Broughton

I. BACKGROUND

24 A. The Underlying Action 25 On October 28, 2014, Broughton applied to register the FYRN trademark for use in 26 the sale of furniture and component parts. Complaint (dkt. 1-1) ¶ 7, Ex. B. The United 27 States Patent and Trademark Office issued the registration to Broughton on January 6, 2016. Id. ¶ 9. Broughton and others then incorporated Fyrn in California on October 3, 2016, and Broughton became Fyrn’s employee. Id. ¶ 10. In the first half of 2017, FSL, a New York furniture company selling furniture under the FERN mark, contacted Fyrn. Id. ¶ 16. FSL asserted that the similarity between the FERN and FYRN marks created a likelihood of confusion in the marketplace and threatened to take legal action if Fyrn continued using the FYRN mark. Id. ¶¶ 17, 18. Fyrn refused to stop using the mark. Id. ¶ 18. On August 24, 2017, FSL petitioned the TTAB to cancel Broughton’s registration of the FYRN mark. Id. ¶ 19. As Broughton’s employer, Fyrn believed that Fyrn was required to pay Broughton’s legal costs incurred defending the mark. Id. ¶ 23 (citing Cal. Labor Code § 2802). Fyrn paid the legal costs and…