IP Law Daily, TRADEMARK—N.D. Cal.: Motion to dismiss declaratory judgment action regarding HELIOS trademark denied, (Feb 5, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The court found that there was reasonable apprehension that Cohesity will be subject to a trademark infringement suit for the United States use of its trademark because CT’s threats were not limited to the Canadian market.

The U.S. District Court for the Northern District of California denied Cartesian Theatre Corp.’s (CT’s) motion to dismiss, for more definite statement, for a stay, or to strike a Declaratory Judgment Act suit filed by Cohesity, Inc. (Cohesity) against CT seeking a declaration that Cohesity’s use of its trademark “HELIOS” for software products and services did not infringe on CT’s HELIOS trademark. The district court concluded that Cohesity’s allegations established that the district court had jurisdiction and there was no need for a more definite statement (Cohesity, Inc. v. Cartesian Theatre Corp., No. 4:24-cv-09104-JST (N.D. Cal. Feb. 2, 2026)).

Background. Cohesity is a provider of artificial intelligence-powered data security and data management software solutions. Since August 21, 2018, Cohesity has offered a product called Helios, a software-based management solution that enables Cohesity customers to view and manage their data and applications that use a Cohesity solution from a single dashboard. Cohesity applied to register the HELIOS trademark with the United States Patent and Trademark Office (USPTO) on July 2, 2020, and the trademark registered on July 4, 2024.

CT is a Canadian corporation based in Vancouver that has its own ‘HELIOS’ product, which is a music recommendation engine that allows customers to search large commercial music libraries by using music itself as the search key. CT first applied for the HELIOS mark in Canada on or about February 26, 2020. It was approved for publication on June 21, 2024; published for opposition on July 17, 2025; a two-month opposition period closed on September 17, 2025; and the registration formally issued on October 4, 2025. On August 12, 2024, in the middle of the opposition period, CT’s principal and founder Kipling Warner contacted Cohesity. Mr. Warner admitted that CT and Cohesity did not have identical products, but nonetheless, alleged that Cohesity infringed on CT’s trademark, and as a remedy to the alleged infringement demanded that Cohesity license the HELIOS trademark or suffer catastrophic consequences. CT has submitted Warner’s August 12 email to Cohesity’s outside counsel. In the email, Warner noted that Cohesity has applied for Canadian protection for its HELIOS trademark, and that such protection may be refused because of CT’s pending trademark registration.

On August 29, 2024, CT filed a use-based trademark application for the HELIOS trademark in the United States covering downloadable computer software and databases for use in analyzing music in Class 9 and software as a service (SaaS) services featuring computer software for music analysis and management; advisory services in the field of music software development in Class 42. On September 10, 2024, Warner again contacted Cohesity’s outside counsel stating that if the parties were unable to resolve their dispute, CT will begin issuing the currently embargoed notices of infringement. CT then began releasing notices of infringement to third parties. CT asserted that its notices were “carefully crafted to address only infringement in Canada” and not the United States.

Meanwhile, the USPTO issued CT’s Helios mark on September 16, 2025. On December 17, 2024, Cohesity filed a lawsuit seeking a declaration that Cohesity’s use of its trademark for HELIOS software products and services “does not infringe CT’s alleged trademark for HELIOS.” CT filed a motion to stay the case pro se, which the district court struck because CT was not represented by counsel. On July 27, 2025, having obtained counsel, CT moved to dismiss the action under Rules 12(b)(1), 12(b)(2), 12(b)(3) and 12(b)(6), or, in the alternative, to strike the complaint under Rule 12(e).

