Lanham Act violations; 2 (5) federal trademark dilution under the Lanham Act; and (6) state trademark dilution and injury to 3 business reputation under Cal. Bus. & Prof. Code § 14247. 4 II. LEGAL STANDARD 5 Courts may grant summary judgment on a part of a claim or defense only if the moving 6 party shows “there is no genuine dispute as to any material fact and [that it] is entitled to judgment 7 as a matter of law.” Fed. R. Civ. P. 56(a). There is a genuine dispute when enough evidence 8 exists in the record for a reasonable fact finder to decide in favor of the nonmoving party. 9 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). And a fact is material when it might 10 affect the outcome of the case. Id. When evaluating whether a moving party has satisfied this 11 standard, courts view all evidence in the light most favorable to the nonmoving party and draw all 12 reasonable inferences in that party’s favor. Torres v. City of Madera, 648 F.3d 1119, 1123 (9th 13 Cir. 2011). 14 III. DISCUSSION 15 The Court first addresses Glyd’s request to file an untimely opposition before moving to 16 the merits of Glydways’s summary judgment motion. Given the Court’s ultimate grant of 17 Glydways’s motion for judgment on all of Glyd’s counterclaims, the Court finds the remaining 18 motions moot. 19 A. Motion for Leave to File Late Opposition 20 Glydways filed its motion for summary judgment on May 30, 2025. The deadline to file 21 an opposition to Glydways’s motion was June 13, 2025. Glyd did not file an opposition by that 22 date, and Glydways did not file a reply. On August 21, 2025, approximately twelve weeks after 23 Glydways’s motion and ten weeks after the opposition deadline, Glyd filed the present motion for 24 leave to file a late opposition. Glydways opposes Glyd’s request. 25 Under Federal Rule of Civil Procedure 6(b), where the specified period for the 26 performance of an act has elapsed, a district court may extend the time if the party had “failed to 27 Case No.: 5:23-cv-00203-EJD 1 act because of excusable neglect.” Fed. R. Civ. P. 6(b)(1)(B). To determine whether neglect is 2 excusable, the Ninth Circuit applies the four-part Pioneer test, examining: (1) the danger of 3 prejudice to the opposing party, (2) the length of the delay and its potential impact on judicial 4 proceedings; (3) the reason for the delay, including whether it was within the reasonable control of 5 the movant; and (4) whether the movant acted in good faith. See Briones v. Riviera Hotel & 6 Casino, 116 F.3d 379, 381 (9th Cir. 1997) (quoting Pioneer Inv. Servs. Co. v. Brunswick Assocs. 7 Ltd. P’ship, 507 U.S. 380, 395 (1993)). Because Congress has not provided guidance to determine 8 what sort of actions constitute excusable neglect, the Court’s “determination is at bottom an 9 equitable one, taking account of all relevant circumstances surrounding the party’s omission.” 10 Pioneer, 507 U.S. at 395. 11 The Court finds Glyd’s decision to not file a timely opposition was inexcusable. Glyd’s 12 motion fails most notably in the third Pioneer element: the reason for the delay. Glyd argues that 13 it did not file an opposition by the June 13 deadline because of “the unresolved status of the 14 deemed admissions and the ethical/procedural bar those admissions imposed.” Mot. for Leave 5. 15 Glyd contends that it made the “good-faith choice to resolve this threshold evidentiary issue before 16 submitting opposition papers that would conflict with those admissions.” Id. Glyd characterizes 17 this choice as “reasonable” and represents that this choice was “communicated to the Court and 18 opposing counsel in advance.” Id. 19 There are several issues with Glyd’s argument. To begin, Glyd’s apparently intentional 20 decision to not file an opposition was not communicated to the Court. Rather than filing, for 21 example, a motion seeking a stay of the briefing schedule pending resolution of the evidentiary 22 issue, or even a notice that it opposed the motion but may seek leave to supplement that opposition 23 after the resolution of the evidentiary issue, Glyd remained silent. Indeed, the only 24 communication with the Court on this topic suggested that Glyd planned to file the opposition on 25 June 13—in its opposition to a different motion filed on June 13, Glyd indicated that its opposition 26 to the present motion for summary judgment would be “concurrently filed.” Opp’n to Mot. to 27 Case No.: 5:23-cv-00203-EJD 1 Exclude 2 (“As outlined in the concurrently filed Opposition to the Motion for Summary 2 Judgment . . . ”). And further, Judge Cousins resolved the underlying discovery dispute on July 7, 3 2025, but Glyd did not file the present motion seeking leave until August 21, 2025—over six 4 weeks after Judge Cousins’ order, and two weeks prior to the scheduling hearing on this motion. 