WD Texas: Discussion of mootness, declaratory judgement standing and abandonment in context of 12(b)(6) http://t.co/ZdogBkAUft
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Defendant sues plaintiff in Virginia state court for defamation and ‘common law’ trademark infringement. It is contested whether a Lanham Act claim was made. Plaintiff brings DJ action in fed. court, fed, court remands back to state court. 4th Circuit concedes that there is jurisdiction in fed court but jurisdiction here under the DJ Act is an ‘authorization and not a command,’ and that the district court did not abuse its discretion by abstaining to exercise jurisdiction over this case. Read the dissent. Background on the dispute can be obtained by searching Dozier Riley defamation.
Decsion 4th Circuit Dozier Abstention
SDNY: Motion to transfer granted following ‘first to file’ rule. Discussion as to what extent a Declaratory Judgement filed in response to a demand letter will not be recognized as a first filing.
Decision Motion to Transfer First to File
Sean John Fragrance brings DJ action that its I AM KING mark doesn’t infringe prior registered I AM for fragrance.
Apple threatens an opposition against Plaintiff’s application for AIRPOD for air purifiers. Plaintiff brings declaratory judgment action against Apple arguing that AIRPOD for its products is not confusingly similar to Apple’s IPOD products. The complaint does not allege that Apple threatened a civil proceeding.
BlueAir v. Apple, Inc., 08 C 427 (ND Illinois Jan 18 2008).
It is not clear whether the filing of a trademark opposition without more gives rise to a declaratory judgment action. See D. Peter Harvey and Seth I Appel, “The Declaratory Judgment Response to a Cease and Desist Letter: ‘First-to-File’ or ‘Procedural Fencing’?,” 96 TMR 639 (May-June 2006).
Defendant purports to own rights in ASPEN. Plaintiff (Victoria’s Secret) uses a skiing theme in its seasonal promotion, including references to the ASPEN ski resort. Defendant requests cessation. Plaintiff alleges that it is not using term as a trademark. Defendant threatens lawsuit but doesn’t sue. Plaintiff files action for declaration of non-infringement. Complaint here.