Defendant HALO FARM, a dairy company, filed 11 oppositions in the TTAB against 11 applications of HALO-variant marks filed by Halo Fresh, an energy drink vendor. Plaintiff sought a declaration of non-infringement in civil court. Defendant moved to dismiss, arguing that its oppositions were a mere prelude to obtaining a coexistence agreement, and that plaintiff had not made out an actual case or controversy. In support of its complaint, plaintiff alleged that, in addition to filing the 11 oppositions, defendant’s president had, during a phone call with plaintiff’s CEO, implicitly made clear that she intended to pursue plaintiff in court, and in so doing, made a point of referring to a prior trademark litigation defendant had filed.

Held: First, it is well settled (t least in the Second Circuit) that TTAB oppositions, apparently even eleven of them, will not, without more, give rise to a ‘substantial controversy’ sufficient to justify standing in a DJ action. Second, the court did not credit plaintiff’s CEO’s characterizations of his phone call with defendant, noting the lack of word-for-quotes and the lack of other specifics. No case or controversy – complaint dismissed.

Practice Pointer: When someone threatens you, get it in writing.

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