                                                               NOT PRECEDENTIAL

                       UNITED STATES COURT OF APPEALS
                            FOR THE THIRD CIRCUIT
                                ______________

                                       No. 19-1017
                                     ______________

              ENGAGE HEALTHCARE COMMUNICATIONS, L.L.C.;
             GREENHILL HEALTHCARE COMMUNICATIONS, L.L.C.;
                  CENTER OF EXCELLENCE MEDIA, L.L.C.,

                                                               Appellants

                                             v.

                          INTELLISPHERE, L.L.C.;
                MICHEL J. HENNESSY & ASSOCIATES, INC.;
            MICHAEL J. HENNESSY; ARC MESA EDUCATORS, L.L.C.;
                       JOHN DOES 1-5; JANE DOES 1-5
                              ______________

                     On Appeal from the United States District Court
                              for the District of New Jersey
                             (D.C. Civ. No. 3-12-cv-00787)
                      District Judge: Honorable Freda L. Wolfson
                                     ______________

                      Submitted under Third Circuit L.A.R. 34.1(a)
                                   October 25, 2019

     BEFORE: GREENAWAY, JR., PORTER, and GREENBERG, Circuit Judges.

                               (Filed: November 20, 2019)
                                    ______________

                                       OPINION*
                                     ______________
____________________

*This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7 does not
constitute binding precedent.
GREENBERG, Circuit Judge.

                                 I.    INTRODUCTION

       In this this trademark infringement action between strikingly similar companies

separately owned by two brothers, we are asked to review the District Court’s opinion

and judgment adjudicating the infringement dispute between them. That Court granted

summary judgment to defendants, finding that they did not infringe the alleged

trademarks owned by plaintiffs. For the reasons stated below, we will affirm the

judgment.



                           II.     FACTUAL BACKGROUND

       We rely on the facts the District Court recited in its excellent comprehensive

opinion which we therefore do not repeat at length. See Engage Healthcare Commc’ns,

LLC v. Intellisphere, LLC, No. 12-0787, slip op. at 2-12 (D.N.J. Nov. 29, 2018). At its

core, this is a straightforward trademark dispute. The District Court helpfully

summarized the marks at issue with two tables in its opinion. They are as follows:


Plaintiffs’ Marks                             Defendants’ Marks

PERSONALIZED MEDICINE IN                      PERSONALIZED MEDICINE IN
ONCOLOGY                                      HEMATOLOGY/ONCOLOGY

PERSONALIZED MEDICINE IN
HEMATOLOGY/ONCOLOGY

THE ONCOLOGY NURSE                            ONCNURSE

THE ONCOLOGY NURSE APN/PA


                                             2
Plaintiffs’ Marks              Defendants’ Marks

VALUE-BASED CANCER CARE        VALUE-BASED ONCOLOGY

VALUE-BASED ONCOLOGY CARE

ONCOLOGY PHARMACY NEWS         ONCOLOGY PHARMACY NEWS

CLINICAL ONCOLOGY PHARMACY
NEWS

ONCOLOGY PRACTICE              ONCOLOGY BUSINESS
MANAGEMENT                     MANAGEMENT

AMERICAN HEALTH & DRUG         AMERICAN JOURNAL OF
BENEFITS                       PHARMACY BENEFITS

PEER-SPECTIVES                 PEERS & PERSPECTIVES

TARGETED THERAPIES IN          INTERNATIONAL CONGRESS ON
HEMATOLOGY/ONCOLOGY            TARGETED THERAPIES IN CANCER

TARGETED THERAPIES IN          INTERNATIONAL JOURNAL OF
ONCOLOGY                       TARGETED THERAPIES IN CANCER

TARGETED THERAPIES IN BREAST   BIOMARKERS, PATHWAYS, AND
CANCER                         TARGETED THERAPIES

TARGETED THERAPIES IN LUNG     TARGETED THERAPY NEWS
CANCER

TARGETED THERAPIES IN
NONHODGKIN LYMPHOMA

Engage, slip op. at 3-4.




