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 trade mark cases, explain Bobby Ghajar and Carolyn Toto.

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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 trade mark cases. In particular, a trade mark 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.

Originally posted in Managing Intellectual Property in October 2013.

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Topics:  Cease and Desist Orders, Declaratory Judgments, Genentech, Infringement, MedImmune v Genentech, SCOTUS, Subject Matter Jurisdiction, Trademarks, USPTO

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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