Pillsbury Winthrop Shaw Pittman

How trademark defendants are winning from MedImmune

By Bobby Ghajar and Carolyn S Toto

In 2007, the US Supreme Court set a new test for declaratory judgment actions in MedImmune. Its decision continues to have a profound impact on trademark cases.

In 2007, in the patent case MedImmune v Genentech, the US Supreme Court set out a new test for determining whether there is an ‘actual controversy’ required to maintain a declaratory judgment action under the Declaratory Judgment Act. It eliminated the Federal Circuit’s ‘reasonable apprehension’ test and replaced it with an ‘all circumstances‘ test, giving district courts broader discretionary powers and also giving would-be defendants more leeway.

Over the past six years, various courts have held that MedImmune applies equally to trademark cases. In particular, a trademark owner’s cease-and-desist letter coupled with another action — such as a follow-up communication with the alleged infringer or filing an opposition or cancellation proceeding with the USPTO — will generally confer the requisite subject matter jurisdiction under the test. Even a single cease-and-desist letter may be enough, depending on the language used in the letter…

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