San Diego County Credit Union v. Citizens Equity First Credit Union

"Federal courts lack Article III jurisdiction to review questions of trademark validity unless the plaintiff faces a threat of infringement liability or otherwise suffers a justiciable injury that is fairly traceable to the trademark’s validity." San Diego County Credit Union v. Citizens Equity First Credit Union, 65 F.4th 1012 (9th Cir. 2023).

San Diego County Credit Union (SDCCU) filed suit in district court seeking declaratory judgment and invalidation of a disputed trademark after Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board to challenge SDCCU’s trademark registration. The district court declared that SDCCU’s trademark did not infringe on the trademark held by CEFCU and subsequently held that CEFCU’s trademark was invalid. On appeal, CEFCU argued that there was not a sufficient case or controversy for the district court to invalidate their trademark. “The lesson from [precedent cases] is that federal courts lack Article III jurisdiction to review questions of trademark validity unless the plaintiff faces a threat of infringement liability or otherwise suffers a justiciable injury that is fairly traceable to the trademark’s validity.” 65 F.4th 1012, 1031. SDCCU had used the trademark “without any fear of a trademark claim” as SDCCU did not decrease its use of the disputed trademark. Moreover, the Court determined that SDCCU lacked a personal stake in invalidating CEFCU’s trademark because the district court had already granted summary judgment for SDCCU. As a result of the summary judgment confirming non-infringement, SDCCU no longer had a basis to continue a trademark infringement lawsuit against CEFCU. As the district court was no longer resolving an actual case or controversy, it thus lacked Article III jurisdiction to continue resolving the validity of the trademark. Affirmed in part, vacated in part, and remanded.