Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1085394
`
`Filing date:
`
`09/30/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91253165
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Arkansas State University
`
`STEPHEN D SCHRANTZ
`SCHRANTZ LAW FIRM PLLC
`1000 EAST MATTHEWS SUITE C
`JONESBORO, AR 72401
`UNITED STATES
`Primary Email: steve@schrantzlaw.com
`Secondary Email(s): lindsey@schrantzlaw.com
`870-275-7838
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Papers
`
`Paige Waldrop Mills
`
`trademarks@bassberry.com, pmills@bassberry.com
`
`/Paige Mills/
`
`09/30/2020
`
`Attachments
`
`Notice of Dismissal of Civil Action.pdf(62428 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91253165
`
`Marks:
`CHATTANOOGA RED WOLVES SC
`Serial No. No. 88117505
`
`CHATTANOOGA RED WOLVES SC
`& Design
`Serial No. 88196890
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`)
`
`Arkansas State University,
`
`Petitioner,
`
`v.
`
`Chattanooga Professional Soccer
`Management LLC,
`
`Respondent.
`
`NOTICE OF DISMISSAL OF FEDERAL ACTION
`
`Pursuant to the Board’s Order of April 23, 2020, Arkansas State University, a State
`
`Agency of the State of Arkansas with a mailing address of 501 Woodlane Drive, Suite 600, Little
`
`Rock, AR 72201 (“ASU” or “Petitioner”), gives notice that the civil action styled Chattanooga
`
`Professional Soccer Management, LLC v. Arkansas State University, Case 1:19-cv-00339-
`
`DCLC-CHS (the “Civil Action”), has been dismissed pursuant to a final and non-appealable
`
`order as of September 10, 2020. A copy of the order dismissing the Civil Action, issued on
`
`August 11, 2020, is attached to this Notice as Exhibit A. Although the Board’s Order required a
`
`notice from both parties, Respondent’s counsel did not indicate an inclination to participate after
`
`an inquiry by Petitioner’s counsel.
`
`Due to the dismissal of the Civil Action, ASU respectfully requests that the Board
`
`reinstate the instant Opposition Proceeding.
`
`Date: September 30, 2020
`
`1
`
`

`

`Respectfully Submitted,
`
`/Paige Mills/
`Paige Waldrop Mills
`Martha Allard
`Caitlin Wilkerson
`Bass, Berry & Sims
`Suite 280
`150 3d Ave South
`Nashville, TN 37201
`
`ELECTRONIC FILING CERTIFICATE
`
`I hereby certify that the foregoing was deposited electronically with the Trademark Trial
`
`and Appeal Board (“TTAB”) through the Electronic System for Trademark Trials and Appeal
`
`(“ESTTA”) on September 30, 2020.
`
`/Paige Mills/
`Paige Waldrop Mills
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Notice of Dismissal of
`
`Civil Action been served on Respondent via email and first class mail at the following addresses
`
`on September 30, 2020:
`
`Matthew Brownfield, BPR #010921
`Hollie A Floberg, BPR #035132
`633 Chestnut Street, Suite 900
`Chattanooga, TN 37450
`(423) 756-8400 (phone)
`(423) 756-6518 (fax)
`Mbrownfield@gkhpc.com
`Hfloberg@gkhpc.com
`
`Mary Frances Love
`ASPIRE IP
`444 E. PIKES PEAK AVE
`SUITE 105
`COLORADO SPRINGS, COLORADO UNITED STATES 80903
`(202) 247-7929
`maryfran@aspireip.com
`
`/Paige Mills/
`Paige Waldrop Mills
`
`3
`
`

