I think this is the first appeals court decision to address whether the nascently infamous footnote 11 in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007) applies to trademark cases. Yup, it does.
In Surefoot LC v. Sure Foot Corp., No. 06-4294 (10th Cir. July 8, 2008), the DJ defendant had sent the DJ plaintiff several cease & desist letters making accusations of infringement in 1998-99. Then it stopped. In 2002, the DJ plaintiff started filing applications to register the mark at issue. When the first one issued, the DJ defendant petitioned the TTAB to cancel it. After that, any time the DJ plaintiff filed an application, the DJ defendant opposed it. All these TTAB disputes are still pending. But since 1999, there were no further threats of infringement lawsuits.
The 10th Circuit first held that MedImmune applied to Lanham Act cases and that its footnote 11 overruled its former “reasonable apprehension of imminent suit” standard for DJ jurisdiction in trademark cases. It held that under MedImmune the controversy must be “definite and concrete, touching the legal relations of parties having adverse interests” and that the dispute be “real and substantial and admit of specific relief through a conclusive decree, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.”
Applying this test, the 10th Circuit held that the combination of the several TTAB proceedings, taken together with the 1990s cease and desist letters and threats (which the DJ defendant never withdrew) satisfied the requirements for DJ jurisdiction. It remanded for the district court to determine whether it should nevertheless exercise its discretion (based on a multi-factor test) not to entertain the suit.
The court refused to opine whether the lapse of more time since the last cease and desist letters or fewer TTAB proceedings would satisfy the new, yet old, MedImmune test.