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Overpleaded Opposition Supports DJ Motion
Can a Notice of Opposition in the U.S. Patent and Trademark Office ('PTO') Trademark Trial and Appeal Board ('TTAB') give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment ('DJ') action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in Neilmed Products, Inc. v. Med-Systems, Inc., No. C 06-00964 (N.D. Cal. Jan. 10, 2007), the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution. This enthusiastic overpleading did far more than state a claim as to why the applicant's mark should not be allowed to register, which is the TTAB's sole jurisdiction. It gave Applicant a reasonable basis to believe Opposer would sue it for infringement, thereby providing the jurisdictional basis for a DJ action.
The Declaratory Judgment Act, 28 U.S.C. '2201 permits a federal court to 'declare the rights and other legal relations' of parties to 'a case of actual controversy.' An actual controversy has been viewed as requiring the DJ plaintiff to have a reasonable apprehension that it will be subject to liability.
This case came down only one day after No. 05-608 Medimmune, Inc. v. Genentech, Inc., 549 U.S. __ (2007). There, the Supreme Court suggested that the seemingly settled 'reasonable apprehension of suit' test, which has long governed when DJ actions should be permitted, is irreconcilable with Supreme Court authority. Id. at n.11. While the Court in Neilmed did not have the benefit of the Medimmune authority, its opinion would, if anything, have been bolstered by the position expressed in Medimmune's footnote 11.
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