In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding. The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case. The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.
The Second Circuit affirmed. The court held there was no abuse of discretion in denying the Rule 59(e) motion. Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.
More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.