IP Law Daily, TRADEMARK—W.D. Ky.: DIVA LAWYERS suit largely dismissed for lack of standing, (Jan 21, 2026)

By Kevin M. Finson, J.D.

Infringement claims based on similarity between the marks DIVA LAWYERS and DIVA ATTORNEY were dismissed because the plaintiff was not the owner or registrant of the mark she asserted was infringed.

The U.S. District Court for the Western District of Kentucky largely dismissed a suit for trademark infringement brought by an individual attorney based on similarity between the marks DIVA LAWYERS and DIVA ATTORNEY. A registrant is a required party in a case alleging infringement of a registered trademark, the court has held. The plaintiff admitted she was not the owner or registrant of the mark in dispute. A motion to dismiss the counterclaim was denied (Clark v. Baker, No. 3:25-cv-00070-RGJ (W.D. Ky. Jan. 16, 2026)).

Atyria S. Clark is an attorney residing in Los Angeles, California, and a member of the organization Diva Lawyers Social Club, Inc. (DLSC). DLSC is a mutual benefits corporation organized under the laws of California. Clark alleged that DLSC (a non-party) was the owner of all rights, title, and interest in the federally registered mark DIVA LAWYERS, and that she owned common law rights in that mark. Clark brought a suit for infringement against Lonita K. Baker, an attorney residing in Louisville, Kentucky, alleging that Baker’s use of the term DIVA ATTORNEY infringed the DIVA LAWYERS mark. Clark did not join DLSC as a party in the action. Baker counterclaimed against Clark and moved to join DLSC, and Clark moved to dismiss the counterclaims.

Standing. Baker argued that Clark lacked standing to sue for infringement of the DIVA ATTORNEY mark because she was neither the owner nor registrant. The court found that absent any plausible allegation that Clark was a legal representative, assignee, or exclusive licensee of the owner, and in view of Clark’s own allegations that DLSC was the owner and registrant, Clark lacked standing to bring suit for infringement. The court further found that Clark had failed to allege a case or controversy to support her request for declaratory judgment as to her common law rights, but that there was a case or controversy as to whether, as a member of DLSC, she had suffered injury by the alleged infringement. However, this was sufficient to support standing as to declaratory judgment on that issue only. The remainder of the complaint was dismissed.

Joinder as to counterclaim. Baker’s counterclaim sought a declaration of non-infringement and cancellation of DLSC’s registration. The court found that these counterclaims were compulsory, as they arose from the same facts as the complaint, and that DLSC was a necessary party because it was the registered owner of the mark in question. Joinder was feasible under an alter-ego theory, so the court granted Baker’s motion to join DLSC as a defendant.

Dismissal as to counterclaim. Clark moved to dismiss Baker’s counterclaim for declaratory relief due to a lack of actual controversy, that the exercise of discretion was not warranted, and that it was duplicative. The court found that Clark’s own filings showed an actual controversy, that a declaration of non-infringement would resolve the controversy, and that the claims were not duplicative of already-resolved litigation in California and before the Trademark Trial and Appeal Board (TTAB). As to the cancellation counterclaim, however, the court found that Clark was not a proper defendant because the court had already found she was not the registrant, and that claim was dismissed as to Clark.

The court dismissed all but the declaratory judgment claim set out in the original complaint, joined DLSC as a defendant to the counterclaim, and denied the motion to dismiss the counterclaim except as to the cancellation claim directed to the non-registrant.

The Case is No. 3:25-cv-00070-RGJ.

Judge: Jennings, R.

Attorneys: Atyria S. Clark, pro se. Brian P. McGraw (Gray Ice Higdon PLLC) for Lonita K. Baker

Cases: Trademark KentuckyNews