UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT BBK TOBACCO & FOODS LLP, Nos. 22-16190 DBA HBI International, an Arizona 22-16281 limited liability partnership, D.C. No. 2:19-cv- Plaintiff-counter-defendant- 05216-MTL Appellant / Cross-Appellee,

v. OPINION CENTRAL COAST AGRICULTURE, INC., a Delaware corporation,

Defendant-counter-claimant- Appellee / Cross-Appellant.

Appeal from the United States District Court for the District of Arizona Michael T. Liburdi, District Judge, Presiding

Argued and Submitted September 15, 2023 Arizona State University

Filed April 1, 2024

Before: Andrew D. Hurwitz, Patrick J. Bumatay, and Roopali H. Desai, Circuit Judges. 2 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.

Opinion by Judge Desai; Dissent by Judge Bumatay

SUMMARY *

Trademark

The panel affirmed in part and reversed in part the district court’s judgment and remanded in a trademark infringement action brought by BBK Tobacco & Foods LLP against Central Coast Agriculture, Inc. BBK, a distributor and seller of smoking-related products with trademarked “RAW” branding, alleged that CCA infringed its mark by selling cannabis products with the mark “Raw Garden.” The district court dismissed BBK’s false advertising claim and granted summary judgment in favor of CCA on BBK’s trademark claims. The district court granted summary judgment in favor of BBK on its counterclaim to invalidate several of CCA’s trademark applications and on CCA’s counterclaim to cancel BBK’s trademark applications for unlawful use. The panel affirmed the district court’s grant of summary judgment in favor of BBK on its claim to invalidate four of CCA’s trademark applications. The panel held that, under 15 U.S.C. § 1119, when an action involves a claim of infringement on a registered trademark, a district court also has jurisdiction to consider challenges to the trademark

** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC. 3

applications of a party to the action. Agreeing with other circuits and the Trademark Trial and Appeal Board, the panel also held that lack of a bona fide intent to use a mark in commerce is a valid basis to challenge a trademark application. Dissenting, Judge Bumatay wrote that federal courts lack authority to cancel pending applications for trademark registration before the Patent and Trademark Office has even registered the trademark. In a separately filed memorandum disposition, the panel reversed the district court’s summary judgment on BBK’s trademark claims and affirmed the summary judgment on CCA’s counterclaim to cancel BBK’s trademark for unlawful use.

COUNSEL Bennett E. Cooper (argued), Frank G. Long, and J. Alex Grimsley, Dickinson Wright PLLC, Phoenix, Arizona; Charles S. Price, Dickinson Wright/Mariscal Weeks, Phoenix, Arizona; for Plaintiff-counter-defendant- Appellant. Brett M. Schuman (argued) and Jeremy N. Lateiner, Goodwin Procter LLP, San Francisco, California; Jesse Lempel, Goodwin Procter LLP, Boston, Massachusetts; Andrew Kim, Goodwin Procter LLP, Washington, D.C.; Mitchell L. Turbenson and Brian W. LaCorte, Ballard Spahr LLP, Phoenix, Arizona; for Defendant-counter-claimant- Appellee. 4 BBK TOBACCO & FOODS LLP V. CENT. COAST AGRI., INC.

OPINION DESAI, Circuit Judge:

BBK Tobacco & Foods LLP (“BBK”) distributes and sells smoking-related products with trademarked “RAW” branding. It alleges that Central Coast Agriculture, Inc. (“CCA”) infringed its mark by sel