March 29, 1971
THE CHICAGO HOME FOR THE FRIENDLESS
Before KILEY, KERNER, and STEVENS, Circuit Judges.
The district court dismissed plaintiff's suit for declaratory judgment that its Homemakers' trademark was valid, for declaration that plaintiff has a right to retain its registration for the trademark Homemakers, and for injunctive relief against defendant's proceeding in the Patent Office to cancel the Homemakers' trademark. We affirm.
Homemakers' trademark was registered in the Patent Office on March 7, 1967. In June, 1967, the Chicago Home for the Friendless filed in the Patent Office a petition to cancel plaintiff's registration. Thereafter Homemakers filed its suit in the district court. The Patent Office then delayed decision on the cancellation petition pending disposition by the district court of this suit.
The issue in the case before us is whether the district court has jurisdiction to determine by declaratory judgment, independent of any claim of infringement, plaintiff's right to retain its trademark which had been registered under the Lanham Act, 15 U.S.C. §§ 1051-1127. This court in Merrick v. Sharp & Dohme, Inc., 185 F.2d 713, 88 USPQ 145 (7th Cir. 1950), cert. den., 340 U.S. 954, 88 USPQ 569, decided that a district court has no jurisdiction to enter declaratory judgment with respect to a right to have a trademark initially registered where there was no question of infringement. That case did not involve a cancellation petition, but an opposition to the registration of a trademark. If the opposition proceeding and the cancellation proceeding are substantially alike with respect to the court's jurisdiction, we think that Merrick controls the decision here.
Homemakers argues that there is a substantial distinction because in an opposition proceeding no right has yet accrued to the applicant for registration, whereas in a cancellation proceeding, which follows registration, there is a prima facie right to the trademark. The district court was not persuaded by the distinction urged so far as it bore on the court's decision. It noted the language in Merrick that
Congress has confided the registration of trademarks to the Patent Office of the United States. The courts of the United States have no jurisdiction over registration proceedings except that appellate jurisdiction given them by the Trademark Act. 185 F.2d at 717, 88 USPQ at 149.
and decided that while the opposition and cancellation proceedings are covered in different sections of the Lanham Act, 15 U.S.C. § 1063 and 15 U.S.C. § 1064, respectively, the appeal procedure to the federal courts, 15 U.S.C. § 1071(b), is common to both. The district court concluded that it had no jurisdiction under the Declaratory Judgment Act to determine the validity of plaintiff's trademark where there is no issue of infringement.
We have read the court's decision, reported at 313 F.Supp. 1087, 164 USPQ 497, and we approve and adopt the opinion as the opinion of this court, and affirm the judgment.
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