November 16, 2017
Authored and Edited by Jonathan Uffelman; Naresh Kilaru; Julia Anne Matheson
The District of Maryland ruled that the mere threat of a TTAB cancellation proceeding is not sufficient to create a case or controversy to allow the trademark owner to bring a declaratory judgment action for trademark validity.
TEKsystems, Inc. offers information and technology staffing services. It owns a trademark registration for TEKSAVVY in connection with a blog it has maintained since 2012. TekSavvy Solutions is a Canadian company in the telecommunications and web development industry. It uses “TekSavvy” as its company name, as well as for a blog it claims to have operated since 2011. TekSavvy sought to register the mark TEKSAVVY in the United States for telecommunications and technology services, but its registration was refused on the basis of TEKsystem’s registration for blogs. TekSavvy sought a consent letter from TEKsystems, asserting that TekSavvy had superior rights to the TEKSAVVY mark based on its prior use, which gave it the “option” of seeking cancellation of TEKsystem’s registration. In response, TEKsystems filed suit asserting trademark infringement, and also sought a declaratory judgment that its trademark was valid.
TekSavvy moved to dismiss both claims. With respect to the request for declaratory judgment, TekSavvy asserted that no case or controversy existed because it never threatened litigation. At most, it had threatened a cancellation proceeding at the TTAB, which it argued was insufficient to support a declaratory judgment action. The Court agreed. Though TEKsystems cited several cases holding that a controversy can exist without an explicit threat of litigation, in each case the declaratory judgment plaintiff had sued because it feared an impending infringement suit. Here, by contrast, TEKsystems faced only a cancellation action.
Accordingly, the Court dismissed TEKsystem’s declaratory judgment action, but allowed the infringement claim to proceed.
The case is TEKsystems, Inc. v. TekSavvy Solutions, Inc., Case No. ELH-16-4125 (D. Md. Oct. 25, 2017).
Copyright © 2017 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Seminar
Intellectual Property in the Age of AI: What Do You Own and How Do You Balance Risks?
September 25, 2024
Boston
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.