22
Jan/08

DJ Action: AIRPOD v IPOD


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).



21
Dec/06

Example Of A TM DJ Action


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.