NOT PRECEDENTIAL
UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT ______________
No. 19-1017 ______________
ENGAGE HEALTHCARE COMMUNICATIONS, L.L.C.; GREENHILL HEALTHCARE COMMUNICATIONS, L.L.C.; CENTER OF EXCELLENCE MEDIA, L.L.C.,
Appellants
v.
INTELLISPHERE, L.L.C.; MICHEL J. HENNESSY & ASSOCIATES, INC.; MICHAEL J. HENNESSY; ARC MESA EDUCATORS, L.L.C.; JOHN DOES 1-5; JANE DOES 1-5 ______________
On Appeal from the United States District Court for the District of New Jersey (D.C. Civ. No. 3-12-cv-00787) District Judge: Honorable Freda L. Wolfson ______________
Submitted under Third Circuit L.A.R. 34.1(a) October 25, 2019
BEFORE: GREENAWAY, JR., PORTER, and GREENBERG, Circuit Judges.
(Filed: November 20, 2019) ______________
OPINION* ______________ ____________________
*This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7 does not constitute binding precedent. GREENBERG, Circuit Judge.
I. INTRODUCTION
In this this trademark infringement action between strikingly similar companies
separately owned by two brothers, we are asked to review the District Court’s opinion
and judgment adjudicating the infringement dispute between them. That Court granted
summary judgment to defendants, finding that they did not infringe the alleged
trademarks owned by plaintiffs. For the reasons stated below, we will affirm the
judgment.
II. FACTUAL BACKGROUND
We rely on the facts the District Court recited in its excellent comprehensive
opinion which we therefore do not repeat at length. See Engage Healthcare Commc’ns,
LLC v. Intellisphere, LLC, No. 12-0787, slip op. at 2-12 (D.N.J. Nov. 29, 2018). At its
core, this is a straightforward trademark dispute. The District Court helpfully
summarized the marks at issue with two tables in its opinion. They are as follows:
Plaintiffs’ Marks Defendants’ Marks
PERSONALIZED MEDICINE IN PERSONALIZED MEDICINE IN ONCOLOGY HEMATOLOGY/ONCOLOGY
PERSONALIZED MEDICINE IN HEMATOLOGY/ONCOLOGY
THE ONCOLOGY NURSE ONCNURSE
THE ONCOLOGY NURSE APN/PA
2 Plaintiffs’ Marks Defendants’ Marks
VALUE-BASED CANCER CARE VALUE-BASED ONCOLOGY
VALUE-BASED ONCOLOGY CARE
ONCOLOGY PHARMACY NEWS ONCOLOGY PHARMACY NEWS
CLINICAL ONCOLOGY PHARMACY NEWS
ONCOLOGY PRACTICE ONCOLOGY BUSINESS MANAGEMENT MANAGEMENT
AMERICAN HEALTH & DRUG AMERICAN JOURNAL OF BENEFITS PHARMACY BENEFITS
PEER-SPECTIVES PEERS & PERSPECTIVES
TARGETED THERAPIES IN INTERNATIONAL CONGRESS ON HEMATOLOGY/ONCOLOGY TARGETED THERAPIES IN CANCER
TARGETED THERAPIES IN INTERNATIONAL JOURNAL OF ONCOLOGY TARGETED THERAPIES IN CANCER
TARGETED THERAPIES IN BREAST BIOMARKERS, PATHWAYS, AND CANCER TARGETED THERAPIES
TARGETED THERAPIES IN LUNG TARGETED THERAPY NEWS CANCER
TARGETED THERAPIES IN NONHODGKIN LYMPHOMA
Engage, slip op. at 3-4.
