Count V should also be dismissed for failure to allege facts to establish Diamond V intended to mislead the public. Count VII for cancellation of Diamond V’s registered trademark should be dismissed, as 15 U.S.C. § 1119 does not authorize an offensive independent claim of cancellation. Finally, if the Court dismisses the Lanham Act claims, it should also dismiss the state law claim brought in Count VI for lack of jurisdiction. Dated this 20th day of December, 2016. /s/ Dana L. Oxley MARK L. ZAIGER JASON R. SYTSMA DANA L. OXLEY SHUTTLEWORTH & INGERSOLL, P.L.C. 115 Third Street SE, Ste. 500 PO Box 2107 Cedar Rapids, IA 52401-2107 Phone: 319-365-9461 Fax: 319-365-8443 Email: mlz@shuttleworthlaw.com jrs@shuttleworthlaw.com dlo@shuttleworthlaw.com and JEFFREY A. SIMMONS FOLEY & LARDNER LLP 150 East Gilman Street, Suite 5000 Madison, WI 53703-1482 Phone: 608-258-4267

Count VII for cancellation of Diamond V’s registered trademark should be dismissed, as 15 U.S.C. § 1119 does not provide for an offensive independent claim of cancellation. Finally, if the Court dismisses the Lanham Act claims, it should also dismiss the state law claim brought in Count VI for lack of jurisdiction.

at 874. Here, the independent basis permitting the court to determine the fate of the pending applications challenged by Forever 21 are the registrations issued to Gucci for the same mark, which Gucci is asserting against Forever 21, which makes this a case “involving a registered mark” under 15 U.S.C. § 1119, thereby permitting this court to determine Case 2:17-cv-04706-SJO-E Document 59 Filed 12/22/17 Page 25 of 27 Page ID #:1476 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -20- Case No. 2:17−cv−4706 SJO (Ex) SMRH:484954982.5 FOREVER 21, INC.’S OPPOSITION TO GUCCI AMERICA, INC.’S MOTION FOR PARTIAL DISMISSAL OF THE SECOND AMENDED COMPLAINT whether the pending applications for the same marks can mature to registration. See cases cited supra in Section V A. The court’s opinion in Silver Textile, Inc. v. D Lux Brands, LLC, No.

In any case, even if the Court were to consider additional authorities on this issue that could have been raised in connection with Gucci America’s prior motion, then the overwhelming authorities establish, consistent with the Court’s prior ruling, that under the plain language of § 1119, a court does not have freestanding “power” to order the denial of pending trademark applications. See supra at 11; see also, e.g., Hostzilla, Ltd. v. Hostzilla, Inc., 2013 WL 12142839, at *2 n.4 (C.D. Cal. Feb. 25, 2013) (denying plaintiff’s “requests that the Court order the [USPTO] to cancel Defendant’s Trademark Application” because the court “has no power to do so under 15 U.S.C. § 1119”); GMA Accessories, Inc. v. Idea Nuova, Inc., 157 F. Supp. 2d 234, 241 (S.D.N.Y. 2000) (dismissing claim to “cancel” trademark application and noting the absence of “authority for the proposition that [§ 1119] permits a district court to cancel a pending exists; otherwise, there is nothing for it to be “concurrent” to. See 15 U.S.C. § 1052(d) (“concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce”).

Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 23 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -24- statute that applies only to actions pertaining to the registration or cancellation of a registered trademark. That is not what this action involves, and Mr. Calmese’s wild and unfounded request to cancel all of adidas’s trademark registrations (none of which are genuinely at issue in this action) does not magically transform this action into an action appropriately brought under 15 U.S.C. § 1119. It is well established that while a federal court may determine the validity of a trademark registration that is otherwise before it (e.g., in an infringement dispute), a federal court does not have “jurisdiction under the Declaratory Judgment Act to determine the validity of [a] trademark where there is no issue of infringement.”

Here, the Retailer Defendants have alleged that Plaintiff’s lawsuit is objectively baseless and that GMA is using its mark in bad faith and for an unlawful purpose, specifically injuring the Retailer Defendants and damaging their relationships with their business partners. Those allegations are sufficient to support a claim for cancellation of Plaintiff’s registered marks under 15 U.S.C. § 1119. II.

See Deere & Co., 2016 WL 4443184, at *2 (claims for declaratory judgment regarding trademark infringement, dilution, and unfair competition, and cancellation of trademarks present “no legal (as opposed to equitable) issues … entitling [plaintiff] to a trial by jury”); Empresa Cubana, 123 F. Supp. 2d at 209 (“A claim for cancellation of a trademark registration pursuant to [15 U.S.C. § 1119] is equitable in nature and does not give rise to Case 2:17-cv-04706-SJO-E Document 210 Filed 10/29/18 Page 20 of 21 Page ID #:16625 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -16- Case No. 2:17-cv-4706-SJO (Ex GUCCI’S MEMO OF CONTENTIONS OF FACT AND LAW a jury trial right.”); 15 U.S.C. § 1119 (“[i]n any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations”) (emphasis added). In addition, the parties’ respective affirmative defenses of unclean hands, waiver, acquiescence, estoppel and laches are equitable defenses for which there is no right to a jury trial.

JLC subsequently filed its First Amended Counterclaim (“FAC”) (Dkt. #25). The FAC includes the following causes of action: (1) Cancellation of Trademark Registration Due to Functionality (15 U.S.C. § 1119); (2) Cancellation of Trademark Registration Due to Lack of Inherent Distinctiveness or Secondary Meaning (15 U.S.C. § 1119); (3) Cancellation of Trademark Registration Due to Prior Rights (15 U.S.C. § 1119); (4) Cancellation of Trademark Registration Due to Fraudulent Procurement (15 U.S.C. § 1119); and (5) Damages for Fraudulent Procurement of Trademark (15 U.S.C. § 1120). Although the first three causes of action lack merit, the focus of this Motion to Dismiss is on the fraud based causes of action, namely causes of action (4) and (5) above.

The Seventh Circuit affirmed the district court’s cancellation of the plaintiff’s registration once the plaintiff’s own registration was shown to be invalid. Plaintiff’s registered trademark was “involved in the action” as required by § 1119 because plaintiff asserted that defendant’s actions infringed on plaintiff’s registered trademark.

. Section 1119 reads in its entirety: In any action involving a registered mark the court may determine the right to r