                               3
Plaintiffs’ Marks            Defendants’ Marks

JOURNAL OF PERSONALIZED      PERSONALIZED CANCER CARE
MEDICINE IN
HEMATOLOGY/ONCOLOGY

PERSONALIZED CANCER CARE

PERSONALIZED MEDICINE IN
IMMUNOLOGY

PERSONALIZED MEDICINE IN
RHEUMOTOLOGY

PERSONALIZED BREAST CANCER

PERSONALIZED VALUE BASED
CANCER CARE




                             4
Plaintiffs’ Marks              Defendants’ Marks

PERSONALIZED VALUE BASED       VALUE -BASED CARDIOLOGY
CANCER CARE
                               VALUE-BASED CARDIOLOGY CARE
VALUE-BASED BREAST CANCER
                               VALUE-BASED DESIGN
VALUE-BASED CARE IN
RHEUMOTOLOGY                   VALUSE-BASED INSURANCE
                               DESIGN
VALUE-BASED CARE IN MULTIPLE
MYELOMA

VALUE-BASED ONCOLOGY
BENEFIT DESIGN

TRANSLATING EVIDENCE-BASED
RESEARCH INTO VALUE-BASED
DECISIONS

INSTITUTE FOR VALUE-BASED
MEDICINE


CLINICAL ONCOLOGY PHARMACY     N/A

RHEUMATOLOGY BUSINESS          N/A
MANAGEMENT

DERMATOLOGY BUSINESS
MANAGEMENT

DIABETES BUSINESS
MANAGEMENT

Engage, slip op. at 9-10.




                               5
                                   III.   DISCUSSION

       The District Court had jurisdiction under 28 U.S.C. §§ 1331, 1338 and 1367, and

we have jurisdiction under 28 U.S.C. § 1291. We exercise plenary review of the District

Court’s grant of summary judgment and thus consider the issues de novo. See Bradley v.

W. Chester Univ. of Pa. State Sys. of Higher Educ., 880 F.3d 643, 650 (3d Cir. 2018).

Accordingly, we are applying “the same standard as the District Court to determine

whether summary judgment was appropriate.” State Auto Prop. & Cas. Ins. Co. v. Pro

Design, P.C., 566 F.3d 86, 89 (3d Cir. 2009). “[S]ummary judgment is properly granted

‘if the movant shows that there is no genuine dispute as to any material fact and the

movant is entitled to judgment as a matter of law.’” Sconiers v. United States, 896 F.3d

595, 597 n.3 (3d Cir. 2018) (quoting Fed. R. Civ. P. 56(a)).

       In granting summary judgment to defendants, the District Court held that (1) none

of plaintiffs’ alleged trademarks were enforceable as advertising marks, thus defendants

could not have infringed them; (2) all but one of plaintiffs’ trademarks were

unenforceable in the online and/or print publication class in the fields of hematology and

oncology that they addressed; and (3) defendants did not infringe the lone valid

trademark. The District Court also held that (4) plaintiffs’ state-law unfair competition

claims failed because under state law, essentially the same standard applied to their unfair

competition claims as their federal trademark claims; and (5) the District Court lacked

subject matter jurisdiction to adjudicate plaintiffs’ request for declaratory judgment to

invalidate defendants’ alleged trademarks. In view of the District Court’s thorough

treatment of the issues and our agreement with its treatment we will affirm its judgment

                                             6
for substantially the same reasons the District Court articulated in its opinion with one

exception which we discuss below. Nevertheless, our rejection of the District Court’s

reasoning on that issue does not change our result which affirms its judgment.

       A. Advertising Marks

       We agree with the District Court that plaintiffs’ alleged marks could not be

enforced as advertising service marks in this case which at bottom is an argument over

advertising. “Under the Lanham Act, service marks, which are used to identify the

source of services, are entitled to the same legal protection as trademarks, which are used

to identify the source of goods. . . . Although technically distinct, the terms are often

used interchangeably, with no significant legal consequences.” Dranoff-Perlstein Assocs.

v. Sklar, 967 F.2d 852, 855 (3d Cir. 1992) (citation omitted). As such, a court addresses

the question of whether a service mark is entitled to protection under the Lanham Act

using the same standard that it applies when considering trademarks. Id. “In order to

determine whether a mark is protectable as a trademark, marks are divided into four

classifications: (1) generic (such as ‘DIET CHOCOLATE FUDGE SODA’); (2)

descriptive (such as ‘SECURITY CENTER’); (3) suggestive (such as ‘COPPERTONE’);

and (4) arbitrary or fanciful (such as ‘KODAK’).” A&H Sportswear, Inc. v. Victoria’s

Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000) (citing Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 2758 (1992)). “In order to qualify for

Lanham Act protection, a mark must either be suggestive, arbitrary, or fanciful, or must

be descriptive with a demonstration of secondary meaning. . . . Generic marks receive no

protection; indeed, they are not ‘trademarks’ at all.” Id. at 222 (citations omitted).