Subject matter jurisdiction. CT argued that the district court lacked subject matter jurisdiction because there is no case or controversy before the district court, given that the dispute between the parties is limited to CT’s enforcement of its trademark in Canada and that CT has not alleged infringement in the United States. However, the district court noted that CT’s actions taken as a whole are sufficient to establish that Cohesity experienced a reasonable apprehension of suit. When CT proposed that Cohesity take a license to CT’s trademark, it stated that if Cohesity refused “the fallout would inevitably not be contained domestically.” While CT argued that this meant only that “Canadian infringement would impact Cohesity in a way that might require regulatory or other reporting in the United States,” that is not the only plausible reading of the communication. Similarly, CT argued that “correspondence with third parties was carefully limited to actions causing or comprising activities in Canada." Additionally, CT had not only filed a trademark application in the United States shortly after communicating with Cohesity but has since obtained a United States trademark and asserted it against Cohesity. This is more than sufficient to establish reasonable apprehension.

The district court also noted that, in a Declaratory Judgment Act case, having established that there is a case or controversy over which the district court has jurisdiction, the court must decide whether to exercise its jurisdiction by analyzing the factors set out in Brillhart v. Excess Ins. Co., 316 U.S. 491 (1942). The district court determined that none of the Brillhart factors counsel against the exercise of jurisdiction and accordingly elected to exercise its jurisdiction.

Personal jurisdiction. The district court concluded that the allegations in the complaint sufficiently establish personal jurisdiction over CT through specific jurisdiction. The Ninth Circuit has established a three-prong test for analyzing a claim of specific personal jurisdiction: (1) the non-resident defendant must purposefully direct activities with the forum; (2) the claim must be one which arises out of or relates to the defendant's forum related activities; and (3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

The district court found that there was no dispute that CT’s conduct was intentional, and there was evidence that CT expressly aimed its conduct at Cohesity, with the knowledge that Cohesity was based in California. Further, the district court noted that many of the notices’ recipients did not interpret them as reaching only Canadian content and the takedown notices followed other conduct expressly aimed at California-based Cohesity. Additionally, Cohesity’s claims arise out of or relate to CT’s contacts with California because CT enforced its rights in California. Accordingly, Cohesity’s allegations satisfied the first two prongs of the test for specific jurisdiction. The district court also noted that Cohesity has no way of vindicating its rights to the United States trademark in the Canadian courts. Further, the court noted that it is exercising jurisdiction over a United States trademark dispute, which does nothing to restrain the parallel Canadian proceeding or the determination of the Canadian trademark rights. Therefore, the court found that it can exercise specific personal jurisdiction over CT and denied the motion to dismiss for lack of personal jurisdiction.

Improper venue and forum non conveniens. The district court found that CT focused on only one of the public factors, arguing that trying this case in the Northern District of California would burden local jurors. However, this factor does not weigh in favor of dismissal, because the local community does have a relation to the litigation: Cohesity is located in this District. Additionally, other public factors also weighed against dismissal, including that the district court is familiar with U.S. trademark law and there is no conflict of law problem since trademark rights are territorial.

Failure to state a claim. CT argued that Cohesity’s complaint contains several paragraphs alleging that CT made false allegations of infringement, which should be subject to Rule 9(b). However, CT cited no authority, for the proposition that Rule 9(b) applies to trademark infringement or counterfeiting claims. Moreover, the court was also unable to find any case in which the heightened standard was applied to such claims. Accordingly, the motion to dismiss Cohesity’s claims for failure to comply with Rule 9(b) was denied.

More definite statement. The district court found that CT failed to come close to establishing the need for a more definite statement because Warner’s declaration submitted with its motion shows that it knows precisely what Cohesity is alleging and what the basis for its allegations is. Accordingly, CT’s motion for a more definite statement was denied.

Accordingly, the district court denied CT’s motion to dismiss, for more definite statement, for a stay, or to strike.

The Case is No. 4:24-cv-09104-JST.

Judge: Tigar, J.

Attorneys: Anna E. Raimer (Jones Day) for Cohesity, Inc. Gary Stephen Shuster (Gary S. Shuster) for Cartesian Theatre Corp.

Companies: Cohesity, Inc.; Cartesian Theatre Corp.

Cases: Trademark CaliforniaNews GCNNews