The boot that launched a suit.
The Tenth Circuit today reversed itself on a question of Article III jurisdiction: whether a trademark user that doesn't reasonably fear an imminent infringement suit may nonetheless sue the trademark owner for a declaratory judgment.
The declaratory judgment plaintiff, Surefoot, made ski boots. Sure Foot, the defendant and owner of the "SUREFOOT" trademark, manufactured shoe "traction" products and shoelaces. Sure Foot wrote Surefoot with accusations that it infringed the mark and created a likelihood that its use of "Surefoot" would confuse customers about the origin of Surefoot's products. Surefoot disagreed. Six years passed. Surefoot registered "SUREFOOT" for certain of its products. Sure Foot asked the Trademark Trial and Appeal Board (a part of the U.S. Patent and Trademark Office) to cancel the registration. Then and only then Surefoot sued Sure Foot for a declaration that it didn't infringe Sure Foot's SUREFOOT mark. The district court dismissed for lack of a justiciable controversy under Article III of the Constitution.
The panel held that MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007), supplanted the "reasonable apprehension of imminent suit" test from Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. 1996), with a looser standard, one that asks whether an ongoing legal dispute exists. Because Sure Foot and Surefoot did in fact disagree about use of SUREFOOT, the court held, an Article III "case or controversy" existed. It remanded so the district court could decide whether it should exercise its discretion to entertain the declaratory judgment action. Surefoot LC v. Sure Foot Corp., No. 06-4294 (10th Cir. July 8, 2008).
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