957 F.3d 348
2d Cir.2020Background
- Plaintiff Abdul Rehman Karim Saleh co-owns an online apparel business selling under the marks SULKA and PHULKA in India and Thailand and seeks to enter the U.S. market.
- Sulka Trading (defendants) own U.S. registrations for the SULKA mark; correspondence between the parties: Saleh claimed abandonment and intent to enter U.S. market; Sulka Trading asserted ongoing U.S. use and imminent expansion.
- Saleh filed a declaratory-judgment action (trademark abandonment). His FAC alleged website presence, domain registrations, an unspecified shirt sale in India, supplier and shipper arrangements, and a pending U.S. trademark application, plus that he “could expand” to the U.S. by enabling U.S. orders and payment processors.
- District court dismissed for lack of subject-matter jurisdiction, holding Saleh’s allegations too vague to show he was prepared to immediately use the mark in U.S. commerce; noted many alleged preparations occurred after the initial complaint.
- On appeal, the Second Circuit applied the Starter/MedImmune framework (focusing on Starter’s second prong) and affirmed: Saleh failed to allege a course of conduct showing definite intent and apparent ability to commence U.S. use; his plans were speculative and lacked concrete U.S.-directed steps.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Existence of an Article III case-or-controversy for a trademark declaratory judgment (i.e., whether Saleh showed definite intent and apparent ability to use SULKA in U.S.) | Saleh alleged concrete plans and business infrastructure (website, domains, supplier/shipper relationships, U.S. trademark application) and ability to quickly switch to U.S. sales. | Sulka Trading argued allegations are speculative, mostly foreign, lacking concrete U.S.-targeted steps; thus no justiciable controversy. | Held: No—the FAC’s allegations were too nebulous to show definite intent and apparent ability to commence U.S. use; dismissal affirmed. |
| Relevance of post-complaint facts to cure jurisdictional defects | Saleh contends an amended complaint may be used to determine jurisdiction and thus later facts alleged in FAC should count. | Sulka Trading contends jurisdiction depends on the state of facts at filing and post-complaint facts cannot create jurisdiction. | Held: Court assumed (for decision) post-complaint allegations could be considered, but found even those allegations insufficient to establish jurisdiction. |
| Sufficiency of specific allegations (website, sample sales, U.S. application) to show readiness for U.S. launch | Saleh relied on website, domain names, a claimed sale in India, supplier contact, shipping/payment arrangements, and U.S. registration application as evidence of readiness. | Sulka Trading stressed the website used digitally altered images (no inventory), samples arrived only after suit, and no U.S.-focused marketing or concrete logistics were shown. | Held: Those facts were inadequate—website and US application show intent only, not apparent ability; lack of inventory, concrete U.S. marketing, or firm logistics undermined readiness. |
Key Cases Cited
- Starter Corp. v. Converse, Inc., 84 F.3d 592 (2d Cir. 1996) (requires plaintiff to show a course of conduct evidencing definite intent and apparent ability to commence use of the mark).
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (Declaratory Judgment Act requires a definite, concrete controversy of sufficient immediacy and reality).
- Nike, Inc. v. Already, LLC, 663 F.3d 89 (2d Cir. 2011) (explains that Starter’s reasonable-apprehension prong was rejected post-MedImmune but Starter’s second prong remains).
- Grupo Dataflux v. Atlas Global Grp., L.P., 541 U.S. 567 (2004) (jurisdictional facts are ordinarily measured as of the time of filing).
- Wilton v. Seven Falls Co., 515 U.S. 277 (1995) (district courts have discretion whether to entertain declaratory-judgment actions).
- Gelmart Indus., Inc. v. Eveready Battery Co., 120 F. Supp. 3d 327 (S.D.N.Y. 2014) (example where detailed pre-filing commercial relationships and retailer outreach supported declaratory-judgment jurisdiction).