BACKGROUND

20 Sunsauce is a Thailand-based company that produces and sells Thai-style sauces and 21 related food products. Son Fish Sauce is a California-based company that produces and sells fish 22 sauce in the United States. Sunsauce alleged that Son Fish Sauce’s “SON SAUCE” mark is likely 23 to cause confusion among consumers given Sunsauce’s existing “SUNSAUCE” composite mark, 24 which was registered with the USPTO under Section 44(e) in July 2013 in connection with sauces 25 and related food products (Reg. No. 4,363,095) (“’095 Registration”). 26 Several years after Sunsauce registered its mark with USPTO, Son Fish Sauce applied for a 27 trademark for its SON SAUCE mark (both in word and design form). Its application was denied in 1 2020 based on the USPTO’s finding of a likelihood of confusion with Sunsauce’s SUNSAUCE 2 mark. Son Fish Sauce thereafter filed a petition with the Trademark Trial and Appeal Board in 3 June 2022 seeking to cancel Sunsauce’s trademark registration on the ground that Sunsauce had 4 either abandoned its mark or failed to adequately use it in the United States. That cancellation 5 proceeding has been stayed pending resolution of this lawsuit. 6 Sunsauce filed this lawsuit on December 19, 2022, asserting a trademark infringement 7 claim under the Lanham Act, 15 U.S.C. § 1114; a common law trademark infringement claim; a 8 claim for unfair competition under California’s Unfair Competition Law, Cal. Bus. & Prof. Code § 9 17200; and a claim for unfair competition under Section 43 of the Lanham Act, 15 U.S.C. § 10 1125(a). 11 Son Fish Sauce asserted counterclaims against Sunsauce seeking cancellation of the ’095 12 Registration under 15 U.S.C. § 1064, a declaration that the ’095 Registration is invalid, and a 13 declaration that Son Fish Sauce’s mark does not infringe the ’095 Registration or any common law 14 rights Sunsauce has in its mark. Son Fish Sauce alleged that Sunsauce’s registration is void ab 15 initio because, at the time of its trademark application, Sunsauce lacked a bona fide intent to use 16 its mark in commerce. Son Fish Sauce also alleged that Sunsauce’s registration should be 17 cancelled because Sunsauce fraudulently misrepresented its products’ use in commerce in its 2019 18 Declaration of Use and Incontestability. 19 The parties filed cross-motions for summary judgment. In December 2024, the Court 20 granted Son Fish Sauce’s motion for summary judgment as to Sunsauce’s claims, denied Son Fish 21 Sauce’s motion as to its own counterclaims, and denied Sunsauce’s motion for summary 22 judgment. The only remaining claims in this case are Son Fish Sauce’s counterclaims against 23 Sunsauce. 24 Sunsauce now moves for entry of final judgment or, in the alternative, for leave to file a 25 motion to dismiss the pending counterclaims for lack of jurisdiction. 26 LEGAL STANDARD 27 Federal courts are courts of limited jurisdiction. Kokkonen v. Guardian Life Ins. Co. of 1 only actual, ongoing cases or controversies between litigants. Deakins v. Monaghan, 484 U.S. 2 193, 199 (1988). “The case-or-controversy requirement demands that, through all stages of federal 3 judicial proceedings, the parties continue to have a personal stake in the outcome of the lawsuit.” 4 United States v. Verdin, 243 F.3d 1174, 1177 (9th Cir. 2001). If at any time during litigation a 5 plaintiff ceases to “suffer[], or be threatened with, an actual injury traceable to the defendant and 6 likely to be redressed by a favorable judicial decision,” the matter is moot and the federal court no 7 longer retains federal jurisdiction. Spencer v. Kemna, 523 U.S. 1, 7 (1998) (cleaned up). If a 8 federal court lacks jurisdiction over a case, it must dismiss the action. Spencer 9 Enters., Inc. v. United States, 345 F.3d 683, 687 (9th Cir. 2003). 10 ANALYSIS 11 The Court has a duty to ensure its subject matter jurisdiction at all times throughout the 12 course of litigation. Gros Ventre Tribe v. United States, 469 F.3d 801, 815 (9th Cir. 2006). In its 13 motion for entry of final judgment, Sunsauce raises questions about the Court’s jurisdiction to 14 adjudicate the remaining claims before it, contending that there is no remaining case or 15 controversy over which the Court may exercise subject matter jurisdiction. 16 As noted above, the remaining claims before the Court are Son Fish Sauce’s claim for 17 cancellation of Sunsauce’s trademark and its requests for declarations of non-infringement and 18 invalidity. The question before the Court is whether any of these claims continue to present a live 19 case or controversy following the dismissal of Sunsauce’s infringement claim based on a 20 determination that there is no likelihood of confusion between the parties’ marks. 