Yums v. Nike Update — Two Amicus Curiae Briefs Filed: One Arguing Vacatur and Remand and the Second in Support of Yums

Last week, in a prior blog, we reported that Petitioner Already, LLC d/b/a Yums (“Yums”) filed its opening brief with the Supreme Court, arguing that a trademark registrant’s post-suit covenant not to sue does not divest a Federal District Court of standing to review a challenge to the validity of the underlying trademark registration.

Last week, two amicus curiae briefs were filed in the action, the first from U.S. Solicitor General Donald Verrilli on behalf of the United States, and the second from The Public Patent Foundation, Inc., a not-for-profit legal services organization affiliated with the Benjamin N. Cardozo School of Law.

In the amicus curiae brief on behalf of the United States, the U.S. Solicitor General argues that the Appellate Court’s decision should be vacated and the case should be remanded. Disagreeing with Yums, the United States posits that a covenant not to sue could render an invalidity challenge to a registration moot, if it is sufficiently broad to “eliminate any meaningful prospect that the trademark will have an impact on the plaintiff’s business.” It also went on to state that the burden should be on the trademark holder to demonstrate that it is “‘absolutely clear’ that a concrete dispute between the parties over the allegedly invalid trademark ‘could not reasonably be expected to recur.’” Quoting Friends of the Earth, Inc. et al. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167, 190 (1999). The United States contends that the lower courts did not require Nike to meet that standard, and that the scope of the covenant not to sue and petitioner’s planned business activities are insufficiently clear from the record.

The Public Patent Foundation’s amicus curiae brief focuses on patent law issues, and ultimately sides with Yums. The heart of its argument is that undeserved registrations harm the public because they “can be used to threaten and impede otherwise permissible, socially desirable, conduct.”

Gibbons will continue to monitor developments in this case, and its impact on Federal Court jurisdiction.