Overview
Courts are divided on whether their power to order the
cancellation of trademark registrations extends to still
pending trademark applications under review by the United
States Patent and Trademark Office (USPTO). The Ninth Circuit's
decision in BBK Tobacco expands the courts' authority,
ruling that district courts may cancel or change trademark
applications, even if the applications are not directly related to
a registered mark. This decision adds to an ongoing debate between
a first group of courts that limits power to only registered marks
and a second group that claims broader authority when a challenged
application is sufficiently like an existing registered trademark
involved in the same suit. Although some courts have addressed the
issue since BBK Tobacco, none have fully adopted the
broader powers outlined by the Ninth Circuit.
Background of Inter Partes Trademark
Application Disputes
Under the Lanham Act, district courts have the authority, in any
action involving a registered mark, to (1) determine the right to
registration; (2) order the cancelation of registrations, in whole
or in part; (3) restore canceled registrations; and (4) otherwise
rectify the register with respect to the registrations of any party
to the action.1 Courts are divided on whether the fourth
clause encompasses trademark applications or if it is limited to
registrations.
The Lanham Act and the Trademark Manual of Examining Procedure (TMEP) govern the procedures for the trademark application process. The process begins when an applicant seeking a registered trademark files the mark with the USPTO and certifies that the mark is either in use in commerce or that the applicant intends to use the mark in commerce.2 The USPTO then reviews the trademark application and may reject or approve it. An approved application is published in the USPTO Official Gazette.3
Third parties who believe that they may be damaged by the registration of the published mark may file an opposition against the mark.4 Oppositions are governed by the Trademark Trial and Appeal Board Manual of Procedure (TBMP) and provide an inter partes proceeding by which trademark applications may be challenged.5 An opposition may only be filed in response to the publication of the mark and is subject to a thirty-day filing deadline.6
Previous Circuit Split
Before the Ninth Circuit's decision in BBK Tobacco,
two prevailing perspectives addressed district court authority over
pending trademark applications. The first construed the statute
conservatively to find that courts do not have jurisdiction over
trademark applications, and, therefore, courts could only order the
cancellation of registered trademarks, not applications. This
position was favored by the USPTO and several district courts in
the Third, Seventh, and Eleventh Circuits.7 The second
perspective originated in Continental Connector and argues
that in some cases, judicial economy is best served by considering
trademark applications when there is a sufficient nexus to
litigation involving a registered mark.8 This
"sufficient nexus" can be found, for example, if
"the applicant was a party to the lawsuit and the application
was for a mark sufficiently related to a registered
mark."9 This test has been applied by district
courts in the Second, Fifth, and Sixth Circuits.10
Ninth Circuit Decision
In BBK Tobacco, the Ninth Circuit added to this split by
holding that "district courts have jurisdiction to cancel or
alter trademark applications of parties" and it canceled four
of the defendant's trademark applications.11 The
court did not limit this power over trademark applications, as in
Continental Connector, to instances in which the
applications are canceled or altered alongside similar registered
marks also being canceled or altered.12 In fact, the
Ninth Circuit held that an action only needs to "involve[] a
registered trademark" for a court to have jurisdiction to
cancel trademark applications.13
At the district court¸ BBK Tobacco & Foods LLP (BBK) sued Central Coast Agriculture, Inc. (CCA) for trademark infringement14 BBK alleged CCA's use of the "Raw Garden" mark for cannabis products infringed BBK's own "RAW" mark for smoking products.15 The district court granted summary judgment for BBK and ordered the cancellation of CCA's applications for the "Raw Garden" mark.16 Although not discussed in the case, BBK's "RAW" mark may have been sufficiently similar to CCA's "Raw Garden" mark for the court to claim jurisdiction under Continental Connector.
On appeal, the Ninth Circuit held that "by specifying that a court 'may determine the right to registration,' §1119 grants courts discretion to address the trademark applications and registrations of a party to a suit already involving a registration."17 The court argued additionally that allowing courts to "adjudicate trademark applications when an action already involves a registered mark advances the interest of resolving all registration disputes in a single action."18 Because BBK's trademark registrations were involved in the dispute, the court reasoned that it was not only statutorily permissible but also more efficient to consider CCA's trademark applications in the proceeding.
