Do Federal Courts Have Jurisdiction Over Pending Trademark Applications? Sometimes …

Pending Trademark Applications & Litigation

It seems axiomatic that a federal district court has jurisdiction to decide whether a pending federal trademark application can be registered or not. Yet, the truth is a federal district court only has power over pending federal trademark applications under certain circumstances.

15 U.S.C. § 1119 – Power of court over registration

The operative statute is 15 U.S.C. § 1119:

In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

Clearly, according to the language of the statute, a federal court can can cancel, restore, or rectify trademark registrations.

But what about pending trademark applications? The statute does not even mention the word application(s)—only registration(s). The closest it comes is the very first clause of the statute that reads “[i]n any action involving a registered mark the court may determine the right to registration.” Does the phrase “determine the right to registration” refer to determining whether a pending application can register? And what about the first part of that phrase, “[i]n any action involving a registered mark”? What if the action does not involve a registered mark but only a pending federal trademark application? If that’s the case, does it mean that the court may not determine the right to registration?

No Registration, No Jurisdiction Over Pending Applications

Courts interpreting 15 U.S.C. § 1119 have concluded that, if a lawsuit does not involve a federal trademark registration, then a court does not have jurisdiction over a pending federal trademark application. 5 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 30:113.50 (4th ed. 2012) (“[F]ederal courts have held that they have no jurisdiction or power to cancel a pending trademark application which has not matured into a registration.”); Zany Toys, LLC v. Pearl Enters., LLC, 2015 U.S. Dist. LEXIS 10059, *16 (D.N.J. 2015) (granting motion to dismiss plaintiff’s claim to deny registration of defendant’s trademark application for lack of jurisdiction because “unlike the cases cited by Plaintiff in its brief—there is no registered mark held by either party.”)

If a Registration Is Involved, There’s Jurisdiction Over Pending Applications

On the other hand, if the lawsuit involves a federal trademark registration, then the court does have jurisdiction over pending federal trademark applications. Undefeated, Inc. v. UNCL, LLC, 2013 U.S. Dist. LEXIS 197995, *4 (C.D. Cal. 2013) (denying motion for summary judgment based on lack of jurisdiciton under § 1119 because the action involved claims for cancellation of UNCL’s related registered mark); Belstone Capital, LLC v. Bellstone Partners, LLC, 2017 U.S. Dist. LEXIS 46015, *9 (E.D. Cal. 2017) (“As provided by 15 U.S.C. § 1119, courts have the power to cancel a registered trademark, as well as ‘any pending trademark applications relating to the [registered mark].'”).

But There Has To Be a Nexus Between the Pending Application and Existing Registration

A federal court can determine the registerability of a trademark application in an action involving a registered mark if there is a sufficient nexus between the pending application and the dispute involving the registered mark. Johnny Blastoff Inc. v. Los Angeles Rams Football Co., 1998 U.S. Dist. LEXIS 11919, *31-32 (W.D. Wis. 1998); 5 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 30:113.50 (4th ed. 2012); Wind Turbine Indus. Corp. v. Jacobs Wind Elec. Co., 2010 U.S. Dist. LEXIS 121372, *32-33 (D. Minn. 2010) (§ 1119 should be read broadly to allow court to determine registerability of application when the registerability of the mark involved in the application is intertwined with existing registrations); Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, 614-15 (2d Cir. 1960) (court has authority to review initial registerability of trademark where such determination is tied directly to an existing registration).

Workarounds

Ordering a Party to Expressly Abandon Its Trademark Application

Even if a federal court does not have jurisdiction over a pending federal trademark application pursuant to 15 U.S.C. § 1119, the court has jurisdiction over the parties to the lawsuit. Therefore, even if the court cannot order the USPTO to abandon the application, the court can presumably order a party to expressly abandon its trademark application.

In fact, the Ninth Circuit affirmed an order issued by the District of Nevada requiring a party to abandon its trademark application:

The district court did not abuse its discretion by ordering the parties to withdraw any pending trademark applications relating to the Airs family of trademarks …

Airs Fragrance Prods. v. Clover Gifts, Inc., 395 Fed. Appx. 482, 485 (9th Cir. 2010).

In Undefeated v. UNCL, the Central District of California reached the same conclusion:

because the Court possesses jurisdiction over the action and the parties, the Court could fashion a remedy … even if the Court may otherwise lack jurisdiction over the Amended Counterclaim’s declaratory judgment claim because it involves a pending application rather than a registration. Specifically, … the Court could order Undefeated to withdraw its pending [ ] applications.

Undefeated, Inc. v. UNCL, LLC, 2013 U.S. Dist. LEXIS 197995, *5 (C.D. Cal. 2013).

Issuing a Judgment Deciding the Issue of Infringement

Absent settlement, in a trademark infringement lawsuit, a federal court will ultimately decide the issue of trademark infringement. This, in turn, becomes a de facto determination on whether a trademark application is entitled to register or not—even if the court does not direct the USPTO to abandon the application.

For example, if a plaintiff sues a defendant for trademark infringement based on its common law trademark rights and prevails, a federal court will have issued a judgment to that effect. And if that defendant either has an existing pending trademark application or subsquently files an application, the plaintiff can oppose the defendant’s application at the appropriate time before the Trademark Trial and Appeal Board (“TTAB”). The federal court’s judgment should constitute res judicata and the TTAB should defer to that judgment and order the application be abandoned. Moreover, by continuing with the application, the defendant would presumably continue to infringe (because, in order to register, the trademark must be in use).

The Last Word

Clearly, an applicant cannot avoid a TTAB opposition proceeding by filing a lawsuit for a declaratory judgment in federal court if neither the applicant nor the other party has a federal trademark registration, and vice-versa. But the issue can still be decided in a satisfactory way through a trademark infringement lawsuit—either by obtaining an order directing a party to withdraw the application or by obtaining a judgment that will decide the likelihood of confusion and infringement issue (and/or another dispositive registration issue) and function as res judicata. So 15 U.S.C. § 1119 should not pose an obstacle to relief in federal court.

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Bruno Tarabichi