FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
BBK TOBACCO & FOODS LLP, Nos. 22-16190
DBA HBI International, an Arizona 22-16281
limited liability partnership,
D.C. No. 2:19-cv-
Plaintiff-counter-defendant- 05216-MTL
Appellant / Cross-Appellee,
v. OPINION
CENTRAL COAST
AGRICULTURE, INC., a Delaware
corporation,
Defendant-counter-claimant-
Appellee / Cross-Appellant.
Appeal from the United States District Court
for the District of Arizona
Michael T. Liburdi, District Judge, Presiding
Argued and Submitted September 15, 2023
Arizona State University
Filed April 1, 2024
Before: Andrew D. Hurwitz, Patrick J. Bumatay, and
Roopali H. Desai, Circuit Judges.
2 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
Opinion by Judge Desai;
Dissent by Judge Bumatay
SUMMARY *
Trademark
The panel affirmed in part and reversed in part the
district court’s judgment and remanded in a trademark
infringement action brought by BBK Tobacco & Foods LLP
against Central Coast Agriculture, Inc.
BBK, a distributor and seller of smoking-related
products with trademarked “RAW” branding, alleged that
CCA infringed its mark by selling cannabis products with
the mark “Raw Garden.” The district court dismissed
BBK’s false advertising claim and granted summary
judgment in favor of CCA on BBK’s trademark claims. The
district court granted summary judgment in favor of BBK on
its counterclaim to invalidate several of CCA’s trademark
applications and on CCA’s counterclaim to cancel BBK’s
trademark applications for unlawful use.
The panel affirmed the district court’s grant of summary
judgment in favor of BBK on its claim to invalidate four of
CCA’s trademark applications. The panel held that, under
15 U.S.C. § 1119, when an action involves a claim of
infringement on a registered trademark, a district court also
has jurisdiction to consider challenges to the trademark
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 3
applications of a party to the action. Agreeing with other
circuits and the Trademark Trial and Appeal Board, the
panel also held that lack of a bona fide intent to use a mark
in commerce is a valid basis to challenge a trademark
application.
Dissenting, Judge Bumatay wrote that federal courts lack
authority to cancel pending applications for trademark
registration before the Patent and Trademark Office has even
registered the trademark.
In a separately filed memorandum disposition, the panel
reversed the district court’s summary judgment on BBK’s
trademark claims and affirmed the summary judgment on
CCA’s counterclaim to cancel BBK’s trademark for
unlawful use.
COUNSEL
Bennett E. Cooper (argued), Frank G. Long, and J. Alex
Grimsley, Dickinson Wright PLLC, Phoenix, Arizona;
Charles S. Price, Dickinson Wright/Mariscal Weeks,
Phoenix, Arizona; for Plaintiff-counter-defendant-
Appellant.
Brett M. Schuman (argued) and Jeremy N. Lateiner,
Goodwin Procter LLP, San Francisco, California; Jesse
Lempel, Goodwin Procter LLP, Boston, Massachusetts;
Andrew Kim, Goodwin Procter LLP, Washington, D.C.;
Mitchell L. Turbenson and Brian W. LaCorte, Ballard Spahr
LLP, Phoenix, Arizona; for Defendant-counter-claimant-
Appellee.
4 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
OPINION
DESAI, Circuit Judge:
BBK Tobacco & Foods LLP (“BBK”) distributes and
sells smoking-related products with trademarked “RAW”
branding. It alleges that Central Coast Agriculture, Inc.
(“CCA”) infringed its mark by selling cannabis products
with the mark “Raw Garden.” BBK’s operative complaint
asserts trademark infringement and seeks to cancel several
of CCA’s trademark applications for lack of bona fide intent
to use the mark in commerce. CCA does not dispute the
merits of BBK’s claim to invalidate its trademark
applications, and instead argues the district court lacks
jurisdiction to adjudicate the issue. We hold that, under 15
U.S.C. § 1119, when an action involves a claim of
infringement on a registered trademark, a district court also
has jurisdiction to consider challenges to the trademark
applications of a party to the action. We also hold that lack
of bona fide intent to use a mark in commerce is a valid basis
to challenge a trademark application. 1
BACKGROUND
BBK distributes and sells smoking-related products with
trademarked “RAW” branding. Its products include cigarette
rolling papers, lighters, tobacco shredders, tobacco grinders,
and cigarette or cigar rolling trays. CCA sells “Raw Garden”
branded concentrate and pre-rolled cannabis products.