                                              7
       The District Court cited to In re Advertising & Marketing Development, Inc., a

case from the Court of Appeals for the Federal Circuit, for the proposition that

advertising service marks must be sufficiently separate from the subject of the

advertising, and must be used to identify advertising services, not merely to identify the

subject of the advertising. 821 F.2d 614, 619-20 (Fed. Cir. 1987). We agree with the

District Court’s treatment of that case. After all, we have held that an advertising service

mark that merely describes the subject of its advertising is a descriptive mark not entitled

to service mark protection. Dranoff-Perlstein, 967 F.2d at 858; see Murphy v. Provident

Mut. Life Ins. Co., 923 F.2d 923, 927 (2d Cir. 1990) (“Marks that are laudatory and that

describe the alleged qualities or character of a product or service are descriptive marks.”

(internal citation omitted)).

       We have no trouble finding, as did the District Court, that all of plaintiffs’ alleged

marks, when viewed as advertising service marks, are merely descriptive on their face.

In contrast, they may be compared to a well-known advertising mark—“Just Do It”—

from the sports apparel company Nike. That phrase is generic and does not provide any

indication to a consumer that it is tied to any product, any company, or any industry, but

it has become essentially a cultural icon synonymous with Nike and its products entirely

through its use as an advertising slogan. It is clear that the alleged marks at issue here are

qualitatively of a different character than Nike’s mark.

       We recognize that the District Court did not make a “secondary meaning” analysis

of plaintiffs’ marks to the extent they are asserted as advertising marks. See Dranoff-

Perlstein, 967 F.2d at 858. However, we hardly can fault it for not having done so,

                                              8
because there was no evidence to show that these alleged marks had achieved secondary

meaning through their uses in advertising. Rather, as we will explain, they have not even

achieved secondary meaning within the industry itself, let alone secondary meaning

within the advertising space of that industry. Moreover, as the District Court noted,

plaintiffs are attempting to assert the same marks as trademarks within their industry as

well as service marks in the advertising space. That undertaking can be regarded as an

admission that the service marks are merely descriptive of the subjects of their

advertising, and it is almost impossible for them to achieve secondary meaning separate

and apart from the allegedly trademark-bearing goods for which they purportedly

advertise. Indeed, plaintiffs’ alleged marks are no more enforceable as advertising

service marks than the phrase “Just Buy Nike” would be for Nike. Accordingly, we will

affirm the District Court’s judgment on this ground.1

       B. Trademarks

       We also agree with the District Court that the alleged marks are unenforceable as

trademarks within their respective classes, representing online/print publications in the

fields of hematology and oncology. Again, the alleged marks are obviously descriptive


1
  Plaintiffs note that at least one of their alleged marks already had been placed in the
United States Patent and Trademark Office’s (“PTO”) Trademark Electronic Search
caption as an advertising service mark, which they contend necessarily raises a question
of fact whether other similar marks could be recognized as advertising marks as well.
Pls.’ br. at 13 n.7; see App. at 425. However, as the District Court found, “[n]one of
Plaintiffs’ marks currently has a principal registration.” Engage, slip op. at 4. A search
of the PTO’s online trademark database shows that the PTO on October 13, 2017, prior to
the District Court’s grant of summary judgment in this case cancelled the advertising
service mark in question. See PTO’s Trademark Electronic Search System (TESS),
http://tess2.uspto.gov/, Registration No. 3927515 (accessed Sept. 16, 2019).
                                             9
on their face, a conclusion which plaintiffs themselves do not seriously dispute—they

make no substantive argument explaining why the marks are not descriptive. Instead,

they focus on the argument that the District Court erred in finding the marks had not

achieved secondary meaning at the time of defendants’ alleged infringement. Pls.’ br. at

37. Plaintiffs assert that the District Court erred because there was no definitive date in

the record of when the alleged infringement of its marks began, so its holding must be in

error if it could not identify a proper date as the basis of its analysis. However, as

plaintiffs also correctly recognized, the operative issue is not when defendants infringed

its marks, but whether the alleged marks had achieved secondary meaning at all, whether

it be on the date of infringement, the date of summary judgment, or even today.

       In Commerce National Insurance Services, Inc. v. Commerce Insurance Agency,

Inc., we held that

       [s]econdary meaning exists when the mark is interpreted by the consuming
       public to be not only an identification of the product or services, but also a
       representation of the origin of those products or services. . . . In general, it
       is established through extensive advertising which creates in the minds of
       consumers an association between the mark and the provider of the services
       advertised under the mark.

