The Ninth Circuit Court of Appeals today released an opinion in RHODES v. AVON PRODUCTS, INC., No. 05-56047, a federal appeal. The panel consisted of John T. Noonan, Andrew J. Kleinfeld, and Richard A. Paez, Circuit Judges.
PAEZ, Circuit Judge:
In this trademark declaratory relief action, we must decide whether the district court properly dismissed Plaintiffs’ case for lack of subject matter jurisdiction. In their complaint, Plaintiffs sought a declaration that several of their trademarks did not infringe on Defendant’s registered marks. The jurisdictional issue turns on whether Plaintiffs alleged a constitutionally sufficient case or controversy in their First Amended Complaint (”FAC”). We must also decide whether related proceedings that were pending before the Trademark Trial and Appeal Board (”TTAB”) provided an appropriate basis for the district court to invoke the doctrine of primary jurisdiction in order to dismiss Plaintiffs’ action and, if not, whether the court properly exercised its discretion under 28 U.S.C. Â§ 2201 when it declined to assert jurisdiction. We have jurisdiction pursuant to 28 U.S.C. Â§ 1291, and we hold that the allegations in the FAC alleged a true case or controversy that established subject matter jurisdiction. We also hold that, although the TTAB provides a forum to address trademark registration issues, the availability of such a forum does not justify the application of the doctrine of primary jurisdiction as a basis for dismissing Plaintiffs’ federal court action. Thus, Plaintiffs were not required to wait for the completion of TTAB proceedings before seeking declaratory relief in federal court. We further hold that, under the circumstances of this case, the district court abused its discretion in declining to assert jurisdiction over Plaintiffs’ request for declaratory relief. Finally, because of the firmly expressed . . .