1
In a separately filed memorandum disposition, we reverse the district
court’s summary judgment on BBK’s trademark claims and affirm the
summary judgment on CCA’s counterclaim to cancel BBK’s trademark
registrations for unlawful use.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 5
BBK claims CCA infringed its RAW trademarks by
producing, using, advertising, distributing, and selling
products with the Raw Garden label. BBK’s amended
complaint alleged seven claims: trademark infringement,
false designation of origin, and anti-cybersquatting under the
Lanham Act; trademark infringement and unfair competition
under Arizona common law; a petition to void several CCA
trademark applications due to a lack of bona fide intent to
use the relevant trademark in commerce; and false
advertising under the Lanham Act. CCA counterclaimed,
seeking to cancel several BBK trademark registrations for
fraud and unlawful use.
The district court granted a motion to dismiss BBK’s
false advertising claim. The parties cross-moved for
summary judgment on all remaining claims. The district
court granted summary judgment in favor of CCA on BBK’s
trademark claims and in favor of BBK on its counterclaim to
invalidate several of CCA’s trademark applications. It
further granted summary judgment in favor of BBK on
CCA’s counterclaim to cancel BBK’s trademark
applications for unlawful use. Both parties appealed.
STANDARD OF REVIEW
We review a grant of summary judgment de novo. Jada
Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008).
Summary judgment is appropriate only if “there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a).
ANALYSIS
BBK seeks to void four of CCA’s intent-to-use
trademark applications, alleging CCA lacked bona fide
6 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
intent to use the marks in commerce. CCA does not
challenge the district court’s finding that it lacked bona fide
intent, and instead argues that the district court lacked
jurisdiction to void trademark applications that had not yet
matured into registrations. We have not addressed whether
district courts have jurisdiction to alter or cancel trademark
applications, and if so, whether lack of bona fide intent is a
proper basis on which a party can challenge a trademark
application. We hold that: (1) district courts have
jurisdiction to alter or cancel trademark applications in an
action properly brought under 15 U.S.C. § 1119; and (2) lack
of bona fide intent is a proper basis on which a party in such
an action can challenge a trademark application.
I. In an action involving a registered mark, district
courts have jurisdiction over the trademark
applications of parties to the action.
We hold that when an action involves a registered
trademark, a district court has jurisdiction to consider
challenges to the trademark applications of parties to the
action. Section 1119 provides:
In any action involving a registered mark the
court may determine the right to registration,
order the cancelation of registrations, in
whole or in part, restore canceled
registrations, and otherwise rectify the
register with respect to the registrations of
any party to the action.
15 U.S.C. § 1119. “This language specifies that cancellation
may only be sought if there is already an ongoing action that
involves a registered mark; it does not indicate that a
cancellation claim is available as an independent cause of
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 7
action.” Airs Aromatics, LLC v. Victoria’s Secret Stores
Brand Mgmt., Inc., 744 F.3d 595, 599 (9th Cir. 2014). But if
there is an underlying registration, Section 1119 permits the
district court to “determine the right to registration” and
“rectify the register with respect to the registrations of any
party to the action.” 15 U.S.C. § 1119.
The district court’s authority to “determine the right to
registration” and “rectify the register” includes the power to
decide disputes over trademark applications. The Lanham
Act refers to an “[a]pplication for use of trademark” as a
“request [for] registration of [a] trademark on the principal
register.” 15 U.S.C. § 1051(a)(1), (b)(1). A challenge to an
application thus necessarily affects the applicant’s right to a
registration. See 15 U.S.C. §§ 1119, 1051(b)(1); see Romag
Fasteners, Inc v. Fossil, Inc., 140 S. Ct. 1492, 1494–95
(2020) (calling for interpretation of the Lanham Act starting
with the plain language of the provision). The plain language
of § 1119 thus grants a district court jurisdiction to consider
challenges to the trademark applications of a party to the
action if the action involves a registered trademark.
