Monday, July 21, 2008

Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action

The Filewrapper blog reports here on a recent 10th Circuit ruling that applies the Supreme Court's MedImmune declaratory judgment analysis in a trademark case. The court found that the interactions between the parties, coupled with five TTAB proceedings, were sufficient to satisfy the Article III "case or controversy" jurisdictional requirement. Surefoot LC v. Sure Foot Corp., Appeal No. 06-4294 (July 8, 2008).

The 10th Circuit observed that the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct 764 (2007), "expressly rejected the 'reasonable apprehension of imminent suit' test on the ground that it imposed an additional hurdle inconsistent with the Court's Article III jurisdprudence." Although MedImmune was a patent case, the court found no reason why "the interpretation of the Declaratory Judgment Act's terms depends on the nature of the intellectual property right at issue, and nothing in MedImmune's analysis suggests one."

In light of MedImmune, the court stated the test to be as follows:

"a declaratory judgment suit must be 'definite and concrete, touching the legal relations of parties having adverse legal interests,' must be “‘real and substantial’ and ‘admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.’” MedImmune, 127 S. Ct. at 771 (quoting Aetna, 300 U.S. at 240-41). Put differently, 'the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.' Id. (quoting Maryland Cas., 312 U.S. at 273)."

Here, the court found that a justiciable controversy did exist in light of "five separate TTAB oppositions combined with an extensive history of interactions between the parties in which the declaratory defendant expressly and repeatedly suggested historical and existing infringing activity by the declaratory plaintiff."

The court was careful to note that it was not ruling on a situation where "the only indicia of a live infringement controversy is the existence of a single TTAB opposition proceeding, or perhaps a single cease-and-desist letter .... It is only this combination that we pass upon today and which we hold suffices to demonstrate the existence of Article III jurisdiction."

The court then remanded the case to the district court to decide whether it should exercise its discretion to take the declaratory judgment case.

TTABlog comment: Hat tip to Ron Coleman and his Likelihood of Confusion blog for pointing to the Filewrapper blog. Further commentary here at the Las Vegas Trademark Attorney blog.

Text Copyright John L. Welch 2008.


At 7:00 PM, Anonymous Anonymous said...

Check out "Declaratory Relief After MedImmune" by David I. Levine and Charles E. Belle in Lewis & Clark L. Rev. 491 (2010). This article is available at


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