Tuesday, October 03, 2006

US District Court Dismisses Cancellation Respondent's DJ Action: No Justiciable Controversy

The U.S. District Court for the District of Massachusetts yesterday dismissed a declaratory judgment action brought by a trademark registrant who, facing a cancellation proceeding, sought a declaratory judgment of non-infringement. Commonwealth Business Media, Inc. v. The Massachusetts Institute for a New Commonwealth, Civil Action No. 06-10744-RGS (D. Mass. October 2, 2006). [TTABlog notice: Foley Hoag LLP, including yours truly, represented The Massachusetts Institute for a New Commonwealth (MassINC) in this case].

Defendant MassINC had commenced a cancellation proceeding before the TTAB in light of the PTO's refusal to register the mark COMMONWEALTH for a magazine in the field of politics and public affairs. The PTO maintained that the mark was likely to cause confusion with the registered mark COMMONWEALTH BUSINESS MEDIA, owned by Commonwealth Business Media, Inc. (CBM) for a "house mark" for various magazines.

MassINC wrote to CBM seeking an amicable resolution of the matter, and included a draft Petition for Cancellation. MassINC proposed certain limitation on CBM's use of the word "Commonwealth," but the parties failed to reach agreement.

MassINC then filed its Petition for Cancellation. After further unsuccessful negotiations, CBM brought its declaratory judgment action, seeking a declaration that use of its mark does not infringe MassINC's mark and that CBM is entitled to registration. As usual, the TTAB suspended the cancellation proceeding pending the outcome of the civil action.

MassINC then filed a Rule 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, arguing that it never threatened CBM with an infringement suit and that the dispute between the parties centers only on trademark registration issues.

Judge Richard G. Stearns noted that at oral argument MassINC's counsel "flatly stated that it had no intention of bringing an infringement suit against CBM on the facts presently known to it." The court distinguished the cases relied upon by CBM, finding persuasive MassINC's assertion that "it does not share a customer base with CBM or compete in the same market." Judge Stearns concluded that there did not exist a case or controversy because CBM did not reasonably anticipate having to defend itself against a future infringement claim.

The district court therefore granted the motion to dismiss.

TTABlog note: For a general discussion of declaratory judgment actions in the trademark context, see the recent Trademark Reporter article by D. Peter Harvey and Seth I Appel, "The Declaratory Judgment Response to a Cease and Desist Letter: 'First-to-File' or 'Procedural Fencing'?," 96 TMR 639 (May-June 2006).

[A thank you to The Trademark Reporter for granting permission to provide a link to the Harvey and Appel article. Copyright © 2006 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 96 TMR 974 (July-August 2008).]

Text Copyright John L. Welch 2006.


At 2:42 PM, Blogger lmw said...

Is there a procedural equivalent to a declaratory judgment action in the TTAB? Meaning, is there a way to seek a Board determination of non-infringment?


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