RAW power: over dissent, 9th Circuit orders trial on infringement, cancellation of TM applications

BBK Tobacco &Foods LLP v. Central Coast Agriculture, Inc., --- F.4th ----, 2024 WL 1356981, Nos.22-16190, 22-16281 (9^th Cir. Apr. 1, 2023)

Over a dissent, thepanel reverses the grant of summary judgment on noninfringement, reasoning thatthe overlap in the use of the (descriptive) word RAW between the parties’ somewhatrelated products was enough to avoid summary judgment—which should rarely begranted in trademark cases (ugh), despite major visual differences and the lack of actual confusion evidenceand low confusion rates shown by the parties’ surveys.

plaintiff's RAW defendant's Raw GardenAlso over a dissent,the panel finds that a court can order trademark applicationscancelled, not just registrations. (The panel did affirm the refusal to cancel defendant’sregistrations on grounds of unlawful use, since they weren’t for unlawfulitems.)

BBK sells smoking-related products with RAW branding; CCAallegedly infringed by selling cannabisproducts with the mark “Raw Garden.” BBK sought to cancel several of CCA’strademark applications for lack of bona fide intent to use the mark incommerce. “We hold that, under 15 U.S.C. § 1119, when an action involves aclaim of infringement on a registered trademark, a district court also hasjurisdiction to consider challenges to the trademark applications of a party tothe action. We also hold that lack of bona fide intent to use a mark incommerce is a valid basis to challenge a trademark application.”

The dissentdisagreed, given that the statutory language is:

In any action involving a registered mark the court may determine theright to registration, order the cancelation of registrations, in whole or inpart, restore canceled registrations, and otherwise rectify the register withrespect to the registrations of any party to the action.

But, the majorityreasoned, the Lanham Act refers to an “[a]pplication for use of trademark” as a“request [for] registration of [a] trademark on the principal register.” “Achallenge to an application thus necessarily affects the applicant’s right to aregistration…. Indeed, some of the dissent’s own examples use the term ‘rightto registration’ when adjudicating an opposition to an application.” Adjudicatingapplications in a single action was good for speed and efficiency.

The dissent wouldhave allowed the PTO’s iterative registration process to go forward. Thedissent would have interpreted “right to registration” in the relevantprovision to mean “the court’s authority to adjudicate the ownership, scope,priority, and use of trademarks, which may entitle a party to registration ofthe mark.” That is, courts could determine who has rights to a trademark, butthat’s not the same thing as cancelling pending trademark applications, as theuse of “otherwise” in the final phrase of § 1119 indicates. “Of course, theright to registration may affect the applications’ adjudication. But thatdoesn’t alter Congress’s choice to leave decisions over trademark applicationsto the PTO.” Noscitur a sociis also supported excluding the authority to canceltrademark applications from § 1119. “Given the neighboring terms, we shouldlikewise read ‘right to registration’ as only a power over completedregistrations.” (The section title—“Power of court over registration”—also suggestedthat federal courts lack jurisdiction to cancel pending trademark applications.“Though a statutory title may never ‘limit the plain meaning of the text,’ atitle may sometimes be a helpful interpretative tool.”)