`

`Exhibit A
`Exhibit A
`
`

`

`CHATTANOOGA PROFESSIONAL
`SOCCER MANAGEMENT, LLC,
`
`
`
`
`1:19-CV-00339-DCLC-CHS
`
` UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`CHATTANOOGA DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Plaintiff,
`
`vs.
`
`
`
`
`
`
`ARKANSAS STATE UNIVERSITY,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`This matter is before the Court on Defendant Arkansas State University’s (“ASU”) Motion
`
`to Dismiss [Doc. 18]. Plaintiff Chattanooga Professional Soccer Management, LLC (“CPSM”)
`
`filed a response in opposition [Doc. 24] and ASU filed a reply [Doc. 29]. This matter is now ripe
`
`for resolution. For the reasons that follow, ASU’s Motion to Dismiss [Doc. 18] is GRANTED.
`
`I.
`
`BACKGROUND
`
`ASU is a publicly funded state university in Jonesboro, Arkansas [Doc. 19, p. 1]. ASU
`
`owns United States Trademark Registration No. 3,677,815 for the mark “RED WOLVES” (“the
`
`ASU Mark”) [Doc. 1-3, p. 3]. CPSM operates a professional soccer team, Chattanooga Red
`
`Wolves SC, in the United Soccer League [Doc. 24, p. 1]. In 2018, CPSM filed two federal
`
`trademark applications with the United States Patent and Trademark Office (“USPTO”)—
`
`Application No. 88/117505, for the mark “CHATTANOOGA RED WOLVES SC” and
`
`Application No. 88/196890, for the mark “CHATTANOOGA RED WOLVES SC & Design” (“the
`
`CPSM Marks”) [Doc. 19, p. 2].
`
`
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 1 of 13 PageID #: 448
`
`1
`
`

`

`On December 14, 2018, approximately one month after CPSM filed its second trademark
`
`application, ASU sent CPSM a letter stating that CPSM’s use of the “RED WOLVES” mark
`
`constituted trademark infringement and unfair competition [Doc. 1-3]. ASU further demanded
`
`that CPSM cease use of the mark and respond by December 28, 2018 or ASU “was prepared to
`
`escalate to the full extent allowable by law, including litigation” [Id.]. CPSM responded on
`
`December 21, 2018, and informed ASU that CPSM disagreed with ASU’s conclusions and
`
`requested a co-existence agreement that would “outline the distinctive use of the different and
`
`distinct trademarks” [Doc. 1-4].
`
`On January 3, 2019, the USPTO refused CPSM’s trademark applications due to the
`
`likelihood of confusion with several other trademarks, including the ASU Mark [Doc. 19, p. 3].
`
`However, CPSM amended the application on May 30, 2019, and the USPTO withdrew the refusal
`
`[Id.]. The USPTO published the CPSM Marks for opposition on August 20, 2019 [Id.]. On
`
`September 11, 2019, ASU filed for 90-day extensions of time to oppose the registration, which
`
`were granted by the USPTO [Id.].
`
`On September 27, 2019, CPSM sent another letter to ASU in which CPSM requested a co-
`
`existence agreement and explained its willingness to discuss a reasonable settlement [Doc. 19-3].
`
`ASU responded on November 18, 2019 and informed CPSM that it did not wish to enter into a co-
`
`existence agreement [Doc. 1-5]. In the response, ASU included an in-depth analysis explaining
`
`why there would be a “strong likelihood of confusion caused by [CPSM’s] use of a mark that is
`
`confusingly similar to the ASU Marks.” [Id.]. Additionally, ASU informed CPSM that it would
`
`only consider a licensing agreement requiring payments by CPSM of annual royalty to ASU for
`
`the use of the mark [Id.]. Finally, ASU stated that “it plans to proceed with the opposition action
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 2 of 13 PageID #: 449
`
`2
`
`