3 Plaintiffs’ Marks Defendants’ Marks
JOURNAL OF PERSONALIZED PERSONALIZED CANCER CARE MEDICINE IN HEMATOLOGY/ONCOLOGY
PERSONALIZED CANCER CARE
PERSONALIZED MEDICINE IN IMMUNOLOGY
PERSONALIZED MEDICINE IN RHEUMOTOLOGY
PERSONALIZED BREAST CANCER
PERSONALIZED VALUE BASED CANCER CARE
4 Plaintiffs’ Marks Defendants’ Marks
PERSONALIZED VALUE BASED VALUE -BASED CARDIOLOGY CANCER CARE VALUE-BASED CARDIOLOGY CARE VALUE-BASED BREAST CANCER VALUE-BASED DESIGN VALUE-BASED CARE IN RHEUMOTOLOGY VALUSE-BASED INSURANCE DESIGN VALUE-BASED CARE IN MULTIPLE MYELOMA
VALUE-BASED ONCOLOGY BENEFIT DESIGN
TRANSLATING EVIDENCE-BASED RESEARCH INTO VALUE-BASED DECISIONS
INSTITUTE FOR VALUE-BASED MEDICINE
CLINICAL ONCOLOGY PHARMACY N/A
RHEUMATOLOGY BUSINESS N/A MANAGEMENT
DERMATOLOGY BUSINESS MANAGEMENT
DIABETES BUSINESS MANAGEMENT
Engage, slip op. at 9-10.
5 III. DISCUSSION
The District Court had jurisdiction under 28 U.S.C. §§ 1331, 1338 and 1367, and
we have jurisdiction under 28 U.S.C. § 1291. We exercise plenary review of the District
Court’s grant of summary judgment and thus consider the issues de novo. See Bradley v.
W. Chester Univ. of Pa. State Sys. of Higher Educ., 880 F.3d 643, 650 (3d Cir. 2018).
Accordingly, we are applying “the same standard as the District Court to determine
whether summary judgment was appropriate.” State Auto Prop. & Cas. Ins. Co. v. Pro
Design, P.C., 566 F.3d 86, 89 (3d Cir. 2009). “[S]ummary judgment is properly granted
‘if the movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.’” Sconiers v. United States, 896 F.3d
595, 597 n.3 (3d Cir. 2018) (quoting Fed. R. Civ. P. 56(a)).
In granting summary judgment to defendants, the District Court held that (1) none
of plaintiffs’ alleged trademarks were enforceable as advertising marks, thus defendants
could not have infringed them; (2) all but one of plaintiffs’ trademarks were
unenforceable in the online and/or print publication class in the fields of hematology and
oncology that they addressed; and (3) defendants did not infringe the lone valid
trademark. The District Court also held that (4) plaintiffs’ state-law unfair competition
claims failed because under state law, essentially the same standard applied to their unfair
competition claims as their federal trademark claims; and (5) the District Court lacked
subject matter jurisdiction to adjudicate plaintiffs’ request for declaratory judgment to
invalidate defendants’ alleged trademarks. In view of the District Court’s thorough
treatment of the issues and our agreement with its treatment we will affirm its judgment
6 for substantially the same reasons the District Court articulated in its opinion with one
exception which we discuss below. Nevertheless, our rejection of the District Court’s
reasoning on that issue does not change our result which affirms its judgment.
A. Advertising Marks
We agree with the District Court that plaintiffs’ alleged marks could not be
enforced as advertising service marks in this case which at bottom is an argument over
advertising. “Under the Lanham Act, service marks, which are used to identify the
source of services, are entitled to the same legal protection as trademarks, which are used
to identify the source of goods. . . . Although technically distinct, the terms are often
used interchangeably, with no significant legal consequences.” Dranoff-Perlstein Assocs.
v. Sklar, 967 F.2d 852, 855 (3d Cir. 1992) (citation omitted). As such, a court addresses
the question of whether a service mark is entitled to protection under the Lanham Act
using the same standard that it applies when considering trademarks. Id. “In order to
determine whether a mark is protectable as a trademark, marks are divided into four
classifications: (1) generic (such as ‘DIET CHOCOLATE FUDGE SODA’); (2)
descriptive (such as ‘SECURITY CENTER’); (3) suggestive (such as ‘COPPERTONE’);
and (4) arbitrary or fanciful (such as ‘KODAK’).” A&H Sportswear, Inc. v. Victoria’s
Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000) (citing Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 2758 (1992)). “In order to qualify for
Lanham Act protection, a mark must either be suggestive, arbitrary, or fanciful, or must
be descriptive with a demonstration of secondary meaning. . . . Generic marks receive no
protection; indeed, they are not ‘trademarks’ at all.” Id. at 222 (citations omitted).
