Intellectual Property Law

Licensee Lacks Standing to Claim Common Law Trademark Infringement

By Michael Atkins

Plaintiff trademark licensee Beijing Tong Ren Tang USA Corp. doesn’t have standing to assert a claim for common law infringement, the Northern District of California found on June 2. Therefore, the court granted defendant TRT USA Corp.’s motion to dismiss.

“[T]he central issue appears to be whether California’s common law of trademarks, as distinct from the Lanham Act or California statutory trademark protection, allows a non-owner to bring suit for trademark infringement. To state a claim for infringement under California common law, a plaintiff must allege 1) its prior use of the trademark and 2) the likelihood of the infringing mark being confused with its mark. To show ‘prior use’ a plaintiff must demonstrate that they ‘first adopt[ed] or use[d] a trade name, either within or without the state,’ which is the requirement for ownership under the common law. Because Beijing TRT does not allege that it was the first to adopt or use the mark at issue, it may not bring suit for common law infringement under California law.”

The court noted its decision would have little practical effect on the case, as TRT USA did not dispute that Beijing Tong Ren Tang USA has standing to assert a Section 43(a) claim that makes similar allegations to its dismissed claim.

The case cite is Beijing Tong Ren Tang (USA) Corp. v. TRT USA Corp., No. 09-882, 2009 WL 1542651 (N.D. Cal.) (June 2, 2009).

Full post as published by Seattle Trademark Lawyer on June 11, 2009 (boomark / email).