Airs Aromatics v. Victoria's Secret

Under Section 37 of the Lanham Act, trademark cancellation is a remedy that may be sought in a trademark infringement suit and does not provide an “independent basis for subject matter jurisdiction standing alone;” ongoing litigation over a trademark does not constitute sufficient continuous use for purposes of a showing of non-abandonment.

Airs Aromatics appealed the dismissal of its trademark cancellation claim against Victoria’s Secret. In 1999, Airs International (the predecessor to Airs Aromatics) entered into an agreement to allow Victoria’s Secret to use its trademark “Dream Angels” for the sum of $25,000 annually. A year later, the California Secretary of State revoked Air International’s corporation status. Victoria’s Secret ceased making payments and applied for trademark registration of “Dream Angels,” which was granted. Meanwhile, Airs International was revived as Airs Aromatics and brought suit against Victoria’s Secret for breach of their agreement, seeking a declaratory judgment to cancel Victoria’s Secret’s trademark. The district court dismissed the claim, finding that Airs Aromatics “lacked standing to pursue its trademark cancellation as it had not adequately alleged non-abandonment of its ‘Angel Dreams’ trademark.” Airs Aromatics argued that its cancellation claim was actually a “poorly pleaded” trademark infringement claim and alleged that the ongoing litigation over the trademark constituted sufficient use for purposes of the non-abandonment showing. The panel disagreed, holding that, under Section 37 of the Lanham Act, a trademark cancellation claim does not provide an “independent basis for subject matter jurisdiction standing alone.” Trademark cancellation is a remedy that may be sought in a trademark infringement case, and because ongoing litigation over a trademark does not constitute continuous usage, Air Aromatics failed to state a trademark infringement claim and could not bring the trademark cancellation claim alone. AFFIRMED.