`

`and or any other actions it deems necessary to protect its valuable Marks. All rights are expressly
`
`reserved.” [Id. at p. 5].
`
`On November 25, 2019, CPSM filed a Complaint with this Court requesting a declaratory
`
`judgment that the use of the CPSM Marks “does not violate § 32 or § 43 of the Lanham Act…or
`
`any other provision thereof, or constitute unfair competition, or trademark infringement under the
`
`Lanham Act or the statutes or common law of any state” and “is not a reproduction, copy,
`
`counterfeit, or colorable imitation of [the ASU Mark] under the Lanham Act” [Doc. 1, p. 5–6].
`
`Additionally, CPSM requests this Court to enjoin ASU from:
`
`(1) interfering with, or threatening to interfere with, use of Plaintiff’s Marks by
`Plaintiff or its agents, employees, representatives, licensees, vendors, customers,
`successors, or assigns, and/or (2) threatening to institute or instituting any action,
`including, without limitation, any administrative, USPTO, or Trademark Trial and
`Appeal Board proceeding, or other district court proceeding placing at issue the
`validity of Plaintiff’s Marks or CPSM’s right to use its Plaintiff’s Marks
`
`[Id. at p. 6]. On January 22, 2020, ASU filed the Motion to Dismiss [Doc. 18] that is currently
`
`before the Court asserting that CPSM’s Complaint should be dismissed for lack of subject matter
`
`jurisdiction because (1) ASU is immune from suit under the Eleventh Amendment and (2) no
`
`justiciable controversy exists as required by the Declaratory Judgment Act [Doc. 19].
`
`II.
`
`LEGAL STANDARD1
`
`
`
`Federal Rule of Civil Procedure 12(b)(1) provides for dismissal due to lack of subject
`
`matter jurisdiction. A Rule 12(b)(1) motion is construed as either a facial attack or a factual attack
`
`on subject matter jurisdiction. Ohio Nat. Life Ins. Co. v. United States, 922 F.2d 320, 325 (6th Cir.
`
`
`1 ASU’s memorandum mentions Rule 12(b)(6) in the introductory sentence of the Argument and
`in the Conclusion [Doc. 19]. However, ASU’s Motion to Dismiss asserts that CPSM’s Complaint
`should be dismissed due to lack of subject matter jurisdiction [Doc. 18]. Additionally, ASU’s
`memorandum [Doc. 19] includes legal analysis solely pursuant to Federal Rule of Civil Procedure
`12(b)(1) and the Court’s lack of jurisdiction based on sovereign immunity and the Declaratory
`Judgment Act. Thus, the Court will only analyze the motion under Rule 12(b)(1).
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 3 of 13 PageID #: 450
`
`3
`
`

`

`1990). A motion that “merely questions the sufficiency of the pleading” is a facial attack and a
`
`motion is considered a factual attack if it requires the Court to “weigh the conflicting evidence to
`
`arrive at the factual predicate that subject-matter jurisdiction exists or does not exist.” Id.
`
`ASU’s motion is construed as a factual attack with respect to both the claim of sovereign
`
`immunity and lack of jurisdiction under the Declaratory Judgment Act. Giorgadze v. Tennessee
`
`Tech. Ctr., No. 2:06-CV-264, 2007 WL 2327034, at *2 (E.D. Tenn. Aug. 10, 2007) (holding that
`
`a 12(b)(1) motion asserting Eleventh Amendment sovereign immunity constitutes a factual attack);
`
`see also Crowned Heads, LLC v. Nat’l Grange of Order of Patrons of Husbandry, No. 3:12-CV-
`
`1062, 2013 WL 1347874 (M.D. Tenn. April 3, 2013) (construing a 12(b)(1) motion to dismiss a
`
`declaratory judgment action as a factual attack when the parties cited extrinsic evidence along with
`
`allegations in the complaint). Thus, ASU’s motion to dismiss constitutes a factual attack and the
`
`allegations in CPSM’s Complaint are not entitled to the presumption of truth generally provided
`
`at the motion to dismiss stage. Gentek Bldg. Prod., Inc. v. Sherwin-Williams Co., 491 F.3d 320,
`
`330 (6th Cir. 2007).
`
`III. DISCUSSION
`
`
`
`
`
`A.
`
`Eleventh Amendment Immunity
`
`As a threshold matter, ASU asserts that Eleventh Amendment immunity is a jurisdictional
`
`bar and, as a result, CPSM bears the burden of establishing the existence of jurisdiction [Doc. 19,
`
`p. 7]. In contrast, CPSM contends that ASU bears the burden of establishing the defense of
`
`Eleventh Amendment immunity [Doc. 24, p. 4–5]. ASU is correct in that the plaintiff generally
`
`bears the burden of establishing jurisdiction to survive a Rule 12(b)(1) motion to dismiss. Rogers
`
`v. Stratton Indus., Inc., 798 F.2d 913, 915 (6th Cir. 1986). Furthermore, the Sixth Circuit has held
`
`that “rather than an affirmative defense, the Eleventh Amendment is a true jurisdictional bar….”
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 4 of 13 PageID #: 451
`
`4
`
`

