How Trade Mark Defendants are Winning from MedImmune

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.

It has been six years since 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 (DJA), (MedImmune, Inc v Genentech, Inc (2007)). Despite the passage of time, the MedImmune decision continues to have a profound impact on trade mark disputes.

In MedImmune, the Supreme Court eliminated the Federal Circuit’s “reasonable apprehension” test and replaced it with an “all circumstances” test, giving the district courts much broader discretionary power to keep declaration actions, and giving would-be defendants more leeway to file declaratory actions: “Basically, 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” (emphasis added).

MedImmune is a patent case, but a number of courts have held that its holding applies with equal force to trade mark cases. A review of post-MedImmune cases reveals that 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. Here, we explore the various factors used by the courts in analysing whether there is subject matter jurisdiction under the “all circumstances” test.

Download: How Trade Mark Defendants are Winning from MedImmune