By Rachel Bamberger

Trademarks are necessary to help consumers distinguish between the different brands and the packaging of competing companies.  Given the diverse range of formulas for dog food, trademarks are vital to ensuring names and packaging stand out among competitors.[1] Section 37 of the Lanham Act states that “in any action involving a registered mark, the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.”[2] Section 39 of the Lanham Act gives federal courts subject-matter jurisdiction over suits arising under the act.[3] However, the Lanham Act does not expressly mention whether district courts may cancel applications, which creates ambiguity over district courts’ power over registration applications.[4] As a result, this can cause uncertainty for parties seeking to enforce their marks.[5]

Rudy Green makes and sells frozen human-grade dog food in stores in the U.S., and  PetSmart is a chain of pet stores that sells pet products, services, and small pets.[6] The companies met in 2008 and 2021 to discuss selling Rudy Green’s products in PetSmart stores but ultimately failed to enter an official agreement.[7] In 2023, PetSmart sought to obtain a trademark for “Rudy’s” to advertise their rawhide dog chews.[8] The United States Patent and Trademark Office (“USPTO”)  rejected PetSmart’s application given the registrations already owned by Rudy Green.[9] Rudy Green sued PetSmart on May 30, 2024, alleging the following; (1) federal trademark infringement; (2) refusal of application for registration under the Lanham Act; (3) trademark infringement under Kentucky common law; (4) federal unfair competition and; (4) false designation of origin under the Lanham Act, and unfair competition under Kentucky common law.[10]

In response to Rudy Green’s trademark infringement claims, PetSmart argued the district court lacked subject-matter jurisdiction because the ability to adjudicate pending trademark applications was something only the USPTO had the power to do.[11] Rudy Green countered that under Continental Connector Corp. v. Continental Specialties Corp[12]., a 1976 case recognized that there are some instances in which a district court could address a pending trademark application given its relationship to a dispute about a registered mark.[13] On October 3, 2024, a Kentucky judge ruled against PetSmart, holding that a district court has authority over trademark registration applications.[14] The Kentucky judge rejected PetSmart’s argument that Continental and the subsequent decisions following it were not binding given that Continental’s lineage were dismissed for lack of a connection to a registered trademark.[15]

A court ruling either way in Rudy Green will influence how businesses apply for and enforce their trademarks.[16] If PetSmart wins, businesses could find it more challenging to enforce their trademarks by preventing them from challenging potential trademark infringers earlier on.[17] However, if Rudy Green wins, then earlier court intervention could make it easier for parties seeking to challenge USPTO trademark decisions by allowing courts to overturn USPTO decisions.[18] This could upset the checks and balances in place between the judicial branch and administrative agencies given courts’ historical deference to administrative agencies’ interpretation of statutes.[19] As a result, businesses may need to re-evaluate their strategies in applying for and enforcing trademarks if district courts are allowed to overturn USPTO decisions.[20]

[1] See Douglas A. Robinson, Proper IP Management Gives Pet Food Manufacturers a Competitive Edge, Harness IP (Oct. 9, 2020), https://www.harnessip.com/blog/2020/10/09/proper-ip-management-gives-pet-food-manufacturers-a-competitive-edge/.

[2] See 15 U.S.C. § 1119.

[3] See 15 U.S.C. § 1121.

[4] See Rudy Green, Inc. v. PetSmart, LLC 2024, No. 3:24-CV-322-RGJ, 2024 WL 4425747, at *1, 2 (W.D. Ky. Oct. 4, 2024).

[5] See id.

[6] See Rudy Green’s, https://rudygreens.com (last visited Oct. 9, 2024); PetSmart,  https://www.petsmart.com/ (last visited Oct. 9, 2024).

[7] See Rudy Green, 2024 WL 4425747, at * 1.

[8] Id.

[9] Id.

[10] Id.

[11] Id. at *2.

[12] 413 F.Supp. 1347 (D.Conn. 1976).

[13] See Rudy Green, 2024 WL 4425747, at *2; 413 F.Supp. 1347 at 1349-50.

[14] See Kyle Jahner, PetSmart Must Fight Over Its ‘Rudy’s’ Trademark Bid in Court, Bloomberg L. (Oct. 7, 2024, 4:17 PM), https://www.bloomberglaw.com/bloomberglawnews/ip-law/BNA%20000001926791d4f1abdeffd566a60001?bna_news_filter=ip-law.

[15] See id; Continental Connector Corp. v. Continental Specialties Corp, 413 F.Supp. at 1349-1350.

[16] See Thomas D. Fortenberry & Fred I. Williams, Online Trademark Infringement—Specialized Issues of Prevention and Enforcement, 45 The Advoc. 65, 67 (2008).

[17] See Rudy Green, 2024 WL 4425747, at *2.

[18] See id.

[19] See Chevron, U.S.A., Inc., v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 844, (1984), overruled by Loper Bright Enters. v. Raimondo, 144 S.Ct. 2244, 2273 (2024); Rachel Rodman and Alec Albright, U.S. Supreme Court Strikes Down Chevron Doctrine—What you Need to Know, White & Case (Jul. 8, 2024) https://www.whitecase.com/insight-alert/us-supreme-court-strikes-down-chevron-doctrine-what-you-need-know.

[20] See Deborah R. Gerhardt, Beware the Trademark Echo Chamber: Why Federal Courts Should Not Defer to USPTO Decisions, 33 Berkeley Tech. L.J. 643, 650-53 (2018).