Most U.S. trademark practitioners are aware that Section 37 of the Lanham Act gives district courts the power to cancel a trademark registration. But does it provide an independent basis of jurisdiction for cancellation claims? In other words, can a plaintiff sue for cancellation alone, without bringing any other claims?
The Ninth Circuit Court of Appeals recently confirmed that the answer to both of these questions is "No." In Airs Aromatics v. Victoria's Secret Stores Brand, the plaintiff had brought claims for breach of contract and trademark cancellation. When the district court dismissed both claims for failure to state a claim, the plaintiff appealed only the cancellation claim which forced the Ninth Circuit to consider whether that claim could proceed on its own. The court began by noting Section 37's language that cancellation is available as a remedy in "any action involving a registered mark." It said this language presupposed a preexisting action in which cancellation was sought as a remedy. Based on this interpretation, the court held cancellation is not available as an independent cause of action. The court noted that each circuit to have considered this issue (i.e., the Second, Third, and Federal Circuits) had come to the same conclusion.
Here, because the preexisting breach-of-contract action had been dismissed and had not been appealed, there was no other claim to serve as a peg for jurisdiction. The Ninth Circuit thus had to affirm the dismissal of the cancellation claim on that basis.
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