Lanham Act Federal Courts Original Jurisdiction
The Lanham Act itself grants federal courts original jurisdiction over all claims arising under the act. (15 U.S.C. 1121(a).)
As well, 28 United States Code section 1338(a) provides that federal district courts have original jurisdiction over all claims arising under any act of Congress pertaining to patents, copyrights, plant variety protection and trademark cases. But their jurisdiction is exclusive only with respect to patent, plant variety protection and copyright claims. (Ibid.)
Thus, in cases arising under the Lanham Act, the jurisdiction of federal and state courts is concurrent. (Aquatherm Industries, Inc. v. Fla. Power & Light Co. (11th Cir. 1996) 84 F.3d 1388, 1394; Scientific Technology, Inc. v. Stanford Telecommunications, Inc. (N.D. Cal. 1988) 9 U.S.P.Q.2d (BNA) 1566, 1567 "These two statutes indicate that Congress did not intend to limit adjudication of trademark actions under the Lanham Act to federal courts"; 5 McCarthy on Trademarks and Unfair Competition (4th ed. 1997) 32:1).
Section 1121(b) of the United States Code provides in part:
"No State or other jurisdiction of the United States or any political subdivision or any agency thereof may require alteration of a registered mark ... ." This statute is aimed at restraining the exercise of police power to alter a registered mark. (Blockbuster Videos, Inc. v. City of Tempe (9th Cir. 1998) 141 F.3d 1295, 1296 municipality may not enforce zoning regulations that require alteration of a registered mark.)
It is not a restraint on state court jurisdiction. In the words of Professor McCarthy: "State courts possess powers under the Lanham Act identical to those of the federal courts." (5 McCarthy, supra, 32:1, fn. omitted.)
Indeed, state courts can pass upon the validity of federal trademark registration. ( Brown & Bigelow v. Remembrance Advertising Prod. (1952) 279 A.D. 410 110 N.Y.S.2d 441, affd. 304 N.Y. 909 110 N.E.2d 736.)