• Second Circuit Rules That Presenting Covenant Not To Sue Eliminates Subject Matter Jurisdiction Over Declaratory Judgment Action For Non-Infringement And Cancellation Of Trademark Registration
  • November 16, 2011 | Author: Phillip Barengolts
  • Law Firm: Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP - Chicago Office
  • Nike sued Yums for infringement of Nike’s registered trade dress in the Air Force 1 shoe. Yums counterclaimed for a ruling that the claimed dress “is not a valid trademark,” a declaration of noninfringement, and cancellation of Nike’s registration. Nike then provided Yums a covenant not to sue and moved to dismiss its complaint with prejudice and the counterclaims without prejudice. The district court held that the covenant ended the controversy between the parties and dismissed Yums’s counterclaims for lack of subject matter jurisdiction. The Second Circuit affirmed in Nike, Inc. v. Already, LLC, F.3d, 2011 WL 5429154 (2d Cir. Nov. 10, 2011).