5 Even if the Court were to accept Glyd’s justifications for missing its deadline, Glyd has provided 6 no justification for waiting an additional six weeks to seek leave. 7 The additional Pioneer factors also weigh against granting leave. Should the Court allow 8 Glyd to file its opposition nearly ten weeks late, after all briefing deadlines have passed and two 9 weeks before the scheduled hearing, the danger of prejudice to Glydways and the added delay to 10 this case is considerable. And notably, this would not be the first delay caused by Glyd—Glyd 11 previously sought to continue this case so it could conduct discovery, yet failed to complete a 12 single deposition during the extended time. ECF Nos. 44, 58, 106-1, 106-14. The ten-week delay 13 is also considerably lengthy, and allowing additional briefing at this time by both Glyd and 14 Glydways will further lengthen the delay. See, e.g., Pioneer, 507 U.S. at 384 (delay of twenty 15 days excused). Finally, there is no evidence to show that Glyd acted in good faith. 16 For these reasons, the Court DENIES Glyd’s motion for leave to file an opposition. The 17 Court will proceed with examining Glydways’s unopposed motion for summary judgment. 18 B. Motion for Summary Judgment 19 Glydways seeks summary judgment on all its claims and Glyd’s counterclaims. Glydways 20 presents three overarching arguments to address all claims: (1) Glydways did not infringe on or 21 falsely designate the origin of the GLYD Mark; (2) Glydways did not dilute the GLYD Mark; and 22 (3) the GLYD Mark should be cancelled based on Glyd’s nonuse and/or fraud. The Court will 23 address each in turn. 24 1. Trademark Infringement and False Designation of Origin 25 First, Glydways seeks an order declaring that it did not infringe on, or falsely designate, 26 the GLYD Mark under the Lanham Act. Glydways also seeks judgment on Glyd’s counterclaims 27 Case No.: 5:23-cv-00203-EJD 1 for common law trademark infringement, unfair competition under California state law, and unfair 2 and deceptive trade practices predicated upon the Lanham Act and the California UCL. 3 All these claims generally share one common core requirement—that the infringer’s use of 4 the mark is likely to cause confusion.5 Reno Air Racing Ass’n., Inc. v. McCord, 452 F.3d 1126, 5 1134 (9th Cir. 2006) (discussing Lanham Act § 1114); Freecycle Network, Inc. v. Oey, 505 F.3d 6 898, 902 (9th Cir. 2007) (discussing Lanham Act § 1125(a)); Acad. of Motion Picture Arts & Scis. 7 v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) (finding UCL and FAL 8 claims “substantially congruent” to Lanham Act trademark infringement claims); E. & J. Gallo 9 Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (“The core element of trademark 10 infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to 11 confuse customers about the source of the products.”). 12 To determine whether a likelihood of consumer confusion exists, courts in the Ninth 13 Circuit rely “on the eight-factor Sleekcraft test, which reviews: (1) the strength of the mark; (2) 14 proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actual 15 confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be 16 exercised by the purchaser; (7) the defendant’s intent in selecting the mark; and (8) the likelihood 17 of expansion of the product lines.” JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 18 1098, 1106 (9th Cir. 2016) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 19 1979)), abrogated in part on other grounds by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 20 792, 810 (9th Cir. 2003). “The factors are non-exhaustive and applied flexibly; the Sleekcraft 21 factors are not intended to be a rote checklist.” Id. (internal quotation marks and citation omitted). 22 The Court finds nearly all Sleekcraft factors weigh in favor of granting Glydways’s 23 motion. First, the GLYD Mark is weak. A mark’s strength consists of “two components: the 24 mark’s recognition in the market (i.e., its commercial strength) and the mark’s inherent 25