`

`Russell v. Lundergan-Grimes, 784 F.3d 1037, 1046 (6th Cir. 2015). However, the Sixth Circuit in
`
`Russell also recognized that the Eleventh Amendment is “sui generis as a jurisdiction issue, having
`
`a ‘quasi-jurisdictional nature,’ one that can be waived or abrogated.” Id. (citing United States ex
`
`rel. Long v. SCS Bus. & Tech. Inst., Inc., 173 F.3d 890, 897 (D.C. Cir. 1999)).
`
`Likewise, it has been a longstanding rule that the “entity asserting entitlement to sovereign
`
`immunity bears the burden of showing that it is in fact an arm of the state.” Brent v. Wayne Cty.
`
`Dep't of Human Servs., 901 F.3d 656, 681 (6th Cir. 2018) (citing Lowe v. Hamilton Cty. Dep’t of
`
`Job & Family Servs., 610 F.3d 321, 324 (6th Cir. 2010)). Therefore, although the Eleventh
`
`Amendment acts as a jurisdictional bar, the uniqueness of such jurisdictional issue requires placing
`
`the burden on the entity asserting the immunity to show that it is an arm of the state. Therefore,
`
`the burden is on ASU to show that it is entitled to Eleventh Amendment immunity.
`
`The Eleventh Amendment provides, “[t]he Judicial power of the United States shall not be
`
`construed to extend to any suit in law or equity, commenced or prosecuted against one of the
`
`United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.” U.S.
`
`Const. amend. XI. The sovereign immunity guaranteed by the Eleventh Amendment deprives
`
`federal courts of subject matter jurisdiction unless an exception applies. Russell, 784 F.3d at 1046.
`
`ASU asserts that it is entitled to Eleventh Amendment immunity as an arm of the state and that no
`
`exception deprives it of such immunity [Doc. 19, p. 8]. In response, CPSM argues that ASU has
`
`failed to meet its burden of proving that it is an arm of the state and, even if it is, Congress has
`
`abrogated the state’s immunity through the Trademark Remedy Clarification Act (“TRCA”)2, and
`
`ASU has waived immunity by pursuing opposition proceedings in the USPTO [Doc. 24, p. 7–10].
`
`Therefore, the Court will address each issue in turn.
`
`
`2 Pub. Law 102-542, 106 Stat. 3567 (1992).
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 5 of 13 PageID #: 452
`
`5
`
`

