Airs Aromatics, LLC v. Victoria's Secret Stores Brand Mgmt.

TRADEMARKS: Federal Jurisdiction: [9th Circuit Court of Appeals] A trademark cancellation claim standing alone does not provide an independent basis for federal jurisdiction.

Opinion (Farris): Airs Aromatics, purported owner of the ANGEL DREAMS trademark, sued Victoria's Secret alleging breach of contract and requesting cancellation of Victoria's Secret's registered trademark DREAM ANGELS. The district court dismissed the complaint for failure to allege actual breaches of the contract and lack of standing for the trademark cancellation. Airs International had previously entered into a mutual consent-to-use agreement with Victoria's Secret in 1999 concerning the trademark. In 2000, Airs International assigned the Airs family of trademarks, including ANGEL DREAMS, to Mine Hakim. Subsequently, litigation ensued between purported transferees of the family of marks. It was determined that the transfers were made to defraud creditors and all parties to the litigation were enjoined from using the marks. It was eventually held that Airs International had a senior claim to the marks. Stephen Marcus, the owner of Airs International, revived Airs International and transferred all of its common law rights in the ANGEL DREAMS mark to Airs Aromatic. Airs Aromatic then brought this suit against Victoria's Secret claiming breach of contract and cancellation of the trademark DREAM ANGELS. The district court dismissed the breach of contract claims on the grounds that Airs Aromatics had not adequately alleged non-abandonment of its ANGEL DREAMS trademark and dismissed the claim for cancellation for lack of standing. Airs Aromatic appealed only the dismissal of its claim for cancellation of trademarks. Based on a plain reading of Section 37 of the Lanham Act, the Court held that 15 U.S.C. § 1119 does not provide an independent basis for federal jurisdiction and therefore AFFIRMED the district court's decision.