26 5 Given the Court’s finding of a lack of confusion, the Court need not examine arguments 27 regarding the other elements for these claims. Case No.: 5:23-cv-00203-EJD 1 distinctiveness (i.e., its conceptual strength).” Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 2 F.3d 426, 432 (9th Cir. 2017). There is no evidence that Glyd satisfies either component. As for 3 the GLYD Mark’s recognition in the market, Glyd admitted in the RFAs that it does not offer 4 goods or services anywhere in the United States, and it does not market its services in the United 5 States. But even looking beyond the admissions, the only other evidence relevant to this inquiry is 6 Bhasin’s testimony that since 2020, Glyd has generated an annual revenue of only a few thousand 7 dollars, with the highest being $7,000 in 2024. Bhasin Dep. 51:17–54:25, ECF No. 95-8. This 8 evidence, even if admissible, does not show commercial strength, and there remains no evidence 9 regarding Glyd’s marketing efforts and marketing reach. See Brookfield Commc’ns, Inc. v. 10 W. Coast Ent. Corp., 174 F.3d 1036, 1058 (9th Cir. 1999) (affirming district court’s finding that a 11 mark was weak despite the five-year use of the mark and expenditure of $100,000 in marketing). 12 As for Glyd’s conceptual strength, the Court finds no evidence that the distinctiveness of the term 13 “Glyd” is strong enough to overcome the commercial weakness found above. See Houdini, Inc. v. 14 Metrokane Corp., No. CV 08-3076 PA (FMOX), 2008 WL 11340383, at *4 (C.D. Cal. Aug. 15 4, 2008) (finding even a strong showing of conceptual strength did not overcome a weak showing 16 of commercial strength). 17 Second, the parties’ services are unrelated. If the parties “[do] not compete to any extent 18 whatsoever, the likelihood of confusion would probably be remote.” Brookfield, 174 F.3d at 1056. 19 The Court finds any likelihood of confusion remote given that the parties do not compete to any 20 extent. Glydways’s mass transit system bears no relation to Glyd’s “peer-to-peer” marketplace 21 platform. 22 Third, however, the Court cannot say as a matter of law that the marks are dissimilar. 23 Under this factor, “[t]he marks must be considered in their entirety and as they appear in the 24 marketplace.” Off. Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993) (citing 25 Nutri/Sys., Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 605–06 (9th Cir. 1987) (emphasis added)). 26 “[I]n determining whether marks are similar, courts may look to lettering styles and capitalization, 27 Case No.: 5:23-cv-00203-EJD 1 colors, locations of the mark on the product, prominence, sound and meaning.” Monster Energy 2 Co. v. BeastUp LLC, 395 F. Supp. 3d 1334, 1354 (E.D. Cal. 2019) (citing Pom Wonderful LLC v. 3 Hubbard, 775 F.3d 1118, 1128–29 (9th Cir. 2014)). Though not identical, the two marks here 4 both appear at times in all capital white font displayed on a blue background. These similarities 5 could present a question of fact inappropriate for a motion for summary judgment. 6 Fourth, there is no evidence of actual customer confusion in the United States. Although 7 there is evidence that Glyd received four emails that could be interpreted as customer confusion, 8 the evidence also shows that these emails were sent from persons located in India. Accordingly, 9 even if the emails did show actual customer confusion, they represent a de minimis number of 10 potential customers and are not relevant to consumer confusion inside the United States. See 11 Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412, 424 (2023) (“When a claim involves 12 both domestic and foreign activity, the question is whether the conduct relevant to the statute’s 13 focus occurred in the United States.”) (internal quotation marks omitted); see also Entrepreneur 14 Media, Inc. v. Smith, 279 F.3d 1135, 1151 (9th Cir. 2002) (“To constitute trademark infringement, 15 use of a mark must be likely to confuse an appreciable number of people as to the source of the 16 product.”) (emphasis added); Stonefire Grill, Inc. v. FGF Brands, Inc., 987 F. Supp. 2d 1023, 17 1053 (C.D. Cal. 2013) (finding “eight examples of potential consumer confusion in the record do 18 not support a finding that any appreciable number of consumers is confused by the two marks”). 