Filing A Trademark Application Is A Protected Act Under California's Anti-SLAPP Statute

The U.S. Court of Appeals for the Ninth Circuit has found that the act of filing a trademark application with the United States Patent & Trademark Office (USPTO) qualifies for protection under California's "anti-SLAPP" statute.

In response to concerns about civil actions aimed at private citizens to deter or punish them for exercising their political or legal rights, the California legislature enacted an "anti-SLAPP" statute to protect against the improper use of Strategic Lawsuits Against Public Participation, or "SLAPP" lawsuits.

The statute permits dismissal such a lawsuit if two elements are satisfied. First, the person seeking to dismiss such a case must make a preliminary showing that the activity engaged in is a protected act in furtherance of the person's protected right to petition or free speech rights. If that element is satisfied, the burden shifts to the plaintiff who filed the lawsuit, to demonstrate a probability that he or she will prevail on the challenged claims.

In Mindy's Cosmetics, Inc. v. Dakar, the Ninth Circuit found that the act of filing an application for trademark registration with the USPTO was a protected act that satisfied the first prong of the test, because all the causes of action in the complaint arose out of the act of filing the application.

However, the parties that filed the lawsuit also met their burden on the second element, by establishing a probability that they will prevail on their underlying claims for legal malpractice, fraudulent concealment and conversion. Thus, the Court affirmed the denial of the defendant's anti-SLAPP motion.

The Ninth Circuit's Opinion in can be found here.