`

`
`
`1.
`
`ASU is an “Arm of the State”
`
`An entity is entitled to Eleventh Amendment immunity if it is an “arm of the state.” Ernst
`
`v. Rising, 427 F.3d 351, 358 (6th Cir. 2005). The following factors are considered to determine
`
`whether a particular entity is considered an arm of the state:
`
`(1) the state's potential liability for a judgment against the entity; (2) the language
`by which state statutes and state courts refer to the entity and the degree of state
`control and veto power over the entity's actions; (3) whether state or local officials
`appoint the board members of the entity; and (4) whether the entity's functions fall
`within the traditional purview of state or local government.
`
`Pucci v. Nineteenth Dist. Court, 628 F.3d 752, 760 (6th Cir. 2010) (quoting Ernst, 427 F.3d at
`
`359). The first factor is the “foremost factor” and the focus is on the state’s “potential legal liability
`
`for the judgment, not whether the state treasury will pay for the judgment in that case….” Ernst,
`
`427 F.3d at 359. However, the first factor “is not ‘the sole criterion for determining whether an
`
`agency is a state entity for sovereign immunity purposes.’” Id. at 364 (quoting S.J. v. Hamilton
`
`Cty., 374 F.3d 416, 421 (6th Cir. 2004)). Thus, the potential liability of the state is not dispositive
`
`and “in certain cases…the last three factors may demonstrate that an entity is an arm of the
`
`state….” Pucci, 628 F.3d at 762.
`
`
`
`Applying these factors to the instant matter, ASU is, in fact, an arm of the state. First, the
`
`Eighth Circuit has held that ASU is an arm of the state due to the fact that “ASU could not spend
`
`money without an appropriation from the state assembly.” Dover Elevator Co. v. Arkansas State
`
`Univ., 64 F.3d 442, 447 (8th Cir. 1995). Although CPSM asserts that no monetary damages are
`
`sought in this action, the Sixth Circuit has explained that the focus is not on whether the state will
`
`pay for the judgment in this specific case. Hamilton Cty., 374 F.3d at 421. The state of Arkansas
`
`ultimately has potential legal liability for a judgment against ASU. Nonetheless, this factor is not
`
`dispositive in light of the other factors to be considered.
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 6 of 13 PageID #: 453
`
`6
`
`

`

`
`
`As to the remaining factors, Arkansas state legislation established ASU and Arkansas
`
`statutes refer to ASU as a “state agricultural school.” Ark. Code Ann. § 6-65-102 (emphasis
`
`added). The members of the board of trustees for ASU are appointed “by the Governor, by and
`
`with the advice and consent of the Senate.” Ark. Code Ann. § 6-65-201. The state also has
`
`significant control over ASU’s actions through the board of trustees, which is “charged with the
`
`management and control” of ASU. Ark. Code Ann. § 6-65-202. Finally, as a state university, it is
`
`apparent that ASU’s functions fall within the traditional purview of state, rather than local,
`
`government. Considering all of the above factors, the Court finds that ASU is an arm of the state.
`
`Therefore, ASU is entitled to Eleventh Amendment immunity unless an exception applies.
`
`2.
`
`Exceptions to Eleventh Amendment Immunity
`
`There are three exceptions to Eleventh Amendment immunity: (1) when Congress
`
`expressly abrogates the states’ sovereign immunity; (2) when the state waives immunity; or (3)
`
`when the doctrine set forth in Ex parte Young applies. Boler v. Early, 865 F.3d 391, 410 (6th Cir.
`
`2017). ASU asserts that Ex parte Young does not apply and CPSM does not dispute this contention
`
`[Doc. 19, p. 11]. Thus, the Court will focus on abrogation and waiver.
`
`
`
`
`
`
`
`i.
`
`Congressional Abrogation
`
`
`
`Congress may abrogate the states’ Eleventh Amendment immunity by “unequivocally
`
`express[ing] its intent” and acting “pursuant to a valid exercise of power.” Green v. Mansour, 474
`
`U.S. 64, 68 (1985). CPSM asserts that Congress abrogated the states’ immunity through enactment
`
`of the TRCA, which amended the Lanham Act to include, in relevant part, the following language:
`
`Any State, instrumentality of a State or any officer or employee of a State or
`instrumentality of a State acting in his or her official capacity, shall not be immune,
`under the eleventh amendment of the Constitution of the United States or under any
`other doctrine of sovereign immunity, from suit in Federal court by any person,
`including any governmental or nongovernmental entity for any violation under this
`chapter.
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 7 of 13 PageID #: 454
`
`7
`
`

