IP Law Daily, TRADEMARK—W.D. Ky.: Similarity between applied-for mark and registered mark allows court to exercise jurisdiction, (Feb 3, 2025)

By Patricia K. Ruiz, J.D.

Previously, courts recognized that 15 U.S.C. §1119 does not provide jurisdiction to adjudicate trademark applications.

The U.S. District Court for the Western District of Kentucky denied a motion to dismiss by a sports drink manufacturer seeking to register marks using the base mark PRIME. The court found that, because the applied-for marks were sufficiently similar to a currently registered mark to be adjudicated by the court under the Lanham Act, 15 U.S.C §1119, which allows a court to determine the right to registration, order the cancelation of registrations in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party in the action (Hi-Tech Pharmaceuticals, Inc. v. Prime Hydration LLC, No. 3:24-cv-00374-GNS (W.D. Ky. Jan. 31, 2025)).

Allegations. Hi-Tech Pharmaceuticals, Inc., which sells sports supplements under its registered mark, PRIME NUTRITION, alleged Prime Hydration LLC infringed its trademark by selling products bearing the marks PRIME HYDRATION, PRIME HYDRATION+, and PRIME ENERGY. Prime markets and sells sports drinks and has applied for registration of the marks DRINKPRIME, PRIME HYDRATION+ and PRIME. Hi-Tech asserted claims of trademark infringement, unfair competition under Kentucky state law, and cancellation of registrations and abandonment of trademark applications. Prime moved to dismiss the third claim, which alleges Prime’s registered marks should be cancelled and pending applications for registration should be rejected and/or abandoned.

Lanham Act §1119. Under15 U.S.C. §1119, in any action involving a registered mark, the court may determine the right to registration, order the cancelation of registrations in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party in the action. Prime argued that §1119 only permits courts to act upon registered marks, not pending applications. Previously, courts recognized that §1119 does not provide jurisdiction to adjudicate applications.

Similarity of applications to registered mark. In the instant case, Prime’s pending applications deal with product lines similar to the Hi-Tech’s registered marks, which are used in connection with nutritional supplements. In comparison, Prime’s pending applications are used in connection with energy drinks, sports drink powders, and nutritional supplements. The product lines appear similar, as they are interrelated sports and energy drinks and nutritional supplements. Further, the marks are similar, containing the base mark PRIME. The court determined that the presence of different modifying terms and position of the base mark does not defeat the similarity of the mark and applications. Thus, the court held Prime’s pending applications are sufficiently similar to Hi-Tech’s registered mark for the court to exercise jurisdiction over the third claim.

The Case is No. 3:24-cv-00374-GNS.

Judge: Stivers, G.

Attorneys: Gregory Hillyer (Hillyear Legal, PLLC) for Hi-Tech Pharmaceuticals, Inc. Herbert Finn (Greenberg Traurig, LLP) for Prime Hydration LLC.

Companies: Hi-Tech Pharmaceuticals, Inc.; Prime Hydration LLC

Cases: Trademark KentuckyNews