7 The District Court cited to In re Advertising & Marketing Development, Inc., a
case from the Court of Appeals for the Federal Circuit, for the proposition that
advertising service marks must be sufficiently separate from the subject of the
advertising, and must be used to identify advertising services, not merely to identify the
subject of the advertising. 821 F.2d 614, 619-20 (Fed. Cir. 1987). We agree with the
District Court’s treatment of that case. After all, we have held that an advertising service
mark that merely describes the subject of its advertising is a descriptive mark not entitled
to service mark protection. Dranoff-Perlstein, 967 F.2d at 858; see Murphy v. Provident
Mut. Life Ins. Co., 923 F.2d 923, 927 (2d Cir. 1990) (“Marks that are laudatory and that
describe the alleged qualities or character of a product or service are descriptive marks.”
(internal citation omitted)).
We have no trouble finding, as did the District Court, that all of plaintiffs’ alleged
marks, when viewed as advertising service marks, are merely descriptive on their face.
In contrast, they may be compared to a well-known advertising mark—“Just Do It”—
from the sports apparel company Nike. That phrase is generic and does not provide any
indication to a consumer that it is tied to any product, any company, or any industry, but
it has become essentially a cultural icon synonymous with Nike and its products entirely
through its use as an advertising slogan. It is clear that the alleged marks at issue here are
qualitatively of a different character than Nike’s mark.
We recognize that the District Court did not make a “secondary meaning” analysis
of plaintiffs’ marks to the extent they are asserted as advertising marks. See Dranoff-
Perlstein, 967 F.2d at 858. However, we hardly can fault it for not having done so,
8 because there was no evidence to show that these alleged marks had achieved secondary
meaning through their uses in advertising. Rather, as we will explain, they have not even
achieved secondary meaning within the industry itself, let alone secondary meaning
within the advertising space of that industry. Moreover, as the District Court noted,
plaintiffs are attempting to assert the same marks as trademarks within their industry as
well as service marks in the advertising space. That undertaking can be regarded as an
admission that the service marks are merely descriptive of the subjects of their
advertising, and it is almost impossible for them to achieve secondary meaning separate
and apart from the allegedly trademark-bearing goods for which they purportedly
advertise. Indeed, plaintiffs’ alleged marks are no more enforceable as advertising
service marks than the phrase “Just Buy Nike” would be for Nike. Accordingly, we will
affirm the District Court’s judgment on this ground.1
B. Trademarks
We also agree with the District Court that the alleged marks are unenforceable as
trademarks within their respective classes, representing online/print publications in the
fields of hematology and oncology. Again, the alleged marks are obviously descriptive
1 Plaintiffs note that at least one of their alleged marks already had been placed in the United States Patent and Trademark Office’s (“PTO”) Trademark Electronic Search caption as an advertising service mark, which they contend necessarily raises a question of fact whether other similar marks could be recognized as advertising marks as well. Pls.’ br. at 13 n.7; see App. at 425. However, as the District Court found, “[n]one of Plaintiffs’ marks currently has a principal registration.” Engage, slip op. at 4. A search of the PTO’s online trademark database shows that the PTO on October 13, 2017, prior to the District Court’s grant of summary judgment in this case cancelled the advertising service mark in question. See PTO’s Trademark Electronic Search System (TESS), http://tess2.uspto.gov/, Registration No. 3927515 (accessed Sept. 16, 2019). 9 on their face, a conclusion which plaintiffs themselves do not seriously dispute—they
make no substantive argument explaining why the marks are not descriptive. Instead,
they focus on the argument that the District Court erred in finding the marks had not
achieved secondary meaning at the time of defendants’ alleged infringement. Pls.’ br. at
37. Plaintiffs assert that the District Court erred because there was no definitive date in
the record of when the alleged infringement of its marks began, so its holding must be in
error if it could not identify a proper date as the basis of its analysis. However, as
plaintiffs also correctly recognized, the operative issue is not when defendants infringed
its marks, but whether the alleged marks had achieved secondary meaning at all, whether
it be on the date of infringement, the date of summary judgment, or even today.
In Commerce National Insurance Services, Inc. v. Commerce Insurance Agency,
Inc., we held that
[s]econdary meaning exists when the mark is interpreted by the consuming public to be not only an identification of the product or services, but also a representation of the origin of those products or services. . . . In general, it is established through extensive advertising which creates in the minds of consumers an association between the mark and the provider of the services advertised under the mark.
