Summary
The United States District Court for the Western District of Kentucky addresses trademark-related claims involving the “DIVA LAWYERS” and “DIVA ATTORNEY” marks. The court dismisses Clark’s trademark-infringement claim for lack of statutory standing and dismisses part of her declaratory-judgment claim concerning alleged common-law rights, while allowing the claim concerning the registered mark to proceed. The court also grants Baker’s motion to join The Diva Lawyers Social Club, Inc. as a necessary party to Baker’s counterclaims seeking noninfringement and cancellation of the registration.
Court
United States District Court for the Western District of Kentucky, Louisville Division
Jurisdiction
United States District Court for the Western District of Kentucky, Louisville Division
Decision date
January 16, 2026
Docket number
3:25-cv-70-RGJ
Disposition
other
Questions Presented
- Whether Clark had statutory standing to bring a Section 32(1) Lanham Act infringement claim concerning a registered mark owned by DLSC.
- Whether Clark had Article III and Declaratory Judgment Act standing to seek declarations concerning the validity of DLSC's registered mark and Clark's alleged common-law rights.
- Whether Baker's counterclaims were compulsory and whether DLSC was a necessary party under Federal Rules of Civil Procedure 13(h) and 19.
- Whether joinder of DLSC was feasible based on personal jurisdiction, including an alter-ego theory.
- Whether Baker plausibly stated a claim for declaratory noninfringement.
- Whether Clark was a proper defendant to Baker's cancellation counterclaim under 15 U.S.C. § 1119.
Holdings
- A claim under Section 32(1) of the Lanham Act generally must be brought by the registrant, and Clark lacked standing because she did not plead that she was the registrant, DLSC's legal representative, an assignee, or an exclusive licensee.
- Clark plausibly alleged an actual controversy sufficient to proceed with Count 2 insofar as it concerned the validity of DLSC's registered DIVA LAWYERS mark.
- Clark lacked standing to seek declaratory relief concerning her alleged common-law rights in DIVA LAWYERS, and the court dismissed Count 2 to that extent.
- Baker's claims for declaratory noninfringement and cancellation of the DIVA LAWYERS registration were compulsory counterclaims because they were logically related to Clark's trademark claims and involved the same underlying marks and issues.
- DLSC was a necessary party under Rule 19 because it was the registered owner of the mark whose validity Baker sought to challenge and because complete relief could not be afforded, or DLSC's interests protected, in its absence.
- Joinder was feasible because Baker made a prima facie showing that DLSC could be subject to personal jurisdiction under an alter-ego theory, even though Baker did not plead independent Kentucky contacts sufficient for specific jurisdiction.
- Baker plausibly stated a claim for declaratory noninfringement because the parties' competing infringement positions created an actual controversy and the requested declaration could settle the dispute and clarify the parties' legal relations.
- Clark was not a proper defendant to Baker's cancellation counterclaim because the pleadings alleged that DLSC, not Clark, owned the registered mark. The cancellation claim was dismissed against Clark but could proceed against DLSC.
Court Document
Open PDFLoading document…