Unreported / Non-Citable
Background
Claimable Limited, a London-based seller of claims-management software services, used the CLAIMABLE name through a monthly subscription model. It made its first United States sale in 2013 and continued selling domestically ever since. Claimable Inc., a United States company assisting individuals with appealing insurance-claim denials, began offering its services commercially in October 2024 and also used the word CLAIMABLE to identify both itself and its services. Claimable Limited sued on July 22, 2025, alleging infringement of its asserted common-law service mark in the word CLAIMABLE.
The complaint included Lanham Act infringement and unfair-competition claims plus California common-law and statutory claims, which the court analyzed under the same legal standards as the Lanham Act claims. The parties filed cross-motions for summary judgment on service-mark rights, and Claimable Limited separately moved for summary judgment on infringement. The central questions were whether the London company had made bona fide use of the mark in commerce, how far any common-law rights extended geographically, and whether the court needed to reach likelihood of confusion.
The Court’s Holding
The court held that no genuine factual dispute existed over bona fide use in commerce. It relied on continuous domestic use since 2013, dedicated marketing resources, operation of the claimable.com website, more than 1,000 United States subscription transactions, invoices displaying the CLAIMABLE mark, and increasing sales and signups. It rejected the argument that a common-law mark owner must satisfy an additional market-penetration test merely to establish use in commerce: under Ninth Circuit authority, common-law and registered-mark rights share the same first-in-time, first-in-right use requirement, and market penetration instead informs the territorial scope of the rights.
Applying the market-penetration factors as of October 2024, the court found that no reasonable juror could award nationwide enforcement. Claimable Limited had no more than 54 unique United States customers over roughly eleven years despite describing a potentially enormous customer base. Its advertising evidence lacked geographic distribution, its sales reached at most 26 states with very few customers in many of them, and its growth evidence did not demonstrate nationwide rather than localized expansion. The court nevertheless refused to dismiss every claim with prejudice because localized enforceable rights might still exist in areas where the alleged infringement occurred.
The operative order denied all three summary judgment motions. Under Rule 56(g), however, it treated as established both Claimable Limited's bona fide use of CLAIMABLE in commerce and the absence of nationwide enforceability. Because nationwide enforceability had not been established, the court did not address likelihood of confusion. The decision therefore narrowed the case without finally adjudicating infringement or eliminating the possibility of enforceable rights in particular areas.
Key Takeaways
- Bona fide commercial use and the geographic reach of common-law service-mark rights are distinct inquiries: proving use in commerce does not itself establish nationwide enforceability.
- Continuous sales, marked invoices, marketing, and subscription transactions established use in commerce without a separate threshold market-penetration requirement for common-law marks.
- Fifty-four domestic customers over eleven years, geographically incomplete advertising evidence, and sales concentrated in relatively few states defeated nationwide enforceability on this record.
- The denial of nationwide rights did not justify dismissing all claims with prejudice, because Claimable Limited might still prove enforceable rights in some locations where infringement allegedly occurred.
- Rule 56(g) allowed the court to establish two undisputed facts for the remainder of the case even though it denied every summary judgment motion, and the court expressly left likelihood of confusion unaddressed.
Why It Matters
The decision cleanly separates ownership through genuine commercial use from the territorial reach of an unregistered mark. It explains why evidence sufficient to prove use in commerce may still fall short of supporting nationwide enforcement, particularly when customer numbers are small and advertising, sales, and growth records do not identify a nationwide footprint.
The ruling also preserves a narrower infringement dispute rather than treating the absence of nationwide rights as a complete defense. Future proceedings must address any localized enforceable rights, while the established Rule 56(g) facts remove bona fide use and nationwide enforceability from genuine dispute. The court's refusal to reach likelihood of confusion leaves that infringement issue open.