214 F.3d 432, 438 (3d Cir. 2000) (quotation and citation omitted). In Commerce
National, we identified a non-exclusive list of factors which may be considered to decide
if a mark has achieved secondary meaning:
(1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and, (11) actual confusion.
10 Id. (citation omitted).
The District Court essentially found plaintiffs had not established that the alleged
marks achieved secondary meaning regardless of the exact date used as the date of
defendants’ infringement. While the District Court carefully limited its holding to the
relevant time frame, it did not need to do so, because there is no evidence to show that the
alleged marks have ever achieved secondary meaning. Although plaintiffs correctly cite
to Commerce National as the standard for determining secondary meaning, they concede
that they are only able to satisfy six factors of the eleven-factor list we enunciated:
(1) the extent of sale and advertising utilizing Engage’s trademarks; (2) length of use of Engage’s trademarks; (3) exclusivity of use of Engage’s trademarks; (4) copying of Engage’s trademarks by Intellisphere; (5) the number and amount of sale involving Engage’s trademarks; and (6) the number of consumers privy to Engage’s trademarks through the use of those marks in commerce.
Pls.’ br. at 42.
We recognize that so far as we are aware, we never have held that the test for
secondary meaning is determined by some mechanical application of a non-exclusive
eleven-factor list, nor by counting how many of the eleven factors a plaintiff can satisfy.
Instead, the hallmark of secondary meaning remains “when the mark is interpreted by the
consuming public to be not only an identification of the product or services, but also a
representation of the origin of those products or services.” Commerce National, 214 F.3d
at 438 (internal citation and quotation marks omitted). As our non-exclusive list of
factors clearly demonstrates, the consumers’ interpretation of, and sentiment toward, the
alleged marks are paramount in determining whether such marks have achieved
11 secondary meaning. On a defendant’s summary judgment motion, the plaintiff has the
burden to make a prima facie showing of its claims, before the court determines whether
there is a genuine dispute of material facts because its failure to establish a prima facie
case is a valid ground to grant the motion. See Celotex Corp. v. Catrett, 477 U.S. 317,
331, 106 S.Ct. 2548, 2557 (1986) (“If the nonmoving party cannot muster sufficient
evidence to make out its claim, a trial would be useless and the moving party is entitled to
summary judgment as a matter of law.” (citation omitted)).
Plaintiffs have not presented evidence to show how consumers have perceived
their alleged marks—their own alleged extensive usage and alleged copying by one other
company do not alleviate their burden of showing how consumers identify these marks as
being synonymous with the origin of their products, nor is the circumstantial evidence
presented so overwhelming as to imply consumer association. See E.T. Browne Drug
Co. v. Cococare Prods., Inc., 538 F.3d 185, 199 (3d Cir. 2008) (“The evidence’s core
deficiency is that while it shows [the plaintiff] used the [alleged trademark] term . . . on
many occasions over a long period of time, it does not show [it] succeeded in creating
secondary meaning in the minds of consumers.”). We support our conclusion on the
point with an example. We are certain that at least some producer can readily make a
strong showing on the six factors plaintiffs identified, through its sale of “Belgian
chocolates,” but surely that producer would not be entitled to trademark protection for
that label no matter how long or pervasive its use of that label; consumers will never be
in danger of associating that label with the producer. Therefore, we will affirm the
judgment of the District Court on this ground.
12 C. “Peer-Spectives”
We likewise affirm the District Court’s grant of summary judgment in favor of
defendants that they did not infringe the alleged mark “Peer-Spectives,” but we do so for
a different reason than it set forth. The District Court held that “Peer-Spectives” is a
suggestive mark and therefore enforceable as a trademark, but found that defendants did
not infringe the mark. In contrast, we find that “Peer-Spectives” is not an enforceable
trademark and therefore defendants could not have infringed it.
The District Court found the mark suggestive because “a ‘mental leap’ is required
to tie PEER-SPECTIVES to online and in-person continuing medical education classes
for physicians.” Engage, slip op. at 23. “Absent this explanation, any link between the
words and the healthcare industry would not have been immediately apparent, a clear
indication that the mark is [] suggestive.” Id. We disagree with the conclusion.
In A.J. Canfield Co. v. Honickman, we recognized that “[c]ourts and
commentators have . . . difficulties [in] distinguishing between suggestive, descriptive,
and generic marks.” 808 F.2d 291, 296 (3d Cir. 1986).