The dissent’s examples of a “right to registration” also
referring to the registration itself does not change this
analysis. We agree that the validity of an existing registration
is also covered by § 1119. But the attempt to separate the
validity of an application from the validity of a registration
ignores the definition of an application. Indeed, some of the
dissent’s own examples use the term “right to registration”
when adjudicating an opposition to an application. See
Quaker State Oil Refin. Corp. v. Quaker Oil Corp., 453 F.2d
1296, 1299 (C.C.P.A. 1972); Hollowform, Inc. v. AEH, 515
F.2d 1174, 1176 (C.C.P.A. 1975).
8 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
Permitting a district court to adjudicate trademark
applications when an action already involves a registered
mark advances the interest of resolving all registration
disputes in a single action. “[W]here, as here, there is a
potential infringement lawsuit, federal courts are particularly
well-suited to handle the claims so that parties may quickly
obtain a determination of their rights without accruing
potential damages.” Rhoades v. Avon Prods., Inc., 504 F.3d
1151, 1165 (9th Cir. 2007) (finding a district court abused
its discretion by declining to hear a related registration action
in part because “it would waste everyone’s time” not to settle
a related registration issue in district court). Critically, by
specifying that a court “may determine the right to
registration,” § 1119 grants courts discretion to address the
trademark applications and registrations of a party to a suit
already involving a registration. It does not require district
courts to address claims where these interests in efficiency
or other considerations counsel against adjudicating a right
to registration.
We thus hold that, in an action involving a registered
trademark, district courts have jurisdiction to consider
challenges to a party’s trademark applications.
II. Lack of bona fide intent is a valid basis to seek
cancellation of a trademark application.
An applicant can seek to register a mark under two
alternative bases: (1) if a mark is already being “used in
commerce;” and (2) if the applicant has “a bona fide
intention, under circumstances showing the good faith of
such person, to use a trademark in commerce.” 15 U.S.C.
§ 1051(a)(1), (b)(1). While intent-to-use applicants “can
begin the registration process having only a sincere intent”
to later use the mark in commerce, “the [Lanham Act] also
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 9
requires that applicants filing such intent-to-use applications
must in due course either (i) file a verified statement of actual
use of the mark, or (ii) convert the application into a use
application.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d
1368, 1375 (Fed. Cir. 2015) (citing 15 U.S.C. § 1051(b)(3),
(c), (d)).
Three of our sister circuits and the Trademark Trial and
Appeal Board have held that “lack of a bona fide intent is
proper statutory grounds on which to challenge a trademark
application.” Id.; see Kelly Servs., Inc. v. Creative Harbor,
LLC, 846 F.3d 857, 863–64 (6th Cir. 2017); Aktieselskabet
AF 21. Nov. 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C.
Cir. 2008); L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434,
2012 WL 1267956, at *11 (T.T.A.B. 2012). 2 We agree. As
the Federal Circuit explained, because “[a]n opposer is
‘entitled to rely on any statutory ground which negates [an
applicant]’s right to the subject registration,’” M.Z. Berger,
787 F.3d at 1375 (quoting Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 1031 (C.C.P.A. 1982)), lack of
bona fide intent “is a proper basis on which an opposer can
challenge an applicant’s registration,” id. We thus make
explicit what is already clear from the statutory text and hold
that lack of bona fide intent to use a mark in commerce is a
ground on which a party may oppose a trademark
application.
2
Although not binding, we often refer to the expertise of the Board as
persuasive authority. Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d
1088, 1095 (9th Cir. 2004).
10 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
CONCLUSION
We affirm the district court’s grant of summary
judgment in favor of BBK on its claim to invalidate four of
CCA’s trademark applications.
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED.
BUMATAY, Circuit Judge, dissenting:
Through the Lanham Act, Congress prescribed the
process for applicants to attempt to register trademarks on
the trademark registry. See 15 U.S.C. §§ 1051, 1062.