The Ninth Circuit decision included a lengthy dissent arguing that, without exception, "federal courts lack authority to cancel pending applications for trademark registration."19 The dissent looked to historical deference to patent and trademark tribunals regarding trademark application review20 and asserted that, in its view, Congress created "specific procedures and protections" for the USPTO to adjudicate trademark applications, and courts should not interfere with this process absent explicit statutory authority.21
CCA subsequently filed a petition for an en banc rehearing, which was denied. The USPTO argued in an amicus brief that (1) the Lanham Act only grants district courts powers over registrations, not applications, and (2) allowing district courts this power effectively bypassed the agency's administrative authority.22 The agency pointed out that trademark applications may change in scope over the course of the review process and that a trademark application that is not initially valid or allowable may become allowable later.23 Bypassing this review process prevents the USPTO from "develop[ing] the record and apply[ing] its rules in a way that would facilitate, or even eliminate the need for, judicial review."24 Notably, the USPTO's position appears to run contrary to the Continental Connector test by asserting that there are no circumstances in which a court should direct the cancellation of a trademark application. Future courts may not find the USPTO's position persuasive given the reduced level of agency deference mandated by Loper Bright Enterprises v. Raimondo, overturning the Chevron Doctrine.25
Following Decisions and Future
Considerations
Since BBK Tobacco, a couple of district courts have
addressed this issue, although none has explicitly exercised the
greater jurisdictional powers BBK Tobacco offers. However,
it is possible that by adding a third element to the preexisting
circuit split, BBK Tobacco presents the Continental
Connector test as a more attractive "middle ground"
option.
In Rudy Green, a Western District of Kentucky district court adopted the Continental Connector test and, in doing so, determined that it was unnecessary to address whether or not to adopt BBK Tobacco.26 The court determined that defendant PetSmart's application for the "RUDY'S" mark in connection with rawhide dog chews was sufficiently similar to plaintiff Rudy Green's registered marks for "Rudy Green's Doggy Cuisine," "Rudy Green's," and "Chef Rudy" in connection with pet food.27 Therefore, the court reasoned that it had jurisdiction over Rudy Green's complaint and denied PetSmart's motion to dismiss.29 The Western District of Kentucky applied the same reasoning in Hi-Tech Pharma, declining to consider BBK Tobacco when the narrower Continental Connector test applied.29
In Tekever, a district court in the Eastern District of Virginia declined to apply the BBK Tobacco ruling, holding that although the Plaintiff had a valid common law trademark, the court could not apply BBK unless a registered mark was involved in the action.30
In light of these new decisions, litigants should be aware of jurisdictional differences in interpreting courts' authority under the Lanham Act. Additionally, litigants should be prepared for more courts to apply the Continental Connector test in determining jurisdiction, looking for "sufficient similarities" between challenged trademark applications and trademark registrations involved in a dispute.
footnotes
1 15 U.S.C. § 1119.
2 15 U.S.C. § 1051 (a)-(b); TMEP §1101.
3 15 U.S.C. § 1062.
4 15 U.S.C. § 1063.<
5 TMBP §301.1.
6 15 U.S.C. § 1063; TMBP §301.1
7 See Theia Technologies LLC v. Theia Group, Inc, 2021 WL 291313, at *36 (E.D. Pa. 2021), See WorkForce Software, LLC v. Workforce.com, Inc., 2021 WL 4963608, at *10 (N.D. Ill. 2021); See ALK 2, LLC v. K2 Marine, Inc., 647 F. Supp. 3d 1253, 1261–62 (M.D. Ala. 2022).
8 Cont'l Connector Corp. v. Cont'l Specialties Corp., 413 F. Supp. 1347, 1350 (D. Conn. 1976).
9 Somera Capital Management, LLC v. Somera Road, Inc., 2020 WL 2506352, at *2 (S.D. N.Y. 2020).
10 See Somera 2020 WL 2506352 at *2; See Amy's Ice Creams, Inc. v. Amy's Kitchen, Inc., 60 F. Supp. 3d 738, 744 (W.D. Tex. 2014); See Rudy Green, Inc. v. PetSmart, LLC, No. 3:24-CV-322-RGJ, 2024 WL 4425747, at *4 (W.D. Ky. Oct. 4, 2024).
11 BBK Tobacco & Foods LLP v. Central Agriculture Inc., 97 F.4th 668, 670 (9th Cir. 2024).
12 Id.
13 Id at 669.
14 Id.
15 Id.
16Id.
17 Id at 671.
18 Id.
19 Id at 672.
20 Id at 673.
21 Id at 674.
22 Brief for the United States as Amicus Curiae in Support of Neither Party, from BBK Tobacco, Case No, 22-16190, Dkt 75, at 7-14.
23 Id at 14.
24 Id at 12.
25 See Loper Bright Enterprises v. Raimondo, 144 S.Ct. 2244 (2024).
26 Rudy Green, Inc. v. PetSmart, LLC, No. 3:24-CV-322-RGJ, 2024 WL 4425747, at *4 (W.D. Ky. Oct. 4, 2024).
27 Id.
28 Id.
29 Hi-Tech Pharms., Inc. v. Prime Hydration LLC, No. 3:24-CV-00374-GNS, 2025 WL 361174, at *3 (W.D. Ky. Jan. 31, 2025).
30 Tekever Tecnologias de Informacao, S.A. v. Sinogas, No. 1:23-CV-838 (CMH/WEF), 2024 WL 4719887, at *12 (E.D. Va. Sept. 18, 2024).
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