214 F.3d 432, 438 (3d Cir. 2000) (quotation and citation omitted). In Commerce

National, we identified a non-exclusive list of factors which may be considered to decide

if a mark has achieved secondary meaning:

       (1) the extent of sales and advertising leading to buyer association; (2)
       length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer
       surveys; (6) customer testimony; (7) the use of the mark in trade journals;
       (8) the size of the company; (9) the number of sales; (10) the number of
       customers; and, (11) actual confusion.


                                             10
Id. (citation omitted).

       The District Court essentially found plaintiffs had not established that the alleged

marks achieved secondary meaning regardless of the exact date used as the date of

defendants’ infringement. While the District Court carefully limited its holding to the

relevant time frame, it did not need to do so, because there is no evidence to show that the

alleged marks have ever achieved secondary meaning. Although plaintiffs correctly cite

to Commerce National as the standard for determining secondary meaning, they concede

that they are only able to satisfy six factors of the eleven-factor list we enunciated:

       (1) the extent of sale and advertising utilizing Engage’s trademarks; (2)
       length of use of Engage’s trademarks; (3) exclusivity of use of Engage’s
       trademarks; (4) copying of Engage’s trademarks by Intellisphere; (5) the
       number and amount of sale involving Engage’s trademarks; and (6) the
       number of consumers privy to Engage’s trademarks through the use of
       those marks in commerce.

Pls.’ br. at 42.

       We recognize that so far as we are aware, we never have held that the test for

secondary meaning is determined by some mechanical application of a non-exclusive

eleven-factor list, nor by counting how many of the eleven factors a plaintiff can satisfy.

Instead, the hallmark of secondary meaning remains “when the mark is interpreted by the

consuming public to be not only an identification of the product or services, but also a

representation of the origin of those products or services.” Commerce National, 214 F.3d

at 438 (internal citation and quotation marks omitted). As our non-exclusive list of

factors clearly demonstrates, the consumers’ interpretation of, and sentiment toward, the

alleged marks are paramount in determining whether such marks have achieved


                                              11
secondary meaning. On a defendant’s summary judgment motion, the plaintiff has the

burden to make a prima facie showing of its claims, before the court determines whether

there is a genuine dispute of material facts because its failure to establish a prima facie

case is a valid ground to grant the motion. See Celotex Corp. v. Catrett, 477 U.S. 317,

331, 106 S.Ct. 2548, 2557 (1986) (“If the nonmoving party cannot muster sufficient

evidence to make out its claim, a trial would be useless and the moving party is entitled to

summary judgment as a matter of law.” (citation omitted)).

       Plaintiffs have not presented evidence to show how consumers have perceived

their alleged marks—their own alleged extensive usage and alleged copying by one other

company do not alleviate their burden of showing how consumers identify these marks as

being synonymous with the origin of their products, nor is the circumstantial evidence

presented so overwhelming as to imply consumer association. See E.T. Browne Drug

Co. v. Cococare Prods., Inc., 538 F.3d 185, 199 (3d Cir. 2008) (“The evidence’s core

deficiency is that while it shows [the plaintiff] used the [alleged trademark] term . . . on

many occasions over a long period of time, it does not show [it] succeeded in creating

secondary meaning in the minds of consumers.”). We support our conclusion on the

point with an example. We are certain that at least some producer can readily make a

strong showing on the six factors plaintiffs identified, through its sale of “Belgian

chocolates,” but surely that producer would not be entitled to trademark protection for

that label no matter how long or pervasive its use of that label; consumers will never be

in danger of associating that label with the producer. Therefore, we will affirm the

judgment of the District Court on this ground.

                                              12
       C. “Peer-Spectives”

       We likewise affirm the District Court’s grant of summary judgment in favor of

defendants that they did not infringe the alleged mark “Peer-Spectives,” but we do so for

a different reason than it set forth. The District Court held that “Peer-Spectives” is a

suggestive mark and therefore enforceable as a trademark, but found that defendants did

not infringe the mark. In contrast, we find that “Peer-Spectives” is not an enforceable

trademark and therefore defendants could not have infringed it.

       The District Court found the mark suggestive because “a ‘mental leap’ is required

to tie PEER-SPECTIVES to online and in-person continuing medical education classes

for physicians.” Engage, slip op. at 23. “Absent this explanation, any link between the

words and the healthcare industry would not have been immediately apparent, a clear

indication that the mark is [] suggestive.” Id. We disagree with the conclusion.