Congress expressly tasked the U.S. Patent and Trademark
Office (“PTO”) with adjudicating those trademark
applications. Id. § 1062. Applying for a trademark
registration involves an iterative process within the PTO,
sometimes requiring back-and-forth discussions and
multiple internal appeals. See id. §§ 1051, 1062, 1067, 1070.
Unless Congress says so, federal courts generally have
no authority to interfere with these procedures. And while
the Lanham Act permits courts to cancel trademark
registrations once the PTO makes a decision, it does not
permit federal courts to interfere with the PTO’s approval
process and to prematurely cancel pending trademark
registration applications. The Act’s text, structure, and
context confirm this reading.
Because federal courts lack authority to cancel pending
applications for trademark registration, I respectfully dissent
from the majority’s approval of such authority.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 11
I.
This dispute started over the use of “raw” as a trademark.
BBK Tobacco & Foods, LLP (“BBK”) has registered
trademarks in “RAW” for distributing and selling cigarette
rolling papers and smoking accessories. In total, BBK has
19 separate trademark registrations. Central Coast
Agriculture, Inc. (“CCA”) sells cannabis-related products
but uses as a mark “RAW GARDEN.” CCA filed four
trademark applications with the PTO based on its intent to
use the “RAW GARDEN” mark on certain products in
commerce. Those four applications remain pending at the
PTO.
BBK sued CCA in federal district court for trademark
infringement and other claims based on its use of the “RAW
GARDEN” mark. BBK also asked the district court to
cancel CCA’s four pending PTO applications for lack of a
bona fide intent to use those trademarks in commerce. BBK
alleged that CCA has no concrete plans to bring the products
to market years after the application. In response, CCA
counterclaimed, seeking to cancel BBK’s trademark
registrations based on fraud and unlawful use.
The district court granted summary judgment against
BBK’s trademark claims and against CCA’s counterclaims.
“Given the obvious and significant differences between the
parties’ marks, the absence of actual confusion, and the low
net confusion rates generated by the parties’ surveys,” the
district court concluded that no reasonable juror could find
for BBK on the likelihood of confusion issue. In a
concurrently filed memorandum disposition, the majority
and I disagreed on whether the district court’s ruling should
be affirmed. I conclude it should be. The majority and I
12 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
agree that the grant of summary judgment against CCA’s
counterclaims should be affirmed.
But the district court also granted summary judgment for
BBK on its claim to invalidate the four pending CCA
trademark applications. The district court agreed with BBK
that no evidence supported that CCA would use the
challenged marks on the identified goods. The district court
ordered CCA’s four trademark applications to be “invalid
and void for a lack of bona fide intent to use the mark in
commerce.” In this opinion, the majority and I disagree on
whether the district court had the authority to order the four
trademark applications to be cancelled. I conclude it does
not.
II.
Section 1119 establishes that “[i]n any action involving
a registered mark the court may determine the right to
registration, order the cancelation of registrations, in whole
or in part, restore canceled registrations, and otherwise
rectify the register with respect to the registrations of any
party to the action.” Id. § 1119. The parties do not contest
that BBK’s claim for cancellation of CCA’s four trademark
applications is “in an[] action involving a registered mark”
and, thus, I assume § 1119 applies.
At issue then is whether § 1119 of the Lanham Act gives
federal courts the authority to cancel a pending application
for a trademark registration before the PTO has even
registered the trademark. Or does the Act require a
trademark application to mature to an actual registration
before we may step in? Based on the text of the Lanham Act
and the nature of trademark application adjudications, I
would hold that federal courts have no authority to interfere
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 13
with the application for trademark by ordering its
cancellation.
A.
Before examining the text of § 1119, some context is in
order. We must first understand the longstanding
relationship between trademark tribunals and federal courts
and the procedures established by Congress for trademark
application adjudications.
As a historical matter, courts have seemingly always
deferred to patent and trademark tribunals to review
trademark applications in the first instance. See Bos. Rubber
Shoe Co. v. Abramowitz, 47 App. D.C. 199, 201 (D.C. Cir.