19 Fifth, the evidence shows the parties have different marketing channels. Glydways largely 20 uses person-to-person marketing tactics to reach public agencies, whereas Glyd relies largely on 21 its online presence, including social media. See Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 22 1150, 1166 (9th Cir. 2021). 23 Sixth, purchasers must exhibit a considerable degree of care when accessing either party’s 24 services. Glydways’s services are marketed to governmental agencies and large scale developers 25 who are subject to stringent regulations regarding infrastructure projects, requiring years and 26 millions of dollars to design and develop infrastructure, conduct studies, and hold public meetings. 27 Case No.: 5:23-cv-00203-EJD 1 Given this high degree of care, a governmental agency would not accidentally choose Glyd to 2 operate a mass transit system. Glyd also requires customers use a high degree of care to access its 3 services. Glyd markets to individuals who generally must download an app, register, and buy or 4 advertise for sale a specific good or service. 5 Seventh, there is no evidence that Glydways intended to trade on Glyd’s goodwill. The 6 evidence shows that Glydways adopted the GLYDWAYS Mark to use in the future without any 7 knowledge of Glyd or its purported use of the GLYD Mark. 8 Finally, there is no evidence “that either party may expand [its] business to compete with 9 the other . . . ” in the same geographic location. Sleekcraft, 599 F.2d at 354. 10 Accordingly, the Court GRANTS Glydways’s motion for summary judgment on its claims 11 for declaratory relief that it did not infringe on, or falsely designate, the GLYD Mark under the 12 Lanham Act; and judgment on Glyd’s counterclaims for common law trademark infringement, 13 unfair competition under California state law, and unfair and deceptive trade practices predicated 14 upon the Lanham Act and the California UCL. 15 2. Trademark Dilution 16 Next, Glydways seeks judgment on Glyd’s counterclaims for federal trademark dilution 17 under the Lanham Act and state trademark dilution and injury to business reputation under Cal. 18 Bus. & Prof. Code § 14247. 19 Trademark dilution claims under federal and California state law both require the claimant 20 to prove its mark is “famous.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008) 21 (“Mattel brought dilution claims under both federal and California state law. The analysis under 22 each is the same.”); 15 U.S.C. § 1125(c); Cal. Bus. & Prof. Code § 14247. A “mark is famous if it 23 is widely recognized by the general consuming public of the United States as a designation of 24 source of the goods or services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A), accord Cal. 25 Bus. & Prof. Code § 14247(a). “Dilution is a cause of action invented and reserved for a select 26 class of marks—those marks with such powerful consumer associations that even non-competing 27 Case No.: 5:23-cv-00203-EJD 1 uses can impinge on their value.” Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 2 1999). As a result, “to meet the famousness element of protection under the dilution statutes, a 3 mark [must] be truly prominent and renowned.” Id. (internal quotation marks omitted). 4 Here, the Court finds no evidence of the GLYD Mark being “famous.” Glyd is not a 5 household name in par with NIKE or McDonalds; the evidence shows little to no sales; and there 6 is no evidence of actual recognition. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 7 1356, 1373 (Fed. Cir. 2012) (finding COACH for handbags and leather goods is not a “famous” 8 mark); Bhasin Dep. 102:9–23 (admitting that the GLYD Mark is not a household name and is not 9 as famous as the marks NIKE, MCDONALD’S, COACH, or DELL). 10 The Court therefore GRANTS Glydways’s motion for judgment on Glyd’s counterclaims 11 for federal trademark dilution under the Lanham Act and state trademark dilution and injury to 12 business reputation under Cal. Bus. & Prof. Code § 14247. 13 3. Cancellation of Registration 14 Finally, Glydways seeks judgment on its claim for cancellation of the GLYD Mark based 15 on nonuse and/or fraud. 