`

`15 U.S.C. § 1122. It is clear from this language that Congress unequivocally expressed its intent
`
`to abrogate the states’ sovereign immunity for claims under the Lanham Act. Therefore, the only
`
`remaining question is whether Congress acted pursuant to a valid exercise of power.
`
`
`
`In enacting the TRCA, Congress cited its powers under the Commerce Clause3 and the
`
`enabling provision of the Fourteenth Amendment.4 S. Rep. No. 102–280, at 8 (1992), as reprinted
`
`in 1992 U.S.C.C.A.N. 3087, 3094. Congress also passed the Patent and Plant Variety Protection
`
`Remedy Clarification Act (“PRCA”) as a companion bill, which attempted to abrogate Eleventh
`
`Amendment immunity for suits against the state under the Patent Code. Id. at 1. The Supreme
`
`Court subsequently ruled that Congress did not act pursuant to a valid exercise of power when
`
`enacting the PRCA and, therefore, the PRCA did not abrogate Eleventh Amendment immunity.
`
`Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627 (1999) (“Florida
`
`Prepaid”). The Court held that “Congress may not abrogate state sovereign immunity pursuant to
`
`its Article I powers;” thus, the Act could not be sustained under the Commerce Clause. Id. at 636
`
`(citing Seminole Tribe of Fla. v. Fla., 517 U.S. 44, 72–73 (1996)). However, the Court held that
`
`Congress does have the authority to abrogate state sovereign immunity through its powers under
`
`Section 5 of the Fourteenth Amendment. Id. at 637.
`
`The enabling clause found in Section 5 gives Congress the “power to enforce” the
`
`provisions of the Fourteenth Amendment through “appropriate legislation.” U.S. Const. amend.
`
`XIV, § 5. Legislation is “appropriate” if it is tailored to remedy or prevent conduct “transgressing
`
`the Fourteenth Amendment’s substantive provisions.” Fla. Prepaid, 527 U.S. at 639. In other
`
`words, “[t]here must be a congruence and proportionality between the injury to be prevented or
`
`
`
`3 U.S. Const. art. I, § 8.
`4 U.S. Const. amend. XIV, § 5.
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 8 of 13 PageID #: 455
`
`8
`
`

`

`remedied and the means adopted to that end.” Id. With respect to the PRCA, the Court held that
`
`patents are “property” protected by the due process clause of the Fourteenth Amendment but that
`
`the PRCA lacked the required congruence and proportionality and, therefore, was not appropriate
`
`legislation under Section 5 of the Fourteenth Amendment. Id. at 642–643, 648.
`
`The Supreme Court, in its companion decision to Florida Prepaid, examined Congress’s
`
`abrogation of state sovereign immunity in the TRCA. Coll. Sav. Bank v. Fla. Prepaid
`
`Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) (“College Savings”). The Court held that
`
`Article I powers, such as the Commerce Clause, do not provide Congress with authority to abrogate
`
`sovereign immunity and the asserted “property rights”—(1) freedom from false advertising and
`
`(2) the right the generally “be secure in one’s business interests”—were not “property” within the
`
`meaning of the due process clause. Id. at 672. Finding no deprivation of property, the Court held
`
`that sovereign immunity was not validly abrogated under the Fourteenth Amendment. Id. at 675.
`
`CPSM asserts, and this Court agrees, that the instant matter is distinguishable from College
`
`Savings because trademarks are considered “property” and, thus, they fall within the protections
`
`of the Fourteenth Amendment Id. at 673 (“trademarks…are the ‘property’ of the owner because
`
`he can exclude others from using them”). The next step in the analysis, which the Court in College
`
`Savings did not reach, is to determine whether the TRCA is “appropriate” legislation—whether it
`
`contains the requisite “congruence and proportionality between the injury to be prevented or
`
`remedied and the means adopted to that end.” Fla. Prepaid, 527 U.S. at 639. CPSM cites the
`
`senate report to support the assertion that the TRCA was “justified as an acceptable method of
`
`enforcing the provisions of the Fourteenth Amendment.” S. Rep. No. 102–280, at 8. However,
`
`this is precisely the legislative record that the Supreme Court examined in Florida Prepaid to reach
`
`
`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 9 of 13 PageID #: 456
`
`9
`
`

