Ninth Circuit Confirms that Trademark Cancellation Is a Remedy and Not a Cause of Action

by McDermott Will & Emery

Airs Aromatics v. Victoria’s Secret

Dismissing a trademark cancellation claim against Victoria’s Secret’s DREAM ANGELS trademarks, the U.S. Court of Appeals for the Ninth Circuit ruled that federal trademark law under § 37 of the Lanham Act does not provide an independent cause of action for trademark cancellation. Airs Aromatics v. Victoria’s Secret, Case No. 12-55276 (9th Cir., Feb. 28, 2014) (Farris, J.).

In 1991, Airs International, the purported owner of the trademark ANGEL DREAMS, entered into a consent-to-use agreement allowing Victoria’s Secret to use the mark DREAM ANGELS in connection with the sale and marketing of personal care products in exchange for a fee of $25,000 per year payable to Airs International. In 2000, Airs International became involved in litigation pertaining to the ownership of its trademarks, including the ANGEL DREAMS trademark.  During the litigation, Victoria’s Secret made its annual payments under the consent-to-use agreement into an escrow account.  However, in 2002, the California Secretary of State’s office suspended Airs International’s corporate status, and in 2008, Victoria's Secret elected to stop making payments under the agreement with Airs International.  Victoria’s Secret then filed several U.S. trademark applications for its various uses of the DREAM ANGELS trademark, and the United States Patent and Trademark Office granted the registrations.

In 2011, the principal of Airs International revived the company and attempted to transfer all of its common law rights in the ANGEL DREAMS trademark to a newly formed company, Airs Aromatics, LLC.  Shortly thereafter, Airs Aromatics filed a complaint against Victoria’s Secret for breach of the consent-to-use agreement, and requesting cancellation of the eight DREAM ANGELS trademark registrations owned by Victoria’s Secret.

The district court dismissed the case with prejudice finding that Airs Aromatics lacked standing to pursue the trademark cancellation claim because Airs Aromatics did not adequately allege continuous use or “non-abandonment” of its ANGEL DREAMS trademark.  The district court also dismissed the breach of contact claims finding that the alleged breach of the agreement did not breach the actual terms.  Air Aromatics appealed the dismissal of the trademark cancellation claim only.

On appeal, the 9th Circuit had to decide whether the sole claim of trademark cancellation could provide an independent basis for subject-matter jurisdiction on remand.  Resolving previous contrasting interpretations as to whether §37 of the Lanham Act provides an independent basis for trademark cancellation claims, the Court held that the language of the Lanham Act “specifies that cancellation may only be sought if there is already an ongoing action that involves a registered mark.”  Citing the interpretations of other circuits that have previously addressed the issue, the court further noted that § 37 of the Lanham Act “creates a remedy for trademark infringement rather than an independent basis of federal jurisdiction.”

Airs Aromatics argued that its cancellation claim was actually a poorly pleaded claim of trademark infringement.  However, after noting that Airs Aromatics original claim was titled “Cancellation of Registered Trademarks,” the court further disagreed with Airs Aromatics arguments further noting that the company failed to allege any facts regarding its continuous usage of the ANGEL DREAMS mark and therefore did not allege sufficient facts to support a claim for trademark infringement.  Accordingly, the Court affirmed the district court’s dismissal of the trademark cancellation claim.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.