N.D. Ohio Retains Jurisdiction over Plaintiff's Cancellation Claim After Granting Summary Judgment Aganst its Infringement and Unfair Competition Claims

Plaintiff Gerlach, Inc. asserted four claims in this civil action: unfair competition under the Lanham Act, trademark infringement, deceptive trade practices, and a claim for cancellation of two of defendant's registrations under Section 1119 of the Trademark Act. After the court entered summary judgment in favor of defendant on the first three claims, defendant argued that the court was then divested of jurisdiction over the cancellation claim. The court disagreed. Gerlach, Inc. v. Gerlach Maschinenbau GmbH, Case No 5:19-cv-0601 (August 5, 2022).

The court pointed out that jurisdiction is determined at the time the complaint is filed, and it had jurisdiction over all four claims at that time. A court may lose jurisdiction if, because of post-filing events, there is no longer a case or controversy. This principle does not apply here, however, because a live case or controversy remained as to the fourth count.

Section 119 provides that "in any action" involving a registered mark, the court may determine the right to registration. Based on the word "in any action," courts recognize that Section 1119 does not provide an independent source of federal jurisdiction. Usually a claim for cancellation is made as a counterclaim, but in any case nothing in Section 1119 or the case law disturbs the principle that jurisdiction is determined at the outset of a case, or otherwise divests the court of jurisdiction after summary judgment is granted on the claim(s) that gave the court jurisdiction in the first place.

Cases cited by the defendant hold that once the other claims are dismissed, a cancellation claim cannot stand. But in those cases the other claims were dismissed at the git-go: for example, for lack of standing or failure to state a claim under FRCP 12(b)(6). Nothing in those cases alters the rule that jurisdiction is determined at the outset of a case and there is no requirement to re-determine jurisdiction following summary judgment.

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TTABlogger comment: The court also rejected defendant's assertion that the case should be dismissed in favor of the pending, suspended cancellation proceeding before the TTAB. No dice. This case involves additional registrations.

Text Copyright John L. Welch 2022.