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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
 
 
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.

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