Background
ComfyGo, Inc. is a mobility-products company that pleads ownership of two USPTO-registered marks identified by registration numbers 6423157 and 5824979, which it associates with the names “ComfyGo” and “Majestic Buvan.” In its First Amended Complaint, ComfyGo sued Fahri Sarikala and Merkur, LLC (doing business as Malisa Mobility) — alleged former resellers — for using the marks to direct customers away from ComfyGo and toward Malisa’s own products. The complaint pleaded eleven causes of action, ranging from California trademark infringement and dilution under Business and Professions Code sections 14245 and 14247 to conversion, misappropriation, accounting, unfair competition under section 17200, false advertising under section 17500, commercial disparagement, and various species of tortious interference.
The defendants demurred and moved to strike portions of the complaint, including the prayer for punitive damages, UCL disgorgement, UCL attorneys’ fees, and several trademark-specific remedies. Judge Richard Lee initially adopted his tentative ruling on the motion to strike, took the demurrer under submission, and ruled on both later the same day.
The Court’s Holding
On California trademark infringement under section 14245, the court found ComfyGo had not adequately tied its pleaded marks to either federal or California registration. The complaint stated ComfyGo “has been the California and Federal trademark holder” of “the service mark of ComfyGo and Majestic Buvan since 2019,” but never expressly pleaded that the marks were registered with the California Secretary of State. The defendants’ request for judicial notice of a California Secretary of State trademark search turned up no record for “comfygo.” The court also noted that ComfyGo failed to specify which of the two marks the defendants actually used. Most critically, section 14245 requires that the alleged infringer act with knowledge that the mark is intended to cause confusion, mistake, or deception. The complaint pleaded only boilerplate intent allegations with no supporting facts, which the court held insufficient. The demurrer to count 1 was sustained with leave to amend.
On trademark dilution under section 14247, the same registration-ambiguity problem recurred, and the court added a substantive defect: nothing in the complaint supported the conclusion that ComfyGo’s marks are “famous and distinctive” within the meaning of the statute. Applying the multi-factor test summarized in Arcsoft, Inc. v. Cyberlink Corp. — covering duration and reach of advertising, sales volume, actual recognition, and registration status — the court found none of the supporting facts pleaded. The dilution count was sustained with leave to amend.
On conversion of a trademark, the court rejected the defendants’ categorical objection that intangible trademark rights cannot be converted under California law. Citing English & Sons, Inc. v. Straw Hat Restaurants, Inc., the court reiterated that California conversion doctrine “does not” exclude trademarks from its scope. Because the complaint sufficiently pleaded ownership, an inconsistent disposition by the defendants, and resulting damages, the demurrer to the conversion count was overruled. That conversion theory then carried the unfair competition count under section 17200, which the court found could plausibly rest on passing-off conduct, and the misappropriation count was sustained with leave to amend for failure to plead any of the elements set out in United States Golf Association v. Arroyo Software Corp.
On the strike motion, the court granted without leave the request to strike disgorgement remedies under the UCL, holding under Cortez v. Purolator Air Filtration Products that section 17203’s equitable arm permits restitution but not disgorgement of all benefits. UCL attorneys’ fees were stricken with leave to plead a contractual, statutory, or equitable hook. Punitive damages were stricken with leave because no facts supporting oppression, fraud, or malice were pleaded. The court let restitution remedies under the UCL stand.
Key Takeaways
- Plaintiffs invoking California trademark infringement under section 14245 must expressly plead registration with the California Secretary of State and must allege facts supporting knowledge or intent to deceive — boilerplate intent language will not survive demurrer.
- State trademark dilution under section 14247 requires pleaded facts supporting fame, including advertising reach, sales volume, actual recognition, and registration history; conclusory “famous and distinctive” allegations are insufficient.
- California conversion law continues to reach trademarks notwithstanding their intangibility — English & Sons remains a useful citation for plaintiffs framing trademark misuse as conversion.
- UCL plaintiffs in California cannot use section 17203 to capture disgorgement of all benefits; the equitable remedy is restitution of money or property unfairly obtained, and Cortez bars broader disgorgement at the pleading stage.
- UCL and FAL plaintiffs seeking attorneys’ fees must affirmatively plead a contractual, statutory, or equitable basis for the award; the statutes themselves do not authorize fees.
Why It Matters
This is a workmanlike trial-court application of California trademark and UCL pleading rules, and it is the kind of order in-house counsel and trademark litigators in California should keep handy. The court tightens what is required at the pleading stage for a section 14245 infringement claim and a section 14247 dilution claim, and it draws a clear line between USPTO federal registrations (which can support federal Lanham Act claims) and California Secretary of State registrations (which the state statutes presuppose). The court’s willingness to let a conversion theory carry trademark misuse is also notable for plaintiffs whose federal infringement claims face Article III or registration-timing problems.
For defendants, the order reaffirms that California complaints alleging trademark abuse frequently overreach at the prayer-for-relief stage. UCL disgorgement and attorneys’-fees prayers will routinely be vulnerable on demurrer or strike motion, and punitive-damages prayers tied to non-contractual claims must rest on concrete oppression, fraud, or malice allegations rather than recital language. Practitioners should expect the surviving conversion, UCL (restitution), and tortious interference counts to drive discovery in this case while ComfyGo decides whether to amend its trademark and disparagement claims.