Judge Wallach dissents from denial of en banc re-hearing in Australian Therapeutic

Judge Wallach wrote: I write to express my disagreement with the merits of the decision in Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC (Australian III), 965 F.3d 1370 (Fed. Cir. 2020), and to note a potential point of confusion in our case law going forward. Statutory standing is a question of “whether a legislatively conferred cause of action encompasses a particular plaintiff’s claim.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 127 (2014).1 A cause of action “extends only to plaintiffs whose interests fall within the zone of interests protected by the law invoked.” Id. at 129 (internal quotation marks and citation omitted). Australian III concerns how broad the “zone of interests” is for 15 U.S.C. § 1064—specifically, whether a prior settlement agreement may preclude a petitioner from establishing a valid cause of action. Compare Australian III, 965 F.3d at 1374–76 (concluding that a petitioner had a valid cause of action because “proprietary rights” are not required), with Australian III, 965 F.3d at 1376–81 (Wallach, J. dissenting) (concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement). See 15 U.S.C. § 1064 (providing for cancellation of registration of a trademark). The concept of "any person" -- Relevant here, “[a] petition to cancel a registration of a mark . . . may . . . be filed . . . by any person who believes that he is or will be damaged . . . by the registration of a mark[.]” 15 U.S.C. § 1064. In Empresa Cubana, we explained that, in keeping with Lexmark, we must “focus[] on [a petitioner’s] entitlement to the cause of action defined by 15 U.S.C. § 1064,” Empresa Cubana, 753 F.3d at 1274, and confirmed the continued applicability of our pre-Lexmark 15 U.S.C. § 1064 jurisprudence to determine whether “[a] petitioner is authorized by statute to seek cancellation of a mark,” id. at 1275. Under Empresa Cubana, a petitioner must show that “it has both a real interest in the proceedings . . . [and] a reasonable basis for its belief of damage” to have a valid cause of action under 15 U.S.C. § 1064. Id. (internal quotation marks and citation omitted); see Australian III, 965 F.3d at 1373–74 (similar). Recently, we clarified both that “the Lexmark analytical framework is the applicable standard for determining whether a person is eligible under 15 U.S.C. § 1064 to bring a petition for the cancellation of a trademark registration,” and that there is “no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, LLC v. SFM, LLC, No. 2019-1526, 2020 WL 6277728, at *3 (Fed. Cir. Oct. 27, 2020); see id. at *5 (explaining that “[t]he zone-of-interests requirement and the real-interest requirement share a similar purpose and application” and “a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of [15 U.S.C.] § 1064”).4 Judge Wallach concludes: Australian lacks a legitimate commercial interest in the NAKED mark and, therefore, a valid cause of action against Naked. Empresa Cubana, 753 F.3d at 1275; see Lexmark, 572 U.S. at 131. There is “no real controversy between the parties”—they resolved any such controversy between themselves through settlement in 2007—leaving Australian “no more than an intermeddler” in the instant action. Coach Servs., 668 F.3d at 1376 (internal quotation marks and citation omitted); cf. Gould, 866 F.2d at 1392 (“When the case between the parties has been settled, there is no actual matter in controversy essential to the decision of the particular case[.]”). En banc action is necessary to maintain the uniformity our decisions and clarify the impact of Lexmark on those decisions. See FED. R. APP. P. 35(a)(1)–(2). Accordingly, I respectfully dissent from our denial of rehearing en banc.