21 Son Fish Sauce’s claim for cancellation does not present a live case or controversy because 22 cancellation of a trademark is not an independent cause of action in the Ninth Circuit. Airs 23 Aromatics, LLC v. Victoria’s Secret Stores Brand Management, Inc., 744 F.3d 595, 599 (9th Cir. 24 2014) (cleaned up) (“[C]ancellation may only be sought if there is already an ongoing action that 25 involves a registered mark; [the language of section 37 of the Lanham Act] does not indicate that a 26 cancellation claim is available as an independent cause of action. Furthermore, each circuit to 27 directly address this statutory language has held that it creates a remedy for trademark 1 Union v. Citizens Equity First Credit Union, No. 18CV967-GPC(MSB), 2020 WL 5797827, at *8 2 (S.D. Cal. Sept. 29, 2020) (“[C]ancellation under 15 U.S.C. § 1119 may be invoked as a remedy 3 only where there is otherwise proper Article III subject matter jurisdiction, or independent cause 4 of action, over some injury claimed concerning the validity or interference of a registered 5 trademark.”). Because Sunsauce’s infringement claim has been dismissed, Son Fish Sauce can no 6 longer pursue a derivative cancellation claim. 7 Son Fish Sauce maintains that the Court has jurisdiction over its counterclaims seeking 8 declaratory judgments of non-infringement and invalidity pursuant to the Declaratory Judgment 9 Act, 28 U.S.C. § 2201(a). The Act, however, does not create subject matter jurisdiction in the 10 absence of an Article III case or controversy. Gov’t Emps. Ins. Co. v. Dizol, 133 F.3d 1220, 1222 11 (9th Cir. 1998). To determine whether a case or controversy exists in a declaratory judgment 12 action regarding trademark infringement, the Ninth Circuit applies the “reasonable apprehension” 13 test. San Diego Cnty. Credit Union v. Citizens Equity First Credit Union, 65 F.4th 1012, 1023 (9th 14 Cir. 2023). “[A] plaintiff has standing to seek declaratory relief of non-infringement if he 15 demonstrates ‘a real and reasonable apprehension that he will be subject to liability’ if he 16 continues with his course of conduct.” Id. (quoting Societe de Conditionnement en Aluminium v. 17 Hunter Eng’g Co., 655 F.2d 938, 944–45 (9th Cir. 1981)). 18 Son Fish Sauce argues that it faces a threat of litigation from Sunsauce sufficient to 19 establish its standing to seek declaratory relief. It cites as evidence of that threat this lawsuit and 20 the fact that the parties have no covenant not to sue in the future. Sunsauce is certainly right about 21 its standing to pursue such relief immediately following the filing of this lawsuit. At that time, Son 22 Fish Sauce did not merely face a “real and reasonable apprehension” of future liability but had in 23 fact already been sued. See Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (quoting 6 24 J. Thomas McCarthy, Trademarks and Unfair Competition § 32:53 (4th ed. 2007)) (“[I]f the 25 declaratory plaintiff has in fact been threatened with litigation for infringement ..., it should be 26 allowed to bring an action for declaratory judgment to determine non-infringement, and join with 27 it a claim of invalidity of the mark and a prayer for cancellation of the declaratory defendant’s 1 1300 (Fed. Cir. 2010) (“[A] party that has been sued for trademark infringement has established 2 || declaratory judgment jurisdiction to allege noninfringement and invalidity. To hold otherwise 3 || would prevent a defendant from raising defenses to the charge against it.”). 4 But “the circumstances that prevailed at the beginning of the litigation” have changed, 5 “foreclos[ing] the possibility of [Son Fish Sauce] obtaining meaningful relief by pursuing its 6 [declaratory relief] claim.” San Diego Cnty. Credit Union, 65 F.4th at 1031 (cleaned up). This 7 Court has rejected Sunsauce’s infringement claims because there is no likelihood of confusion 8 || between the parties’ marks. Unless this Court’s decision is overturned on appeal, issue preclusion 9 will prevent Sunsauce from asserting its trademark infringement claims against Son Fish Sauce in 10 || the future. There is therefore little likelihood that Son Fish Sauce will be subject to future liability 11 arising from Sunsauce’s trademark rights. Under these changed circumstances, Son Fish Sauce no 12 || longer has a reasonable apprehension of future liability sufficient to establish a case or controversy 13 || under Article III.

CONCLUSION

3 15 Because there is no longer a live case or controversy before the Court, Son Fish Sauce’s 16 || remaining counterclaims are dismissed for lack of jurisdiction.

IT IS SO ORDERED.

1g || Dated: February 5, 2025 Zo 19 Mey P. Casey Pit 20 United States District Judge 21 22 23 24 25 26 27 28