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).