Despite this difficulty, these distinctions are crucial. If we hold a term arbitrary or suggestive, we treat it as distinctive, and it automatically qualifies for trademark protection at least in those geographic and product areas in which the senior user applies it to its goods. . . . If we hold a mark descriptive, a claimant can still establish trademark rights, but only if it proves that consumers identify the term with the claimant, for that identification proves secondary meaning. . . . The distinction between suggestive and descriptive may also dictate different standards for determining its scope of geographic protection.
Id. at 297 (citations omitted). We went on to attempt to provide some clarity to
distinguish these categories by holding that:
13 A term is suggestive if it requires imagination, thought or perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.
Id. at 297 (citation omitted). In Canfield, we held that the term “chocolate fudge” was a
descriptive term used to describe diet soda, because it denoted a particular flavor of diet
soda, so “no imagination is required for a potential consumer to reach a conclusion about
the nature of [the] soda. In accordance with the accepted definitions, ‘chocolate fudge’ as
applied to diet soda cannot be suggestive.” Id. at 298.
In this case, it is not difficult to see that “Peer-Spectives” is exactly the same kind
of descriptive term as “chocolate fudge.” It would be readily apparent to the average
consumer that “Peer-Spectives” stands for “Peer Perspectives.” Indeed, defendants’ use
of the phrase “Peers & Perspectives” is the very phrase plaintiffs assert infringed on their
alleged mark. Peer perspective is a concept that most consumers immediately would
recognize as a generally descriptive term that can be used to describe many products and
applicable across a multitude of industries and markets, as is the term “chocolate fudge.”
We did not hold in Canfield that “chocolate fudge” was suggestive simply because
consumers would not immediately associate it with diet sodas, nor did we find that it
would take a “mental leap” for consumers to recognize its relevance as applied to diet
sodas. Indeed, nothing in the standard we enunciated in Canfield requires a descriptive
term to be tied to any particular industry or market.
In finding Peer-Spectives suggestive, the District Court paid special attention to
plaintiffs’ assertion that “‘[p]eer’ was chosen because health care professionals like to
14 talk Peer to Peer, and ‘perspectives’ was chosen because people want to hear key leader
perspectives on certain medical information.” Engage, slip op. at 23 (citation and
quotation marks omitted). That should have been a strong indication that the term is
descriptive. It does not take much imagination to recognize that a publisher in the
healthcare industry would want “peer perspective” to be associated with its publications,
just as a soda maker would want “chocolate fudge” to be a flavor associated with its
products, and an ice cream maker would want “very creamy” to be a quality associated its
products. Yet none of these terms immediately would conjure up images of their
respective products.
If we accept the District Court’s rationale, it could lead to an anomalous scenario
where “very creamy ice cream” would be found to be clearly descriptive, but “very
creamy,” because its link to ice cream would not be immediately apparent, could
nevertheless be trademarked by an ice cream maker. Of course, it is reasonable to
believe that such ice cream maker would then attempt to enforce its trademark against
every other ice cream maker who uses the term “very creamy ice cream” on its products,
the very term that was deemed clearly descriptive in the first place.
As we have held, “[a]lthough the wide use of a term within the market at issue is
more probative than the wide use of a term in other markets, . . . the extensive use of the
term in other markets may also have a weakening effect on the strength of the mark.”
A&H Sportswear, 237 F.3d at 223 (citation omitted). Widespread use of a term in many
markets would suggest equally that the term is descriptive—indeed, if the “mental leap”
required can be made in many markets, perhaps it is not much of a leap at all. “[I]f a
15 consumer is aware that a particular mark . . . is often used to designate a variety of
products made by a variety of manufacturers, that consumer will be less likely to assume
that in a particular case, two individual products, both with the mark [], come from the
same source.” Id. Unsurprisingly, a Google search of the term “peerspective” returned
over 12,000 results, with a slew of examples of its use across many industries. See, e.g.,
Peerspective, http://peerspectiveadvisors.com (last visited Oc. 28, 2019); Peerspective,
peerspective.mpi-sws.org (last visited Oct. 28, 2019); Peerspective: The developing a
researched backed simulation to aid in bully intervention, F6S,
http://f6s.com/peerspective (last visited Oct. 28, 2019); PeerSpective: Safeguarding the
Future of your Organization, the Chamber of Commerce for Greater Philadelphia,
http://apps.chamberphl.com/event/5384/peerspective (last visited Oct. 28, 2019);
@Peerspective, Twitter, http://twitter.com/peerspective (last visited Oct. 28, 2019);
Cunha BA, Typhoid Fever, the Typhus-Like Disease. Historical Peerspective, N.Y. State
J. Med., Mar. 1982, at 321; Jennifer M. Schmidt, Why Didn’t They Just Say That?
PEERspective – A Complete Curriculum (2017). We cannot conclude that all of them, or
at least many of them, somehow could obtain trademark protection.
