United States Ninth Circuit

In an action seeking a declaration that several of plaintiffs' trademarks did not infringe on defendant-Avon's registered marks, dismissal of plaintiffs' case for lack of subject matter jurisdiction is vacated and remanded to a new judge as: 1) the allegations in plaintiffs' complaint alleged a true case or controversy that established subject matter jurisdiction; 2) although the Trademark Trial and Appeal Board provides a forum to address trademark registration issues, the availability of such a forum does not justify the application of the doctrine of primary jurisdiction as a basis for dismissing plaintiffs- federal court action; and 3) under the circumstances of this case, it was an abuse of discretion to decline to assert jurisdiction over plaintiffs' request for declaratory relief.

Appellate Information

• Argued 05/07/2007
• Decided 10/15/2007
• Published 10/15/2007

Judges

• PAEZ, Circuit Judge:, Before:  JOHN T. NOONAN, ANDREW J. KLEINFELD, and RICHARD A. PAEZ, Circuit Judges.

Court

• United States Ninth Circuit

Counsel

• For Appellant:
  
• Steven A. Freund and Donald B. Rosen, Law Offices of Steven A. Freund, A Professional Corporation;  and Howard Posner, Los Angeles, CA, for the plaintiffs-appellants.


• For Appellees:
  
• Michelle M. Graham, and William R. Golden, Jr., Kelley Drye & Warren, LLP, New York, NY, for the defendant-appellee.