`

`the conclusion that there was “little support for the proposition that Congress sought to remedy a
`
`Fourteenth Amendment violation in enacting the [PRCA].” Fla. Prepaid, 527 U.S. at 642.
`
`Similar to the PRCA, Congress purported to enact the TRCA to prevent trademark
`
`infringement by the states but failed to identify any conduct causing deprivation of property
`
`without due process. Interference with a property right by the State only violates due process
`
`“where the State provides no remedy, or only inadequate remedies.” Id. at 643. Congress did not
`
`assert that state remedies for trademark infringement were “constitutionally inadequate.” Id. at
`
`644. Rather, it relied on the position that state remedies for trademark infringement were less
`
`convenient than federal remedies. S. Rep. No. 102–280, at 6.
`
`Just as the Supreme Court found with respect to the PRCA, “Congress appears to have
`
`enacted [the TRCA] in response to a handful of instances of state [trademark] infringement that
`
`do not necessarily violate the Constitution.” Fla. Prepaid, 527 U.S. at 645–46. Due to the lack of
`
`due process violations, the provisions of the TRCA are “‘so out of proportion to a supposed
`
`remedial or preventive object that [they] cannot be understood as responsive to, or designed to
`
`prevent, unconstitutional behavior.’” Id. at 646 (quoting City of Boerne v. Flores, 521 U.S. 507,
`
`532 (1997)).
`
`Congress did not enact the TRCA in response to a history of “widespread and persisting
`
`deprivation of constitutional rights.” Id. at 645. Instead, the basic purpose of the TRCA was to
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`“provide uniform protection throughout…trademark systems.” S. Rep. No. 102–280, at 9. As the
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`Supreme Court held, these are “proper Article I concerns,” but are not the type of due process
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`concerns that fall within the Fourteenth Amendment. Fla. Prepaid, 527 U.S. at 648. Accordingly,
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`this Court finds that Congress did not act pursuant to a valid exercise of power and, thus, the TRCA
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`does not abrogate Eleventh Amendment immunity under the Lanham Act.
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`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 10 of 13 PageID #: 457
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`ii. Waiver of Immunity
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`A state may waive sovereign immunity by voluntarily invoking jurisdiction of the federal
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`court or by making a “clear declaration” that it intends to submit to jurisdiction of the federal court.
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`Coll. Sav. Bank, 527 U.S. at 676. A state may waive immunity through litigation conduct, but
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`such waiver must be “clear.” Lapides v. Bd. of Regents of Univ. Sys. of Georgia, 535 U.S. 613,
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`620 (2002). The Supreme Court has held that waiver is clear when a state joins a proceeding in
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`federal court through intervention, Clark v. Barnard, 108 U.S. 436, 448 (1883); voluntarily
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`submits its rights for judicial determination in federal court, Gunter v. Atl. Coast Line R. Co., 200
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`U.S. 273, 292 (1906); or removes state-court proceedings to federal court. Lapides, 535 U.S. at
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`620. Additionally, the Court of Appeals for the Federal Circuit held that a state waives sovereign
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`immunity with respect to compulsory counterclaims by filing suit in federal court because “a state
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`as plaintiff can surely anticipate” that such counterclaims would be asserted. Regents of Univ. of
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`New Mexico v. Knight, 321 F.3d 1111, 1126 (Fed. Cir. 2003).
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`CPSM asserts that ASU waived sovereign immunity by “willfully and voluntarily” filing
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`oppositions in the USPTO against CPSM’s pending trademark applications, thereby subjecting
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`itself to a Trademark Trial and Appeal Board (“TTAB”) proceeding [Doc 24, p. 10]. CPSM further
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`contends that “ASU has pursued aggressive action against CPSM in the nature of pursuing
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`litigation.” [Id.]. However, the filing of oppositions in the USPTO and consenting to proceedings
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`before the TTAB, an administrative board, do not voluntarily invoke jurisdiction of the federal
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`court nor make a “clear declaration” of the intent to submit to the jurisdiction of the federal court.
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`See Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 99 (1984) (“A State’s constitutional
