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…

If you are registered and logged in to the site, click on the link below to read the rest of the Pillsbury briefing. If not, please register or sign in with your details below.

 

Sign in or Register to continue reading this article

Sign in

Register

It's quick, easy and free!

It takes just 5 minutes to register. Answer a few simple questions and once completed you’ll have instant access.

Register now

Why register to The Lawyer

 

Industry insight

In-depth, expert analysis into the stories behind the headlines from our leading team of journalists.

 

Market intelligence

Identify the major players and business opportunities within a particular region through our series of free, special reports.

 

Email newsletters

Receive your pick of The Lawyer's daily and weekly email newsletters, tailored by practice area, region and job function.

More relevant to you

To continue providing the best analysis, insight and news across the legal market we are collecting some information about who you are, what you do and where you work to improve The Lawyer and make it more relevant to you.

Overview

Tower 42, Level 23
25 Old Broad Street
London
EC2N 1HQ
UK
http://www.pillsburylaw.com/