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TTAB Oppositions and Allegations of Infringement Lead to DJ Jurisdiction

By William F. Heinze

In Surefoot LC v. Sure Foot Corp. (July 8, 2008), the Tenth Circuit applied MedImmune, Inc. v. Genentech, Inc. in a trademark dispute to hold that Declaratory Judgment jurisdiction could exist in light of "five separate TTAB oppositions combined with an extensive history of interactions between the parties in which the declaratory defendant expressly and repeatedly suggested historical and existing infringing activity by the declaratory plaintiff."

It is only this combination that we pass upon today and which we hold suffices to demonstrate the existence of Article III jurisdiction. Neither are we alone in reaching such a conclusion; many other courts before us have considered TTAB oppositions in combination with threats of litigation sufficient under certain circumstances to suggest a live infringement controversy and thus establish Article III jurisdiction.9 To the extent one might worry that allowing declaratory litigation might supersede or even supplant already-ongoing administrative TTAB proceedings, or that it might impede efforts by parties to secure an informal resolution through correspondence and personal negotiation, we note that there exists a more appropriate venue for addressing such concerns: Before assuming declaratory judgment jurisdiction, a district court must not only consider its Article III authority to hear the case, it is also free to consider a range of other discretionary factors in assessing whether or not to exercise jurisdiction under the Act. See supra Part II; infra Part V. At the end of
the day, however, such discretionary considerations should not be confused with, or included in, the very different and non-discretionary assessment whether the Article III case-orcontroversy requirement has been satisfied.

. . . Though we hold that the district court has jurisdiction to entertain this case, the question remains whether, as a discretionary matter, it should do so. As we noted above, see supra Part II, the Declaratory Judgment Act does not demand that a district court decide every declaratory suit brought to it even where the court has the power to do so. Instead, once the court is satisfied that Article III?s jurisdictional requirements are met, it must then consider a number of factors, including those previously set out by this court in Mhoon, to determine whether the suit warrants the district court?s attention. These factors include: [1] whether a declaratory action would settle the controversy; [2] whether it would serve a useful purpose in clarifying the legal relations at issue; [3] whether the declaratory remedy is being used merely for the purpose of ?procedural fencing? or ?to provide an arena for a race to res judicata ?; [4] whether use of a declaratory action would increase friction between our federal and state courts and improperly encroach upon state jurisdiction; and [5] whether there is an alternative remedy which is better or more effective. Mhoon, 31 F.3d at 983.

In this case, the district court never reached the issue whether it should, as a matter of statutory discretion, consider Surefoot UT?s request for declaratory relief because it held that, by failing to present a case or controversy, the suit could not be entertained at all. Now, of course, the discretionary question must be faced and answered. Rather than tackling it ourselves, we believe the appropriate course is to afford the district court the opportunity to evaluate it in
the first instance.

Full post as published by I/P Updates on July 21, 2008 (boomark / email).