San Diego County Credit Union v. Citizens Equity First Credit Union

Question 1: In trademark disputes, the alleged infringing party often seeks declarations that the mark of the opposing party (i) is not infringed and (ii) is invalid. The question then arises whether a finding of noninfringement moots the claim for invalidity. The Ninth Circuit here answered that question yes, holding that once Petitioner San Diego County Credit Union obtained a declaration of non-infringement it lost any personal stake it had in invalidating the mark it allegedly infringed. The Ninth Circuit’s decision creates a clear circuit split, as it directly conflicts with a well-established line of authority from the Federal Circuit. In the directly analogous patent context, the Federal Circuit has interpreted this Court’s decision in Cardinal Chemical Co. v. Morton International, Inc., 508 U.S. 83 (1993) to hold that a finding of non-infringement by itself does not moot a request for a declaratory judgment of invalidity. Therefore, the question presented is: Whether a district court’s finding that a trademark has not been infringed by itself moots any request for a declaration that the trademark is invalid unless the party seeking the declaration presents additional evidence demonstrating that the invalidity claim is not moot.