In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.Plaintiff BBK Tobacco & Foods LLC (“BBK”) distributes and sells smoking-related products under the RAW trademark. Defendant Central Coast Agriculture, Inc. (“CCA”) sells concentrate and pre-rolled cannabis products under the trademark RAW GARDEN. BBK sued CCA, claiming that CCA infringed its RAW trademarks. BBK also sought to void several of CCA’s federal trademark applications for the RAW GARDEN mark, filed on an intent-to-use basis, due to a lack of bona fide intent to use the mark in commerce.The district court granted BBK’s motion for summary judgment to invalidate CCA’s trademark applications.On appeal, CCA argued that the district court lacked jurisdiction to void trademark applications, and that the Lanham Act provided district courts with only the limited power to invalidate or restore registrations.15 U.S.C. § 1119, which confers this right upon district courts, provides:“In any action involving a r

The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have jurisdiction to alter or cancel trademark applications in an action properly brought under 15 U.S.C. § 1119, and that in the context of challenges to intent-to-use (ITU) applications, proof of a lack of bona fide intent can invalidate. BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc., Case Nos. 22-16190; -16281 (9th Cir. Apr. 1, 2024) (Hurwitz, Desai, JJ.) (Bumatay, J., dissenting).BBK sells and distributes smoking-related products with BBK’s “RAW” branding. Central Coast Agriculture (CCA) sells cannabis products using “Raw Garden” branding. BBK filed a complaint against CCA including claims of trademark infringement and a petition to void several ITU trademark applications owned by CCA for lack of a bona fide intent to use the relevant trademarks in commerce. Instead of disputing the merits of BBK’s claims, CCA argued that the district court had no jurisdiction to adjudicate this issue. The district court granted summary judgment in favor of BBK on its claims to invalidate the trademark applications. CCA appealed.The Ninth Circuit affirmed the summary judgment in favor of BBK on

rt to determine whether SDCCU remains a prevailing party, as the attorneys’ fee statute requires, even absent a trial victory on invalidity and to revisit its exceptional-case determination.The Court also held that CEFCU is subject to personal jurisdiction in California because CEFCU purposefully directed its activity toward California by using its trademarks there and operating several branches in the Bay Area, and by filing a TTAB petition alleging that SDCCU’s trademark (used solely in California) must be cancelled because of CEFCU’s prior use of its markets (used in Illinois and California), and SDCCU’s non-infringement claims arose out of CEFCU’s use of its trademarks in California because those are the same trademarks that CEFCU used to attack SDCCU’s trademark registration in the TTAB proceedings.Finally, the Court held that the district court correctly dismissed without prejudice (instead of with prejudice) CEFCU’s counterclaim seeking to cancel SDCCU’s trademark registration. 15 U.S.C. § 1119 authorizes cancellation only where a party has proved infringement, and since the district court granted summary-judgment of non-infringement, which was not appealed, § 1119 did not give the district court independent jurisdiction over the cancellation claim.[View source.]

These doctrines usually arise in applications for color marks. To comply with these doctrines the court used its authority under 15 U.S.C. § 1119 and amended the registrations to a narrower class of goods and services. Cedar Valley is a good reminder to: 1) carefully draft goods and services descriptions; 2) file applications that can be interpreted as only covering a single mark; 3) select a mark that does not encompass an essential feature of the goods or services; 4) consider listing a specific Pantone color in color mark registrations; and 5) consider seeking to amend a registration pursuant to 15 U.S.C. § 1119 to resolve litigation claims.Cachet Financial Solutions, Inc. v. Hartford Financial, 162 F.Supp.3d 858 (D. Minn. Feb. 5, 2016) Cachet Financial Solutions, Inc. used another company’s intellectual property in their advertisements.

On appeal from the Second Circuit, the case arises from Nike’s lawsuit against YUMS LLC in 2009 for trademark infringement, unfair competition, and dilution under both federal and New York state law. Nike alleged that the design of YUMS’ sneakers infringed on the design of Nike’s Air Force 1 shoe. YUMS counterclaimed seeking to cancel Nike’s registration pursuant to 15 U.S.C. § 1119. Prior to any decision on the merits, Nike gave YUMS a covenant-not-to-sue, which stated that YUMS’ actions no longer infringed or diluted Nike’s trademark.

Following the jury’s verdict, Pink Palm Properties filed a renewed motion for judgment as a matter of law on its counterclaim. The district court granted the motion and, overturning the jury verdict, cancelled the “Royal Palm Properties” service mark pursuant to 15 U.S.C. § 1119. The district court explained that “Royal Palm Properties” had neither “inherent” nor “acquired” distinctiveness and that it is “confusingly similar” to previously registered marks.

According to the plaintiff, the defendants’ “BMF Wheels” trademark was “strikingly similar” to the plaintiff’s logo and registered “BMF” trademark. The plaintiff later added a claim seeking the cancellation of the defendants’ “BMF Wheels” trademark registration pursuant 15 U.S.C. § 1119. The case proceeded to a three-day jury trial, where the jury found that the defendants’ use of the “BMF Wheels” mark and logos created a likelihood of confusion with the plaintiff’s “BMF” mark.

PlayNation also asks for injunctive relief and damages. Pictured below are samples from the Internet of products offered by both companies: The Complaint asserts five counts, including trademark infringement under 15 U.S.C. § 1114(1)(a), unfair competition and false designation of origin under 15 U.S.C. § 1125(a), common law trademark infringement and unfair completion, deceptive trade practices under O.C.G.A. § 10-1-370 et seq., and cancellation of Velex’s trademark registration pursuant to 15 U.S.C. § 1119. The case is PlayNation Play Systems, Inc. d/b/a Gorilla Playsets v. Velex Corporation d/b/a Gorilla Gym, No. 3:14-cv-01046-WBH, filed 04/09/14 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and assigned to U.S. District Judge Willis B. Hunt, Jr.

Id. at 39-41 (contrasting this with the power of courts to cancel certain original design registrations under the Copyright Act, 17 U.S.C. § 1324, and under the Lanham Act, 15 U.S.C. § 1119). It can invalidate the underlying copyright, but not the registration itself – that remedy is solely available from the Copyright Office.

The Ninth Circuit made clear that the cancellation claim could not go forward, at least in federal district court: “The plain language of Section 37 states that cancellation is available in ‘any action involving a registered mark.’ 15 U.S.C. § 1119. This language specifies that cancellation may only be sought if there is already an ongoing action that involves a registered mark; it does not indicate that a cancellation claim is available as an independent cause of action.