1917) (The applicant “is not entitled to have his mark
registered. The question of the right of the [prior registration
and use of the Boston company’s mark to extend to its use
of other kinds of goods and] to have its mark registered is
left open for the further consideration of the Commissioner
of Patents in light of this opinion.”); Van Camp Sea Food
Co. v. Alexander B. Stewart Orgs., 50 F.2d 976, 978
(C.C.P.A. 1931) (explaining that the district court and circuit
court decisions on the descriptive quality of the term
“Chicken of the Sea” or similarity between “Chicken of the
Sea” and “Breast o’Chicken” in an infringement action,
though entitled to deference, are not controlling for the
registrability of the term “White Chicken”).
And today, through the Lanham Act, Congress gave the
PTO the exclusive power to adjudicate trademark
applications. See 15 U.S.C. §§ 1051, 1062. Under the Act,
an applicant must first submit to the PTO an application to
have a trademark registered in the principal registry either
by establishing “first use” of the mark or by asserting a “bona
fide intention” to use the mark. Id. § 1051(a)–(b). Congress
14 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
then directs the PTO to promulgate rules prescribing the
requirements for applications and orders applicants to
“comply” with these rules. Id. § 1051(a)(4), (b)(4).
On receiving the application, Congress directs the PTO
to adjudicate it. The PTO must first refer the application to
an examiner to evaluate the application. See id. § 1062(a).
At this point, if it appears that “the applicant is entitled to
registration,” the PTO is generally directed to publish the
registration. Id. And if an application is “not entitled to
registration,” the applicant is invited to correct any
deficiencies. The applicant can reply or amend the
application, which the PTO must reexamine. Id.
§ 1062(b)(2). This process may reoccur “repeated[ly]”—
until the PTO “finally refuses registration of the mark or the
application is abandoned.” Id. § 1062(b)(1).
Once a PTO examiner makes a final decision, an
applicant can generally appeal the decision to the Trademark
Trial and Appeal Board and to the Director of the PTO. See
id. § 1070. Only then can parties go to federal courts. See
id. § 1071.
Thus, Congress created these specific procedures and
protections within the PTO to adjudicate an applicant’s
trademark registration application. The existence of a
comprehensive and iterative process for reviewing
trademark applications suggests that federal courts should
not interfere lightly by claiming a power to cancel pending
trademark applications. Premature interference would
effectively take power away from the PTO to work with an
applicant to modify, amend, or revise an application.
Without express statutory authority, we should refrain from
this.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 15
And as shown below, Congress has not granted us this
authority.
B.
By its text, § 1119 grants federal courts four specific
authorities over trademark registrations: (1) to “determine
the right to registration”; (2) to “order the cancelation of
registrations”; (3) to “restore canceled registrations”; and
(4) to “otherwise rectify the register with respect to the
registrations of any party.” Id. § 1119. Unless a court’s
action falls within one of these four § 1119 authorities,
federal courts lack the jurisdiction to order a trademark
remedy under the Lanham Act. None of these authorities
authorize federal courts to cancel trademark applications.
To begin, we can knock out three of these authorities as
empowering the cancellation of trademark applications. We
know that cancellation of an application doesn’t fit within
cancelling or restoring “registrations” because applications
are not yet “registrations”—so there’s nothing to cancel or
restore. The same goes with the last authority—the ability
to “rectify” the register with respect to a party’s
“registrations.” Once again, none of CCA’s applications
have been entered into the registry—so there are no
“registrations” to fix. See The Winston Dictionary, 810
(1942) (defining “rectify” as “to correct the faults in; remove
mistakes from; set right”); 2 Practical Standard Dictionary,
952 (1945) (defining “rectify” as “[t]o make right; correct;
[or] amend”); Webster’s Collegiate Dictionary, 832 (5th ed.
1945) (defining “rectify” as “[t]o make or set right; amend”).
So that leaves the authority to “determine the right to
registration.” But again, this doesn’t authorize cancelling
pending trademark registration applications. Indeed,
determining the right to registration doesn’t equate to
16 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
cancelling or modifying trademark applications. Instead, the
right to registration refers to the court’s authority to
adjudicate the ownership, scope, priority, and use of
trademarks, which may entitle a party to registration of the
mark. See Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th
1228, 1236 (9th Cir. 2022).
