TTAB Opposition Does Not Satisfy Case or Controversy Requirement for DJ Action for Non-Infringement

Monday, August 22, 2016

Judge Paula Xinis granted defendant’s motion to dismiss a declaratory judgment action for trademark non-infringement for lack of subject matter jurisdiction, finding that the following alleged facts did not establish “sufficient adversity” for the purposes of establishing a case or controversy:  (1) defendant’s TTAB opposition to plaintiff’s USPTO registration application; (2) two prior federal trademark infringement suits that the defendant had pursued against other parties; (3) defendant’s “history of opposing registrations;” (4) settlement discussions in which defendant proposed a license; and (5) defendant’s unwillingness to agree not to sue plaintiff.  Hogs & Heroes Found. Inc. v. Heroes, Inc., PX 16-768, 2016 WL 4395898 (D. Md. Aug. 18, 2016).