       In A.J. Canfield Co. v. Honickman, we recognized that “[c]ourts and

commentators have . . . difficulties [in] distinguishing between suggestive, descriptive,

and generic marks.” 808 F.2d 291, 296 (3d Cir. 1986).

       Despite this difficulty, these distinctions are crucial. If we hold a term
       arbitrary or suggestive, we treat it as distinctive, and it automatically
       qualifies for trademark protection at least in those geographic and product
       areas in which the senior user applies it to its goods. . . . If we hold a mark
       descriptive, a claimant can still establish trademark rights, but only if it
       proves that consumers identify the term with the claimant, for that
       identification proves secondary meaning. . . . The distinction between
       suggestive and descriptive may also dictate different standards for
       determining its scope of geographic protection.

Id. at 297 (citations omitted). We went on to attempt to provide some clarity to

distinguish these categories by holding that:

                                             13
       A term is suggestive if it requires imagination, thought or perception to
       reach a conclusion as to the nature of goods. A term is descriptive if it
       forthwith conveys an immediate idea of the ingredients, qualities or
       characteristics of the goods.

Id. at 297 (citation omitted). In Canfield, we held that the term “chocolate fudge” was a

descriptive term used to describe diet soda, because it denoted a particular flavor of diet

soda, so “no imagination is required for a potential consumer to reach a conclusion about

the nature of [the] soda. In accordance with the accepted definitions, ‘chocolate fudge’ as

applied to diet soda cannot be suggestive.” Id. at 298.

       In this case, it is not difficult to see that “Peer-Spectives” is exactly the same kind

of descriptive term as “chocolate fudge.” It would be readily apparent to the average

consumer that “Peer-Spectives” stands for “Peer Perspectives.” Indeed, defendants’ use

of the phrase “Peers & Perspectives” is the very phrase plaintiffs assert infringed on their

alleged mark. Peer perspective is a concept that most consumers immediately would

recognize as a generally descriptive term that can be used to describe many products and

applicable across a multitude of industries and markets, as is the term “chocolate fudge.”

We did not hold in Canfield that “chocolate fudge” was suggestive simply because

consumers would not immediately associate it with diet sodas, nor did we find that it

would take a “mental leap” for consumers to recognize its relevance as applied to diet

sodas. Indeed, nothing in the standard we enunciated in Canfield requires a descriptive

term to be tied to any particular industry or market.

       In finding Peer-Spectives suggestive, the District Court paid special attention to

plaintiffs’ assertion that “‘[p]eer’ was chosen because health care professionals like to


                                              14
talk Peer to Peer, and ‘perspectives’ was chosen because people want to hear key leader

perspectives on certain medical information.” Engage, slip op. at 23 (citation and

quotation marks omitted). That should have been a strong indication that the term is

descriptive. It does not take much imagination to recognize that a publisher in the

healthcare industry would want “peer perspective” to be associated with its publications,

just as a soda maker would want “chocolate fudge” to be a flavor associated with its

products, and an ice cream maker would want “very creamy” to be a quality associated its

products. Yet none of these terms immediately would conjure up images of their

respective products.

       If we accept the District Court’s rationale, it could lead to an anomalous scenario

where “very creamy ice cream” would be found to be clearly descriptive, but “very

creamy,” because its link to ice cream would not be immediately apparent, could

nevertheless be trademarked by an ice cream maker. Of course, it is reasonable to

believe that such ice cream maker would then attempt to enforce its trademark against

every other ice cream maker who uses the term “very creamy ice cream” on its products,

the very term that was deemed clearly descriptive in the first place.

       As we have held, “[a]lthough the wide use of a term within the market at issue is

more probative than the wide use of a term in other markets, . . . the extensive use of the

term in other markets may also have a weakening effect on the strength of the mark.”

A&H Sportswear, 237 F.3d at 223 (citation omitted). Widespread use of a term in many

markets would suggest equally that the term is descriptive—indeed, if the “mental leap”

required can be made in many markets, perhaps it is not much of a leap at all. “[I]f a

                                             15
consumer is aware that a particular mark . . . is often used to designate a variety of

products made by a variety of manufacturers, that consumer will be less likely to assume

that in a particular case, two individual products, both with the mark [], come from the

same source.” Id. Unsurprisingly, a Google search of the term “peerspective” returned

over 12,000 results, with a slew of examples of its use across many industries. See, e.g.,

Peerspective, http://peerspectiveadvisors.com (last visited Oc. 28, 2019); Peerspective,

peerspective.mpi-sws.org (last visited Oct. 28, 2019); Peerspective: The developing a

researched backed simulation to aid in bully intervention, F6S,

http://f6s.com/peerspective (last visited Oct. 28, 2019); PeerSpective: Safeguarding the