16 “In any action involving a registered mark the court may determine the right to 17 registration, order the cancelation of registrations, in whole or in part, restore canceled 18 registrations, and otherwise rectify the register with respect to the registrations of any party to the 19 action.” 15 U.S.C. § 1119. The Lanham Act authorizes trademark cancellation where a party 20 obtained the marks by fraud. Id. §§ 1064(3), 1119; see MIH Allegro BV v. Fang, No. 21 LACV1406510JAKASX, 2015 WL 12655399, at *8–9 (C.D. Cal. Jan. 12, 2015). “A party may 22 seek cancellation of a registered trademark on the basis of fraud under 15 U.S.C. § 1064(c) by 23 proving a false representation regarding a material fact, the registrant’s knowledge or belief that 24 the representation is false, the intent to induce reliance upon the misrepresentation and reasonable 25 reliance thereon, and damages proximately resulting from the reliance.” Robi v. Five Platters, 26 Inc., 918 F.2d 1439, 1444 (9th Cir. 1990). 27 Case No.: 5:23-cv-00203-EJD 1 The Court finds Glydways failed to introduce evidence sufficient to satisfy each element of 2 this claim. Glydways argues that the GLYD Mark was acquired based on fraud because it made a 3 material misrepresentation in a statement submitted to the USPTO. On April 4, 2016, Glyd 4 submitted an application stating under penalty of perjury that it had not yet used the designation 5 “GLYD,” by selecting the classification “intent to use” for that application. Fact No. 47. Later, 6 however, Glyd represented under penalty of perjury to the USPTO that it first used “GLYD” in 7 commerce in connection with all services on April 13, 2015. Fact No. 48. Glyd has never 8 produced any evidence that it rendered any services under the “GLYD” designation on April 13, 9 2015. While these facts could be used to support the first element—establishing that Glyd made a 10 false representation regarding a material fact—they do not satisfy the remaining elements. 11 Glydways has still failed to introduce undisputed material facts to show, as a matter of law, that 12 Glyd knew the representation was false, intended to induce reliance on the misrepresentation, in 13 fact induced reliance, and caused Glydways to incur damages resulting from the reliance. 14 Therefore, the Court DENIES Glydways’s motion for judgment on its claim for 15 cancellation of registration. 16 C. Motions to Exclude and Strike 17 The remaining motions pending before the Court are moot. In Glydways’s motion to 18 exclude the opinion of Glyd’s expert, Michael Malkiewicz, Glydways highlights that the purpose 19 of Malkiewicz’s report is twofold: (1) “to evaluate whether there is evidence that [Plaintiff’s] 20 anticipated products and services that incorporate marks accused of infringement have caused or 21 likely will cause confusion among an appreciable number of relevant consumers,” and (2) “to 22 analyze economic damages and/or monetary relief available to [Defendant] as a result of its 23 allegations against [Plaintiff].” Malkiewicz Expert Report 3, ECF No. 92-3. Given that the Court 24 has dismissed all of Glyd’s counterclaims, including its claims for trademark infringement, 25 Malkiewicz’s opinion is now irrelevant to this case. 6 Similarly, the Court’s dismissal of Glyd’s 26

27 6 If the parties anticipate that Malkiewicz’s testimony will become relevant to the remaining Case No.: 5:23-cv-00203-EJD 1 counterclaims moots Glydways’s motion to strike Glyd’s jury demand. The Court therefore 2 || TERMINATES Glydways’s motion to exclude and motion to strike as moot. 3 || IV. CONCLUSION 4 Based on the foregoing, the Court DENIES Glyd’s motion for leave; GRANTS IN PART 5 and DENIES IN PART Glydways’s motion for summary judgment; and TERMINATES AS 6 || MOOT Glydways’s motions to strike the jury demand and exclude Glyd’s expert. 7 The Court SETS a Trial Setting Conference for Thursday, December 4, 2025, at 11:00 8 a.m. The parties’ Joint Trial Setting Conference Statement is due by November 24, 2025. 9 IT IS SO ORDERED. 10 Dated: October 23, 2025 11 aq 12 EDWARD J. DAVILA 13 United States District Judge

15 16

Z 18 19 20 21 22 23 24 25 26 27 cancellation claim at trial, Glydways may re-notice its motion at that time. Case No.: 5:23-cv-00203-EJD 28 || ORDER DEN. MOT. FOR LEAVE; GRANTING IN PART DEN. IN PART MOT. FOR SUMM. J.; TERMINATING REMAINING MOTS.