So what does determining the “right to registration” look
like? Courts have determined who has the “right to
registration” for nearly a century. See, e.g., Trustees for
Arch Preserver Shoe Pats. v. James McCreery & Co., 49
F.2d 1068, 1071 (C.C.P.A. 1931) (“In an opposition
proceeding, where the goods of the parties possess the same
descriptive properties, applicant’s right to registration
depends upon whether his mark will conflict with one
previously adopted and used by opposer, and in the
determination of this question prior registrations by others
are not to be considered.” (simplified)); Kraft-Phenix Cheese
Co. v. Consol. Beverages, 107 F.2d 1004, 1006 (C.C.P.A.
1939) (explaining that a trademark case involving the “right
to registration” must rest on its own facts and precedents are
of little value when analyzing whether a mark application for
“O’Kee-Dokee” on soft drinks interferes with the registered
mark “O-Ke-Doke” on cheese-coated popcorn); Application
of Servel Inc., 181 F.2d 192, 195 (C.C.P.A. 1950) (“The
courts in a proper case may recognize the right to registration
of one part of an owner’s mark consisting of two parts.”);
Quaker State Oil Refin. Corp. v. Quaker Oil Corp., 453 F.2d
1296, 1299 (C.C.P.A. 1972) (deciding the “right to
registration” of the trademark “SUPER BLEND” based on
the “factual situation” of concurrent use “as of the time when
registration is sought”); Application of Marriott Corp., 517
F.2d 1364, 1368–69 (C.C.P.A. 1975) (holding that “[t]he
first user of a trademark in interstate commerce is entitled to
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 17
federal registration of that mark,” and so to determine “the
right to registration . . ., the threshold consideration is that of
first use in interstate commerce”); Hollowform, Inc. v. AEH,
515 F.2d 1174, 1176 (C.C.P.A. 1975) (“Since [opposer’s]
rights in the mark are not superior to [applicant’s] right to
registration, [opposer] cannot be legally ‘damaged,’ as that
term has been construed, by the issuance of a registration to
[applicant].”); Minn. Min. & Mfg. Co. v. Minn. Linseed Oil
Paint Co., 229 F.2d 448, 454 (C.C.P.A. 1956) (affirming the
PTO finding that “[opposer] was without right to challenge
applicant’s right to registration, since it [does not] appear . .
. [to] deal[] in the particular goods (linseed oil and paint
derived therefrom) of which it asserts the notation
‘Minnesota’ is generically descriptive”). All these cases
show that courts weigh in on the “right to registration”
independent of the trademark tribunal’s adjudication of the
application. Thus, § 1119 empowers federal courts to
determine who has rights to a mark.
While courts have the authority to determine respective
rights to registration, it takes quite a leap to also say that
courts may then cancel pending trademark applications.
Though related concepts, figuring out who has a “right to
registration” is a different thing from cancelling applications
for trademark registration. Of course, the right to
registration may affect the applications’ adjudication. But
that doesn’t alter Congress’s choice to leave decisions over
trademark applications to the PTO. See 15 U.S.C. § 1062.
Take this case. If a registrant, like BBK, believes
another party’s application, like CCA’s, interferes with its
use of its registered mark, the district court may determine
the parties’ respective “right to registration.” But it is an
entirely different matter to then extrapolate a free-standing
power to cancel a party’s application. Rather, the Lanham
18 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
Act contemplates that BBK may oppose the applications
before the PTO. See id. § 1063. So nothing prevented BBK
from bringing its lack-of-bona-fide-intent challenges there.
The Lanham Act then provides that parties engage in a back-
and-forth with the PTO. See id. § 1062. And if the
applications are granted or denied in error, the parties may
seek appeals within the PTO. See id. § 1070. At that point,
federal courts may step in and resolve the dispute. See id.
§ 1071. The Lanham Act thus gives the PTO, not courts,
exclusive authority over applications, including their
cancellation. See id. § 1062. We short-circuit Congress’s
will by interfering prematurely.
Other textual clues from § 1119 confirm this view.
Notice, for example, that § 1119’s last authority states that
federal courts may “otherwise rectify the register with
respect to the registrations.” Id. § 1119 (emphasis added).
