Federal Courts Lack Subject Matter Jurisdiction Over Declaratory Judgment Action Seeking Concurrent Use

The U.S. Court of Appeals for the Third Circuit has now held that a federal district courts lack subject matter jurisdiction over an action seeking a declaration that both the plaintiff and the defendant are entitled to concurrent use trademark registrations. J&D Home Improvement, Inc. v. Basement Doctor, Inc., Case No. 03-1902, 2004 U.S. App. LEXIS 1008 (3rd Cir. Jan. 22, 2004).

Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), provides that the U.S. Patent and Trademark Office (USPTO) may issue concurrent use trademark registrations either based on its own determination or when a court has finally determined that more than one person is entitled to use the same or similar marks. J&D and Basement Doctorwere each using the trademark BASEMENT DOCTOR in different geographical areas. J&D procured a federal trademark registration for the mark THE BASEMENT DOCTOR, and, thereafter, Basement Doctor unsuccessfully sought registration of its BASEMENT DOCTOR mark. Basement Doctor then