The DeMoines firm of McKee Voorhees & Sease has a very interesting looking IP blog called Filewrapper®. Here they report on a Tenth Circuit case clarifiying the applicable standard for declaratory judgment jurisdiction in trademark infringement cases:

The court held that the “reasonable apprehension of suit” standard [previously] applied in trademark cases was supplanted by the Supreme Court in MedImmune v. Genentech. . . .

Whether jurisdiction exists could be confirmed, according to the court, by examining whether the court would have Article III jurisdiction if faced with a straightforward infringement suit rather than a declaratory judgment action in which the parties are reversed. . . .

The district court reasoned that although claims of infringement and litigation had been made by Sure Foot Corp. during the 1998-99 period, any apprehension had dissipated by 2006. Moreover, the court held that Sure Foot’s TTAB actions did not give any reasonable basis to fear imminent litigation.

But it’s not about emotions; rather, cold, hard analytical facts. Indeed, the new test takes psychology and emotion out of it — “fear,” “apprehension,” and loathing — though the Circuit Court suggests that perhaps it would be better, as part of our new psychological hygiene, to think that this is really what we’ve been doing all along:

Discarding the reasonable apprehension of suit test makes good sense: the existence of an Article III case or controversy has never been decided by a judicial wager on the chances the parties will (imminently or otherwise) sue one another; rather, it has always focused on the underlying facts, assessing whether they suggest an extant controversy between the parties or whether instead they call on us to supply an advisory opinion about a hypothetical dispute.

A good pickup on what looks like a very good blog! We’ve even gone back into an earlier post and added a link to another item — an interesting new development about the awarding of attorneys’ fees to defendants in copyright cases. (See if you can find it!)

2 thoughts on “10th Cir. on DJ’s in TM”
  1. I find that the is basically a money making institution to lure Inventors to attempt to register a Patent or Trademark and find nonsense responses to deny your Trademark and Patent. If you appeal, they want you to pay $100.00. If you never recieved an email of notice, therefore you missed the deadline, they want you to pay $100.00 to reinstate it.
    I cannot believe an organization like this gets away with conning the American people. I guess the new administration should be aware of these fraudulent tactics.

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