9th Circuit Rules that Primary Jurisdiction Doctrine Does Not Apply to TTAB Proceedings

The U.S. Court of Appeals for the Ninth Circuit vacated a district court ruling that had dismissed a declaratory judgment trademark infringement action on two grounds: (1) there was no justiciable controversy, and (2) the TTAB had primary jurisdiction. Following the First and Second Circuits, the appellate court held that in these circumstances the primary jurisdiction doctrine does not apply because the TTAB was not "better equipped" to hear the action and because it would be more efficient for the district court to do so. Rhodes v. Avon Prods., Inc., No. 05-56047 (9th Cir. October 15, 2007).


Plaintiffs sought a declaration that several of their trademarks did not infringe upon Avon's registered ANEW marks. In addition to deciding whether there existed a sufficient case or controversy, the court also had to decide whether related, pending TTAB proceedings provided an appropriate basis for the district court to invoke the doctrine of primary jurisdiction in dismissing Plaintiffs' action.

The appellate court held that there did exist a justiciable controversy, and that "although the TTAB provides a forum to address trademark registration issues, the availability of such a forum does not justify the application of the doctrine of primary jurisdiction" as a basis for dismissal of the action.

The district court judge stated that the complaint "should be back where it belongs and be finished there" before the TTAB. The appellate court deemed that to be an invocation of the doctrine of primary jurisdiction.

"The primary jurisdiction doctrine provides: When there is a basis for judicial action, independent of agency proceedings, courts may route the threshold decision as to certain issues to the agency charged with primary responsibility for governmental supervision or control of the particular industry or activity involved."

The First and Second Circuits have decided, under similar circumstances, that the primary jurisdiction doctrine does not apply. The Ninth Circuit agreed.

"Allowing the district court to decline a declaratory judgment action on a primary jurisdiction rationale is sensible only if the agency is better equipped to handle the action. Here, however, Congress has not installed the PTO as the exclusive expert in the field. As noted parties may litigate these issues in a federal court without previously exhausting their claims before the TTAB. *** [W]here, as here, there is a potential infringement lawsuit, federal courts are particularly well-suited to handle the claims so that the parties may quickly obtain a determination of their rights without accruing potential damages."

The court of appeals therefore vacated and remanded, and furthermore granted Plaintiff's request that the case be assigned to a different judge.

Text Copyright John L. Welch 2007.