United States District Court, D. Maryland
Lipton Hollander, United States District Judge.
trademark infringement case, plaintiff TEKsystems, Inc., a
Maryland corporation that offers information technology
staffing and services, has sued defendant TekSavvy Solutions,
Inc., a Canadian company in the telecommunications and web
development industry. ECF 1, ¶¶ 1-2
(Complaint). The dispute stems from the parties'
use of “TEKSAVVY” as part of their respective
businesses. Notably, plaintiff owns a trademark on TEKSAVVY
in connection with a blog it maintains. Id.
¶¶ 7, 10. However, defendant uses TekSavvy as its
name in connection with its services, and also maintains a
blog with the same name. Id. ¶¶ 16.
seeks relief in two counts. In Count I, plaintiff seeks a
declaratory judgment of the validity of plaintiff's
trademark. Id. ¶¶ 19-22. Count II asserts
a claim for trademark infringement under the Lanham Act, 15
U.S.C. § 1114. Id. ¶¶ 23-30. The
Complaint is supported by two exhibits, consisting of emails
from defendant's attorney to plaintiff. ECF 1-1; ECF 1-2.
has moved to dismiss under Fed.R.Civ.P. 12(b)(1) and
12(b)(6). ECF 18. The motion is supported by a memorandum of
law (ECF 18-1) (collectively, “Motion”).
Defendant argues that this Court lacks subject matter
jurisdiction to decide the declaratory judgment claim (Count
I), because no case or controversy exists. ECF 18-1 at 4. As
to plaintiffs trademark infringement claim (Count II),
defendant contends that it fails to state a claim because the
allegations concerning defendant's use of the trademark
in commerce are contradictory, resulting in plaintiffs
failure to plead adequately one of the elements of the claim.
ECF 18-1 at 8-9.
opposes the Motion. ECF 19 (“Opposition”).
Defendant has replied. ECF 20 (“Reply”).
hearing is necessary to resolve the Motion. See
Local Rule 105.6. For the reasons that follow, I shall grant
the Motion as to Count I and deny it as to Count II.
Factual Background 
at least November 2012, plaintiff has maintained a blog that
offers “career advice, commentary on industry trends,
and tips for using hardware and software.” ECF 1,
¶ 7-8. The blog uses the trademark TEKSAVVY.
Id. ¶ 7. Plaintiff owns a registration in the
U.S. Patent and Trademark Office (“USPTO”) for
the trademark TEKSAVVY, which was issued on August 20, 2013.
Id. ¶ 10.
December 7, 2016, Ben Tobor, an attorney for defendant, sent
an email to plaintiff. Id. ¶ 12; ECF 1-1. Tobor
stated that defendant sought to register TEKSAVVY in
Trademark Classes 38 and 42, which pertain to
telecommunications and technology services (ECF 1-1 at 2),
but that the registration had been refused on the basis of
plaintiff s registration of TEKSAVVY in Class 41, pertaining
to blogs. Id. Tobor claimed in the email that
defendant had maintained its own blog, called TekSavvy Blog,
since November 2011. Id.
the email stated that defendant sought a “Consent to
Registration” for defendant's trademark
applications. Id. Specifically, Tobor wrote:
“One option would be to obtain from [plaintiff] a
Consent To Registration, with standard and typical terms and
conditions. [Defendant's] other option would be to seek
to cancel [plaintiffs] registration based upon our
client's prior use of its mark TEKSAVVY for blogs in the
United States.” Id. at 2-3. Tobor expressed
that defendant “would of course prefer to amicably
resolve this situation without filing a cancellation
proceeding, and trust[s] that would also be [plaintiffs]
desire.” Id. at 3.
subsequent email to plaintiff dated December 20, 2016,
responding to an interim email not attached to the Complaint,
Tobor stated that defendant's “blogging services
have been rendered in commerce that may be regulated by the
U.S. Congress.” ECF 1-2 at 2. Tobor also wrote:
“We submit [defendant] has superior rights to the mark
TEKSAVVY for its Class 41 blogging services in the United
States, as well as Canada, based upon its prior use . . .,
and this use would provide a basis to seek cancellation of
[plaintiff's] mark in the U.S.” Id. Tobor
added: “Provided we can obtain a Consent to
Registration, we believe that we will be readily able to
agree to [plaintiff] keeping its registration and continuing
to use its mark in the United States, and that this would be
part of a side agreement to the Consent to
suit followed on December 29, 2016.
Standards of Review
has moved to dismiss the Complaint under Fed.R.Civ.P.
12(b)(1), for lack of subject matter jurisdiction. In
addition, defendant has moved to dismiss under Fed.R.Civ.P.
12(b)(6), for failure to state a claim.
Subject Matter Jurisdiction
III of the Federal Constitution limits judicial power to
“actual, ongoing cases or controversies.”
Lewis v. Continental Bank Corp.,494 U.S. 472, 477
(1990) (citations omitted). In Arizona Christian Sch.
Tuition Org. v. Winn,563 U.S. 125, 133 (2011), the
Supreme Court said: “Continued adherence to the
case-or-controversy requirement of Article III maintains the
public's confidence in an unelected but restrained
Federal Judiciary. . . . For the federal courts to decide
questions of law arising outside of cases and controversies
would be inimical to the Constitution's democratic
character.” See Elk Grove Unified Sch. Dist. v.
Newdow,542 U.S. 1, 11 (2004) (stating that Article III
standing “enforces the Constitution's
case-or-controversy requirement”), abrogated in
part on other grounds by Lexmark Int'l, Inc. v. Static
ControlComponents, Inc., ___ U.S. ___, 134
S.Ct. 1377, 1387-88 (2014); United States v. Hardy,545 F.3d 280, 283 (4th Cir. 2008) (stating that, under
Article III of the Constitution, “‘the exercise
of judicial power depends upon the existence of a case or