Page 24 - The Katten Kattwalk - Fall 2025 - Issue 30
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Selecting Who Sues: Picking the Proper Party for
Offensive Trademark Litigation (continued)
The traditional maxim is that only a trademark owner
may sue to enforce rights under the trademark. “I have been overseeing and participating in
Suing as the entity on the trademark registration is all legal proceedings in this matter from the
the obvious answer, but the realities of business — beginning. I have read the complaint and am
multiple licensees, intellectual property (IP) holding fully familiar with all of the allegations in the
companies, mergers and acquisitions, losing track complaint. Any judgment obtained in this or
of assignments, and even simple miscommunication any case pursuing the interests of Ripple will
between attorney and client — mean that mistakes be for my sole benefit; therefore, I have a very
may be made. strong interest in the outcome of this case
… By this Declaration, I ratify all of Plaintiff’s
For the plaintiff in Ripple, these mistakes ultimately allegations in this case and each cause of
led to the dismissal of its case. Ripple Analytics action alleged. As a real party in interest, I am
alleged that it owned a federal trademark for prepared to step in immediately as Plaintiff.”
“RIPPLE” associated with human resources software,
and it sued a party using “RIPPLING” for an allegedly
similar product offering. Discovery unveiled that all The lower court and the Second Circuit were not
of the trademark rights had actually been assigned to satisfied. “But that is not a ratification under Rule
the entity’s owner/chief executive officer (CEO) as an 17. The sine qua non of ratification is agreeing to
individual, even though that assignment was never be bound by the result.” Nothing the owner/CEO
recorded with the US Patent and Trademark Office stated is “the same as agreeing to be bound by the
(USPTO). The court and the substituted-in counsel result of that case.” This is not simple, which is a
for Ripple acknowledged that this mistake arose from Second Circuit requirement. For this proposition,
“sloppy drafting” of the complaint. the appellate decision cited a long string of cases:
Fed. Treasury Enter., 726 F.3d at 83; ICON Grp., Inc.
Such a defect should not be fatal. Rule 17 of the v. Mahogany Run Dev. Corp., 829 F.2d 473, 478 (3d
Federal Rules of Civil Procedure states, “An action Cir. 1987) (noting that the ratifying party must “by
must be prosecuted in the name of the real party acknowledgment or other ratifying instrument ...
in interest.” But it goes on to explain that a “court agree to be bound by any judgment resulting from
may not dismiss an action for failure to prosecute in the action”); Wieburg v. GTE Sw. Inc., 272 F.3d 302,
the name of the real party in interest until, after an 307 (5th Cir. 2001) (same); Mutuelles Unies v. Kroll &
objection, a reasonable time has been allowed for the Linstrom, 957 F.2d 707, 712 (9th Cir. 1992) (same);
real party in interest to ratify, join, or be substituted Haxtun Tel. Co. v. AT&T Corp., 57 F. App’x 355, 359
into the action.” Once corrected, “the action (10th Cir. 2003) (same); 6A Wright & Miller’s Federal
proceeds as if it had been originally commenced by Practice & Procedure § 1555 (3d ed. 2010) (defining
the real party in interest.” The advisory committee ratification as “an arrangement by which the real
notes explain that this flexible rule is “intended to party in interest authorizes the continuation of an
prevent forfeiture when determination of the proper action brought by another and agrees to be bound
party to sue is difficult or when an understandable by its result, thereby eliminating any risk of multiple
mistake has been made.” liability”).
Ripple’s mistake was that it never clearly followed Even after the court determined that this problem
any of the three clear options for curing this defect. would lead to dismissal of its case, Ripple attempted
Ripple did not join the owner/CEO to the suit, nor did to skirt around this issue by offering to file an
it move to substitute the owner/CEO as the proper amended pleading stating that it was a licensee of the
party. Instead, Ripple attempted to have the owner/ actual trademark owner. This was also unsuccessful
CEO ratify the action via declaration: at keeping the suit alive. Although licensees may
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