Future of your Organization, the Chamber of Commerce for Greater Philadelphia,

http://apps.chamberphl.com/event/5384/peerspective (last visited Oct. 28, 2019);

@Peerspective, Twitter, http://twitter.com/peerspective (last visited Oct. 28, 2019);

Cunha BA, Typhoid Fever, the Typhus-Like Disease. Historical Peerspective, N.Y. State

J. Med., Mar. 1982, at 321; Jennifer M. Schmidt, Why Didn’t They Just Say That?

PEERspective – A Complete Curriculum (2017). We cannot conclude that all of them, or

at least many of them, somehow could obtain trademark protection.

       “The evidentiary bar must be placed somewhat higher when the challenged term is

particularly descriptive.” E.T. Browne, 538 F.3d at 199 (citation and quotations omitted).

Peer perspective is not a new concept invented by plaintiffs, and it certainly is not an

obscure idea made popular by plaintiffs’ use. The term itself is in fact “particularly

descriptive.” As the District Court found, “abbreviated or combined words are not

necessarily suggestive,” Engage, slip op. at 23, and that is even more so when in this

                                             16
case, it is obvious what the term “Peer-Spectives” describes to a consumer. In fact, its

widespread use shows that such understanding appears to be universal to everyone, not

just consumers. Plaintiffs are correct that the evidentiary bar to grant summary judgment

is high, and we are certain the bar had not been met when the District Court held that the

term “Peer-Spectives” was an enforceable trademark as a matter of law. But we also find

there is inadequate evidence in the record to show that the term is more than merely

descriptive, certainly not enough to create a genuine dispute of material facts that

precluded the grant of the summary judgment. And as we have already held, there is no

evidence in the record that any of plaintiffs’ alleged marks have achieved secondary

meaning. Hence, we will affirm the District Court’s grant of summary judgment in favor

of defendants, although not because defendants did not infringe an enforceable

trademark, but because the mark was unenforceable in the first instance.

       D. State-Law Claims

       Plaintiffs challenge the District Court’s finding that “Lanham Act unfair

competition claims and common law unfair competition claims are treated identically,”

and therefore if plaintiffs’ Lanham Act claims failed, its state-law unfair competition

claims also failed. Engage, slip op. at 15 n.7. We will affirm the District Court insofar

that in this case, the standard is the same. Although we do not decide whether there are

material differences between a Lanham Act unfair competition claim and a New Jersey

common law unfair competition claim, in general plaintiffs surely must demonstrate

concrete and cognizable injury to establish either claim. Lujan v. Defs. of Wildlife, 504

U.S. 555, 560-61, 112 S.Ct. 2130, 2136 (1992). Given that in both claims, plaintiffs’

                                             17
alleged injury was defendants’ unfair use and interference with their trademarks, once we

found that the trademarks were unenforceable, there was no injury on either claim.2

Thus, we will affirm the judgment of the District Court on this ground.

       E. Plaintiffs’ request for a Declaratory Judgment

       Finally, plaintiffs contend the District Court erred when it found that it did not

have jurisdiction over their declaratory judgment claim because defendants did not assert

their trademarks have been infringed, and therefore it lacked jurisdiction to decide the

validity of defendants’ alleged trademarks. Plaintiffs, in turn, argue that the District

Court misconstrued their declaratory judgment claim in which they asked the District

Court to determine the relative priority of the parties’ competing trademarks, not whether

defendants’ marks are invalid.

       Even if we accept plaintiffs’ characterization of their claim, the District Court did

not have jurisdiction over the claim. Once we found that plaintiffs’ alleged trademarks

are invalid, there would be no need to determine priority between competing trademarks,

because there are no competing trademarks. When a claim in a case lacks redressability,

federal courts lack jurisdiction under the Constitution to hear the case. Lujan, 504 U.S. at

561, 112 S.Ct. at 2136. As such, we will affirm the District Court on the declaratory

judgment claim.



2
  Indeed, although plaintiffs argue extensively in their brief regarding the alleged fraud
defendants perpetuated on the PTO through false representation of defendants’ alleged
use of plaintiffs’ competing trademarks, any injury that may have resulted under their
theory of liability was no longer cognizable once we found that those trademarks were
unenforceable.
                                             18
                                 IV.    CONCLUSION

       For the reasons stated above, we will affirm the District Court’s November 29,

2018 order in its entirety.




                                           19