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`interest in immunity encompasses not merely whether it may be sued, but where it may be sued.”).
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`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 11 of 13 PageID #: 458
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`Tegic Commc'ns Corp. v. Bd. of Regents of Univ. of Texas Sys., 458 F.3d 1335 (Fed. Cir.
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`2006) illustrates the “whether” versus “where” distinction as stated by the Supreme Court in
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`Pennhurst. In Tegic, a state University filed suit against numerous telephone companies in the
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`Western District of Texas for patent infringement and Tegic, a corporation that sold and licensed
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`the allegedly infringing software to 39 of the telephone companies, brought a declaratory judgment
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`action against the University in the Western District of Washington seeking a declaration of
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`noninfringement. Tegic Commc'ns Corp., 458 F.3d at 1337–38. The Western District of
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`Washington dismissed the action on the ground that the University was an arm of the state and had
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`not waived sovereign immunity as to the declaratory judgment action. Id. at 1339. Tegic appealed
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`and the Court of Appeals for the Federal Circuit affirmed. Id. The Federal Circuit held that the
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`University’s filing of the Texas action did not establish waiver of immunity as to the separate
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`Washington action. Id. at 1342. The Federal Circuit, comparing the litigation conduct of the
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`University to that of states in prior cases, held that “[a]lthough here the University obviously ‘made
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`itself a party to the litigation to the full extent required for its complete determination,’ it did not
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`thereby voluntarily submit itself to a new action brought by a different party in a different state
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`and a different district court.” Id. at 1343 (quoting Clark, 108 U.S. at 448).
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`The litigation conduct of ASU differs significantly from the conduct of the states in Clark,
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`Gunter, and Lapides. ASU has neither pursued litigation in federal court nor voluntarily submitted
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`its rights for judicial determination in federal court. Similar to the University in Tegic, ASU did
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`not voluntarily submit itself to a new action in a completely different forum. In fact, ASU has not
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`submitted itself to the jurisdiction of any federal court. Rather, the only proceeding ASU has
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`voluntarily subjected itself to is an administrative proceeding before the TTAB due to the filing of
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`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 12 of 13 PageID #: 459
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`oppositions to CPSM’s trademark applications in the USPTO. Thus, the Court finds that ASU’s
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`actions do not constitute waiver of ASU’s Eleventh Amendment immunity in this Court.
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`IV. CONCLUSION
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`Having found that ASU is immune from suit under the Eleventh Amendment and no
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`exceptions apply, it is unnecessary to rule on ASU’s assertion that no justiciable controversy exists
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`under the Declaratory Judgment Act. Accordingly, for the reasons stated herein, Defendant’s
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`Motion to Dismiss [Doc. 18] is GRANTED and Plaintiff’s Complaint is DISMISSED
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`WITHOUT PREJUDICE.5 The Clerk is DIRECTED to close the case.
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`SO ORDERED:
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`s/ Clifton L. Corker
`United States District Judge
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`
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`5 Dismissal due to lack of subject matter jurisdiction based on the Eleventh Amendment should be
`without prejudice. Carmichael v. City of Cleveland, 571 F. App'x 426, 435 (6th Cir. 2014).
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`Case 1:19-cv-00339-DCLC-CHS Document 32 Filed 08/11/20 Page 13 of 13 PageID #: 460
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