Defendant Halo Farms asserted that it has not “sought or threatened to sue Lifestyle for use of the HALO SPORTS mark or any other Lifestyle Marks.” Plaintiff Lifestyle pointed to the allegations in the notices of opposition claiming that registration and use of plaintiff’s marks could cause consumer confusion. Lifestyle also claimed that Halo Farms had made oral threats and that it has sued other companies.
The court, however, found no actual case or controversy under the Declaratory Judgment Act. Second Circuit law is well settled that the filing of an opposition “is not by itself a charge or warning of a future charge of infringement.”
Accordingly, absent any allegation that Halo Farm has done more – to wit, that it has threatened Halo Lifestyle with litigation, sent a cease-and-desist letter to Halo Lifestyle, or taken or made statements of a similar character – Halo Lifestyle’s claim of a justiciable controversy would fall short.
Plaintiff Lifestyle did not make any such allegations. There was no explicit oral threat of an infringement action, nor any such written communications.
Defendant Halo Farm’s allegations in the notices of opposition were not tantamount to a threat of litigation. As indicated, the case law is clear that a notice of opposition alone is not a basis for declaratory judgment jurisdiction.
Concluding that it lacked subject matter jurisdiction to adjudicate the matter, the Board granted Halo Farm’s motion to dismiss.
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TTABlog comment: I count at least ten oppositions.
Text Copyright John L. Welch 2019.