The U.S. District Court for the Central District of California has held that filing a trademark opposition, which is an administrative proceeding before the Trademark Trial and Appeal Board ("TTAB") of the U.S. Patent and Trademark Office ("USPTO"), does not create a case or controversy for a declaratory judgment action in Purely Driven Products, LLC v. Chillovino, LLC, No. 15-982.
Plaintiffs Purely Driven Products LLC and John Alphonse Iavarone applied to register their CHILLAVINO mark with the USPTO on June 5, 2015, and that mark is currently being opposed by Defendants Chillovino LLC at the TTAB. Plaintiff's complaint sought: (1) declaratory judgment of no trademark infringement or unfair competition; and (2) declaratory judgment of Plaintiffs’ right to use and register the mark CHILLAVINO on goods listed in its federal trademark application.
U.S. District Judge Consuelo Marshall held on March 22, 2016, that "the Court lacks subject matter jurisdiction over Plaintiffs’ declaratory judgment claims" because "there is no evidence that Defendants have threatened to file or filed any infringement claims against Plaintiffs, and Defendants expressly disclaimed threatening Plaintiffs with an infringement action."
Plaintiffs Purely Driven Products LLC and John Alphonse Iavarone were represented by Mark Wine of Orrick, Herrington & Sutcliffe LLP.
Defendants Chillovino LLC and Cigdem Harms were represented by James Juo of Fulwider Patton LLP.