Out of reach: covenant not to sue moots subject matter jurisdiction

In July 2009, Nike sued Already LLC, doing business as Yums, in the US District Court for the Southern District of New York for trademark infringement, false designation of origin, unfair competition and trademark dilution based on its federally registered Nike trademark covering the design of Nike’s Air Force 1 athletic shoe. Yums filed a counterclaim for declaratory judgment seeking to cancel Nike’s registration on the grounds that it was not a trademark under 15 USC §1127 or under New York law.