Global Trademark Resources Print Page Page Image Current IssueArticle ArchiveTMR Search September-October, 2010 Vol. 100 No. 5 Back to TMR Main Page Shoot First and Ask Questions Later? The Impact of MedImmune v. Genentech on Declaratory Judgment Actions in Trademark Disputes By D. Peter Harvey and Seth I. Appel This article addresses the impact of MedImmune on trademark disputes. Part II summarizes the DJA and case law interpreting it prior to MedImmune. Part III discusses MedImmune and the subsequent decision of the United States Court of Appeals for the Tenth Circuit in Surefoot LC v. Sure Foot Corporation, in which that court held that the jurisdictional test in MedImmune, a patent infringement case, was also applicable in trademark cases. Finally, Part IV addresses the way in which courts in trademark cases have applied MedImmune, focusing specifically on the types of conduct—for example, sending a cease and desist letter, initiating an opposition proceeding or cancellation action before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office, or other acts of the DJA plaintiff or DJA defendant—that have been found sufficient or insufficient to confer DJA jurisdiction. The Trademark Reporter is available to INTA members only. Please go to Member Login at the top of this screen to access the full article.