The term “otherwise” is a big deal. It is a signal from
Congress that all preceding authorities must be read
similarly to “rectify[ing] the register.” 5 Webster’s
Collegiate Dictionary, 702 (1942) (defining “otherwise” as
“[i]n a different manner; in other ways; contrarily”; “[i]n
different circumstances”; “[i]n other respects”); See 3
Oxford Universal Dictionary, 1392 (1944) (defining
“otherwise” as “[i]n another way, or in other ways:
differently”); Practical Standard Dictionary, 803 (Vol. 2
1945) (defining “otherwise” as “[i]n a different manner or
by other means ” and “[i]n other circumstances or
conditions: other respects”); The Winston Dictionary, 688
(1945) (defining “otherwise” as “in a different way;
differently; as he could not do otherwise”). So “otherwise”
signifies some relationship between “rectify[ing] the
register” and the preceding authorities, including
“determin[ing] the right to registration.” See 15 U.S.C.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 19
§ 1119. In other words, the “otherwise” language means that
the authority to “determine the right to registration” should
be read as another way of “rectify[ing] the register”—which
requires a completed registration. It doesn’t broadly grant
powers outside of policing the register, like prejudging the
validity of pending trademark applications.
The associated-words canon of noscitur a sociis also
supports excluding the authority to cancel trademark
applications from § 1119. Under that canon, “a word is
known by the company it keeps” and so courts must “avoid
ascribing to one word a meaning so broad that it is
inconsistent with its accompanying words, thus giving
unintended breadth to the Acts of Congress.” Yates v. United
States, 574 U.S. 528, 543 (2015) (plurality opinion)
(simplified). Thus, this canon instructs that all the terms in
§ 1119 be read similarly. And each of the other powers
described in § 1119 refer to control over completed
registrations—not unresolved applications. Given the
neighboring terms, we should likewise read “right to
registration” as only a power over completed registrations.
Similarly, though a minor point, § 1119’s title—“Power
of court over registration”—suggests federal courts lack
jurisdiction to cancel pending trademark applications.
Though a statutory title may never “limit the plain meaning
of the text,” a title may sometimes be a helpful interpretative
tool. Cal. Rest. Assoc. v. City of Berkeley, 89 F.4th 1094,
1105 (9th Cir. 2024) (simplified). And here, § 1119’s title
supports limiting federal courts’ authority to only a “power
over registration,” meaning authority over completed
registrations themselves—not over applications awaiting
decision.
20 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.
Thus, the text of § 1119 doesn’t grant federal courts the
authority to cancel pending trademark applications.
For what it’s worth, the PTO agrees with this assessment
of the statute. “All of the actions [§ 1119] authorizes the
[]PTO to take, upon court order in a case involving a federal
registration, concern registrations.” Piano Wellness, LLC v.
Charlotte K. Williams, 126 U.S.P.Q.2d 1739, 2018 WL
2455403, at *2 (T.T.A.B. 2018). And the PTO believes a
court may order the parties to effectuate a transfer of the
application using “its plenary power,” but “is without
authority to direct the []PTO to grant or deny the pending
applications.” Id. (simplified).
Indeed, our court has never claimed the ability to direct
how trademark applications are adjudicated. Instead, we
said only that § 1119 “gives district courts the power to order
the cancellation of a trademark registration ‘in any action
involving a registered mark.’” Airs Aromatics, LLC v.
Victoria’s Secret Stores Brand Mgmt., Inc., 744 F.3d 595,
598 (9th Cir. 2014) (quoting 15 U.S.C. § 1119). “Th[e
statutory] language specifies that cancellation [of a
registration] may only be sought if there is already an
ongoing action that involves a registered mark; it does not
indicate that a cancellation claim is available as an
independent cause of action.” Id. at 599. This limited
authority should not be expanded into a freewheeling power
to strike applications as we please.
We should have stuck to our previous understanding and
limited our authority to cleaning up the trademark registry—
we simply have no jurisdiction to adjudicate pending
trademark applications.
BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 21
III.
Because BBK’s claims only ask for the cancellation of
applications which we have no authority to provide under the
Lanham Act, I would not reach any other issues here. I
respectfully dissent.