Threat of Trademark Cancellation Does Not Raise Case or Controversy

Tuesday, October 31, 2017

Plaintiff Teksystems, Inc. filed a Complaint seeking a declaratory judgment of validity of its federal trademark registration for the mark TEKSAVVY (Count I) and asserting trademark infringement (Count II) by the defendant, Teksavvy Solutions, Inc., who had threatened to pursue a cancellation proceeding in the USPTO against the TEKSAVVY registration in order to clear the way for registration of its own trademark application of the mark.  U.S. District Judge Ellen L. Hollander granted the defendant’s motion to dismiss Count I for lack of subject matter jurisdiction because no case or controversy existed, while denying the motion to dismiss Count II for failure to state a claim.  With respect to Count I, Judge Hollander held that the defendant’s threat to initiate, or even the initiation of, a cancellation proceeding against the plaintiff’s registration at the USPTO under 15 U.S.C. § 1119 “does not provide an independent basis of jurisdiction or a standalone cause of action.”  Teksystems, Inc. v. Teksavvy Solutions, Inc., No. ELH-16-4125, 2017 WL 4805234 (D. Md. Oct. 25, 2017).