“The evidentiary bar must be placed somewhat higher when the challenged term is
particularly descriptive.” E.T. Browne, 538 F.3d at 199 (citation and quotations omitted).
Peer perspective is not a new concept invented by plaintiffs, and it certainly is not an
obscure idea made popular by plaintiffs’ use. The term itself is in fact “particularly
descriptive.” As the District Court found, “abbreviated or combined words are not
necessarily suggestive,” Engage, slip op. at 23, and that is even more so when in this
16 case, it is obvious what the term “Peer-Spectives” describes to a consumer. In fact, its
widespread use shows that such understanding appears to be universal to everyone, not
just consumers. Plaintiffs are correct that the evidentiary bar to grant summary judgment
is high, and we are certain the bar had not been met when the District Court held that the
term “Peer-Spectives” was an enforceable trademark as a matter of law. But we also find
there is inadequate evidence in the record to show that the term is more than merely
descriptive, certainly not enough to create a genuine dispute of material facts that
precluded the grant of the summary judgment. And as we have already held, there is no
evidence in the record that any of plaintiffs’ alleged marks have achieved secondary
meaning. Hence, we will affirm the District Court’s grant of summary judgment in favor
of defendants, although not because defendants did not infringe an enforceable
trademark, but because the mark was unenforceable in the first instance.
D. State-Law Claims
Plaintiffs challenge the District Court’s finding that “Lanham Act unfair
competition claims and common law unfair competition claims are treated identically,”
and therefore if plaintiffs’ Lanham Act claims failed, its state-law unfair competition
claims also failed. Engage, slip op. at 15 n.7. We will affirm the District Court insofar
that in this case, the standard is the same. Although we do not decide whether there are
material differences between a Lanham Act unfair competition claim and a New Jersey
common law unfair competition claim, in general plaintiffs surely must demonstrate
concrete and cognizable injury to establish either claim. Lujan v. Defs. of Wildlife, 504
U.S. 555, 560-61, 112 S.Ct. 2130, 2136 (1992). Given that in both claims, plaintiffs’
17 alleged injury was defendants’ unfair use and interference with their trademarks, once we
found that the trademarks were unenforceable, there was no injury on either claim.2
Thus, we will affirm the judgment of the District Court on this ground.
E. Plaintiffs’ request for a Declaratory Judgment
Finally, plaintiffs contend the District Court erred when it found that it did not
have jurisdiction over their declaratory judgment claim because defendants did not assert
their trademarks have been infringed, and therefore it lacked jurisdiction to decide the
validity of defendants’ alleged trademarks. Plaintiffs, in turn, argue that the District
Court misconstrued their declaratory judgment claim in which they asked the District
Court to determine the relative priority of the parties’ competing trademarks, not whether
defendants’ marks are invalid.
Even if we accept plaintiffs’ characterization of their claim, the District Court did
not have jurisdiction over the claim. Once we found that plaintiffs’ alleged trademarks
are invalid, there would be no need to determine priority between competing trademarks,
because there are no competing trademarks. When a claim in a case lacks redressability,
federal courts lack jurisdiction under the Constitution to hear the case. Lujan, 504 U.S. at
561, 112 S.Ct. at 2136. As such, we will affirm the District Court on the declaratory
judgment claim.
2 Indeed, although plaintiffs argue extensively in their brief regarding the alleged fraud defendants perpetuated on the PTO through false representation of defendants’ alleged use of plaintiffs’ competing trademarks, any injury that may have resulted under their theory of liability was no longer cognizable once we found that those trademarks were unenforceable. 18 IV. CONCLUSION
For the reasons stated above, we will affirm the District Court’s November 29,
2018 order in its entirety.